Intellectual Property Protection
BGSU is committed to timely protect the potential societal benefits of the Intellectual Property created or discovered at the university. If the university declines to pursue protection for an innovation, it will notify the inventor promptly.
The protection of an invention starts with filing a patent application with the USPTO and/or foreign patent offices, whenever appropriate. Once the patent application is filed with USPTO, it might take several years and tens of thousands of dollars to obtain an issued U.S. Patent. Inventors must patiently cooperate with OTTS and patent counsel through the patent application and review process for a smooth experience.
The U.S. allows inventors to file a patent application for up to one year after public disclosure. Posters, abstracts, and oral disclosure to the public should all be considered a public disclosure. To enable secure interactions with other parties before a patent application is filed. Copyright is a form of protection granted by law for original works of authorship fixed in a tangible medium of expression. Copyright covers both published and unpublished works.
An invention that is the publicly disclosed before it is the subject of a patent filing will lose all patent rights in most foreign countries. In the United States, an invention that is publicly disclosed starts a one year clock on the time to file a patent application – that is, to have patent rights in the United States, an invention must be the subject of a patent application that is filed within one year of a public disclosure.
Generally, a public disclosure means that the invention has been revealed to the general public in enough detail that it would be possible for a person skilled in the art to produce the invention, or to practice the invention based on the information disclosed. If published information does not “enable” a person skilled in the art to realize the invention, or to practice the invention, then the information is not a disclosure. For example, simply describing that you have invented something new or what your invention can do, without revealing how it is done, is not a disclosure for patent law purposes.
It is often necessary to reveal an invention for various reasons; for example, to discuss a possible business opportunity, or to discuss funding for future research. In these cases, an agreement can be made between the inventors or the inventor’s institution and other outside parties, so that the outside parties promise to keep information on the invention confidential. This type of agreement is called a “Confidentiality Agreement”, a CDA, also called a “Non-Disclosure Agreement” or an NDA. Information revealed to an outside party that has signed an NDA will not be counted as a public disclosure.
BGSU encourages and supports the creation, development, expression and publication of written and recorded materials by university faculty, staff and students. An important corollary of publication is copyrighting, which secures for a limited time an exclusive right of ownership to authors or creators for their work.
Copyrights protect original works such as novels, poetry, movies, streaming audio and video, software code, video games, sculptures, photographs paintings, sheet music, recorded music performances, plays, choreography, and architectural designs. Owners of copyrighted material may transfer or grant license to use their protected work usually in return for some fee or other benefit. Thus, copyrighting protects these proprietary and financial interests while encouraging publication. Many choose to register their works because they wish to have the facts of their copyright on the public record and have a certificate of registration. Registered works may be eligible for statutory damages and attorney's fees in successful litigation.
Intellectual Property (IP) FAQ
A patent gives the holder the right to exclude others from making, using, selling, offering to sell, and importing any patented invention. Note, however, that a patent does not provide the holder any affirmative right to practice a technology, since it may fall under a broader patent owned by others; instead, your patent only provides the right to exclude others from practicing your invention by filing a patent infringement suite. Patent claims are the legal definition of an inventor’s protectable invention.
The OTTS on consultation with outside patent counsel is responsible for seeking patent protection. Inventors work with OTTS, which in turn seeks a recommendation from the Patent Advisory Counsel in drafting the patent applications and responses to patent offices in the countries in which patents are filed.
Potential commercialization partners (licensees) often require patent protection to protect the commercial partner’s often sizable investment required to bring the technology to market. Due to their expense of drafting, filing, and prosecution of patents, patent applications are not possible for all BGSU intellectual property. A careful review of the commercial potential for an invention before investing in the patent process. However, because the need for commencing a patent filing usually precedes finding a licensee, a look for creative and cost-effective ways to seek early protection for as many promising inventions as possible.
Patent Advisory and Technology Development Oversight Committee (PAC)/President and the inventor(s) discuss relevant factors in deciding whether to file a patent application. Ultimately, the PAC makes the final recommendation as to whether to file for patent protection.
Currently, the average U.S. utility patent application is pending for about three years, though inventors in the biotech and computer fields should plan on a longer waiting period. Once a patent is issued, it is enforceable for 20 years from the initial date of filing of the application that resulted in the patent.
