- If I invent something at the university, does it belong to the university?
Usually, if you are a university employee and the invention is in your area of expertise, UNLV does have ownership. For example, if you are a UNLV professor and you invent something clearly in your field of teaching and research, then UNLV owns your invention. This can be good news for you because the university assumes the burden of protecting and commercializing the invention and provides 60% of net proceeds to the researcher(s). It should be noted that your share is as high as you will find at any university, and it costs you nothing (but some of your time) to pursue commercialization.
In most cases, it is obvious that UNLV owns the invention. However, there are exceptions to this. UNLV’s ownership of your invention may be contingent upon the specifics of your employment status and what university resources you used in its invention and development. For example, what if you are not a UNLV employee but a student or a volunteer? What if you are a UNLV faculty member but your invention is not in your field? What if you used your computer and your office but not much else? To determine ownership in these situations, the Office of Technology Transfer will need to do some fact gathering and analysis.
Some of the more important factors that come into play are discussed in other FAQ answers and in the Intellectual Property Policy, but the answer to your specific questions may not be obvious. It is important that you discuss the situation with the UNLV Office of Technology Transfer as soon as you think you may have an invention. Not only will the office help to clarify the situation, its involvement may lead to the process of protecting and commercializing your invention and starting you, your department, and UNLV on the road to personal and institutional financial rewards.
- What about my inventions prior to joining the university?
The university does not claim ownership of such inventions. However, any developments or improvements of these inventions that you make while at UNLV may be owned by the university and should be disclosed to the UNLV Office of Technology Transfer.
- What kind of research is patentable?
An invention may be an article, a composition of matter, a process, or an apparatus. Inventions eligible for a U.S. patent must be novel, useful, and non-obvious:
- What does “novel” mean?
The invention must be noticeably different from publicly available inventions. This does not mean that all aspects of an invention must be novel. For example, new uses of known processes, matter, or materials are patentable. Incremental improvements on known processes may also be patentable. To be considered novel, an invention must be the inventor’s original work. In addition, the inventor must file a patent application within certain time constraints if the invention has been publicly disclosed. Novelty is generally determined through a process called a “prior art search.” As the UNLV technology transfer team processes a given application, the inventor is expected to directly participate in the prior art search process.
- What does “useful” mean?
The invention must demonstrate some application or utility, or be an improvement over existing products and/or techniques.
- What does “non-obvious” mean?
A patentable invention must be “non-obvious” to someone of “ordinary skill in the art.” This does not include recognized experts in the field. One guideline of non-obviousness is when the change is somewhat surprising to one with “ordinary skill,” yet this someone is knowledgeable enough in the field to understand the utility of the invention. This requirement is difficult to judge, for it is hard to predict with certainty what the patent examiner will find obvious or non-obvious. An invention can be “non-obvious” if it is a combination of old elements used in a new way to produce a new, unexpected result. Similarly, an invention can be considered “non-obvious” if others have attempted to achieve the invention but failed. Some situations require affidavits from experts stating that the invention is not obvious to one skilled in the art.
- How do I benefit from disclosing my invention to the UNLV Office of Technology Transfer?
Official disclosure is a necessary first step for proper evaluation and protection of your invention. Its primary purpose is to collect information necessary for the evaluation of the invention for patentability and commercial potential. We strongly recommend that you complete the Invention Disclosure Form as soon as you think your research has yielded a discovery or invention. As an official document, the completed form serves to establish a legal record of the date of conception of the invention.
It is important to note that disclosing your invention to the UNLV Office of Technology Transfer is required if your project has been supported by extramural grants. Submission of the disclosure form is required by all federal funding agencies; the university faces strict requirements regarding inventions discovered through sponsored research. Thus, please contact our office if you have any questions regarding this part of the process.
In addition, an important benefit of your disclosure is that it is the first step leading to the establishment and protection of intellectual property rights necessary to bring about the commercialization of the technology.
- Once my invention is disclosed in confidence to the UNLV Office of Technology Transfer, what is the evaluation process?
We will review your invention with you and then coordinate a preliminary evaluation of the invention’s potential for protection as intellectual property and for successful commercialization. A confidential expert review of the idea or discovery will be conducted, and we will then decide whether to file a patent application to protect the invention. If a scholarly publication or news release is imminent, we will accelerate the process of reviewing, drafting, and filing a patent application in order to preserve your patent rights.