Filing a regular U.S. patent application may cost between $10,000 and $30,000. To obtain an issued patent may cost a total of $40,000 to $50,000. Filing and obtaining issued patents in other countries is a very expensive undertaking. Usually, once a patent is issued in the U.S or in foreign countries, certain maintenance fees are required to keep the patent alive.
Generally, the invention will be jointly owned between BGSU and the other institution or company. Each inventor assigns his or her rights to their employer. The OTTS will work with the other institution to decide on management of the invention and negotiate the terms and conditions accordingly. Usually, if the other institution is a university or research institution, an “inter-institutional” agreement is made that provides for one of the institutions to take the lead in protecting and licensing the invention, sharing of expenses associated with the patenting process and allocating any licensing revenues.
Often BGSU accepts the risk of filing a patent application before a licensee has been identified. After BGSU’s rights have been licensed to a licensee, the licensee assumes the patenting expenses. At times we must decline further patent prosecution after a reasonable period of attempting to identify a licensee.
Copyright protects original works of authorship, while a patent protects inventions or discoveries. Ideas and discoveries are not protected by the copyright law, although the way in which they are expressed may be. A trademark protects words, phrases, symbols, or designs identifying the source of the goods or services of one party and distinguishing them from those of others.
Registration is recommended for a number of reasons. Many choose to register their works because they wish to have the facts of their copyright on the public record and have a certificate of registration. Registered works may be eligible for statutory damages and attorney's fees in successful litigation. Finally, if registration occurs within five years of publication, it is considered prima facie evidence in a court of law.
Technology Licensing Officers use many sources and strategies to identify potential licensees and market inventions. Sometimes existing relationships of the inventors, the OTTS, and other researchers are useful in marketing an invention. Market research can also assist in identifying prospective licensees. In addition, other complementary technologies are also examined to agree and assist OTTS efforts. The OTTS also posts non-confidential descriptions of some inventions on this Available Technologies page on the website. Faculty publications and presentations are often excellent marketing tools as well.
Studies have shown that 70% of licensees were known to the inventors. Thus research and consulting relationships are often a valuable source for licensees. Licensees are also identified through existing relationships of the OTTS staff. An attempt to broaden these relationships through contacts obtained from personal networking and from website inquiries, market research, industry events and the cultivation of existing licensing relationships.
It can take months and sometimes years to locate a potential licensee, depending on the attractiveness of the invention and the size and stage of development of the market. Most BGSU inventions tend to be in the early stage in the development cycle and thus require substantial commercialization investment, making it difficult to attract a licensee.
Your active involvement can dramatically improve the chances of matching an invention to an outside company. Your research and consulting relationships are often helpful in both identifying potential licensees and technology champions within companies. Once interested companies are identified, the inventor is the best person to describe the details of the invention and its technical advantages. The most successful technology transfer results are obtained when the inventor and OTTS work together as a team to market and promote use of the technology.
Yes, an invention can be licensed to multiple licensees, either non-exclusively to several companies or exclusively to several companies, each only for a unique field-of-use (application) or geography.
- A thesis or dissertation that describes the invention and is then placed on the shelves of a library, even a small departmental library, constitutes a public disclosure.
- A disclosure that is published in a journal, a magazine, or newspaper, or any publication that is generally available to the public.
- A disclosure that is made available on a web site that is available for anyone to access is a public disclosure. Some people like to put lots of their personal information on social media websites, or personal websites, so that their friends and others can see what interesting things they have done. If they publish enabling information about an invention in this way, it is a public disclosure.
- Presentation of the invention at a conference attended by people who have not previously signed a CDA, whether or not the conference was “by invitation only”.
- A “Poster Presentation” at a conference, or even a poster placed in a hallway at the University, is a public disclosure if it reveals the invention to such an extent that the invention could be reproduced by someone skilled in the art.
- Revealing the invention to someone who has signed a confidentiality agreement (CDA), or to persons at an organization that has signed a CDA.
- Telling your parents about an invention you made at the University.
- Revealing an invention to people who are also employed at the same University or Organization that owns the invention, such as a University that employs the inventor.
- Revealing an invention in an application for funding, such as an SBIR application, where the application is understood to be held in confidence by the receiving party. If you are an inventor at the Bowling Green State University, and you are not sure if a particular situation may be a confidential disclosure, you are urged to contact OTTS beforehand so that we can assist in protecting your invention from an unwanted public disclosure.
Updated: 05/04/2021 02:54PM