- How is my invention marketed or licensed?
Once we do what we can to secure preliminary intellectual property protection, we coordinate the formulation of a strategy and business plan for commercialization. The most appropriate industry partners will be contacted, and, pursuant to confidentiality agreements, we will coordinate the disclosure of the invention and its potential. Often discussions with prospective partners lead to new business plans and strategies or modifications of those developed at an earlier stage. When a good fit is determined, we coordinate negotiations intended to lead to a sale or license of the invention.
- Who decides whether or not to file patent applications?
The decision is made by UNLV's Vice President for Research and Economic Development based on recommendations of UNLV’s Office of Technology Transfer. The determination, which is based on the scope of the invention, its patentability, and commercial merit, is made in consultation with the inventor(s), as well as the inventor's dean or director.
- Who prepares and prosecutes patent applications?
UNLV has retained the services of a highly qualified patent attorney selected on the basis of patent law experience and specialized knowledge in various fields of expertise. His office prepares and prosecutes patent applications.
- How long does it take to obtain a patent? What is the cost of obtaining a patent?
The entire process may take from two to six years. The costs for prosecuting a U.S. patent application typically range from $15,000 to $40,000 through issuance. Costs for prosecuting foreign patent applications can range from $10,000 to $15,000 or more per country for filing. Maintenance costs add several thousand dollars per patent. When the university pursues patents on your behalf, you do not incur any of these costs; the university incurs the cost.
- Why are Material Transfer Agreements necessary?
A Material Transfer Agreement (MTA) is a legal document for the protection of tangible research materials created by researchers that may be useful to others for research or for commercial development. It is important to contact the UNLV Office of Technology Transfer prior to receiving or sending out any research materials so that appropriate MTAs can be developed to protect you and the institution.
- Why are Confidential Disclosure Agreements necessary?
A Confidential Disclosure Agreement, sometimes called a Non-Disclosure Agreement, is a legal document for the protection of proprietary information. Such a document is necessary before any transfer of proprietary information is made from one party (such as a university researcher) to another (such as a corporate representative). Otherwise, the transfer of proprietary information, even in a casual conversation, could legally be considered a public disclosure. In the worst case, such a disclosure could allow the individual or company to whom this information was disclosed to use or transmit to others your confidential information, thus placing the invention in the public domain. This would preclude the possibility of obtaining intellectual property protection and would even violate federal regulations. It is important to contact the UNLV Office of Technology Transfer before disclosing any confidential proprietary information to another party.
- Do I need to demonstrate that my invention works before disclosing it to the UNLV Office of Technology Transfer?
Because much can be lost by not contacting the UNLV Office of Technology Transfer early in your research, it is best to communicate with us before your invention is fully implemented. It is not necessary to have a model or working demonstration to file a patent application.
- Does public disclosure interfere with patenting?
Yes, it is a major concern. To protect the patentability rights to your invention, it is important that you contact the UNLV Office of Technology Transfer as early as possible prior to public disclosure. Public disclosure includes, but is not limited to, certain non-confidential grant applications; journal articles; media interviews; publication on the web (including postings on your personal web page); conference abstracts; oral presentations; and poster presentations. Foreign patent rights may be lost immediately upon public disclosure. In the U.S., you have one year from the date of the public disclosure to file a patent application.
- Is a grant proposal considered a public disclosure?
A grant proposal is not considered a public disclosure until it is available to the public for review. Most grant requests are confidential and are not considered public disclosures, but others are made public by their inclusion in a file system available for public review. To prevent inadvertent disclosure, we can quickly file a provisional patent application before you formally submit your grant proposal. Please give us at least two weeks' advance notice. Of course, we appreciate your contacting the Office of Technology Transfer as soon as possible so that we can protect your invention in advance with no risk of your missing a grant proposal deadline.
- How do I determine who are the inventors of our novel technology?
UNLV’s Invention Disclosure Form asks prospective inventors to list all participants involved in a given project. The Office of Technology Transfer will work with you to determine and document the roles and reward structure for each participant.
- How much detail should I reveal in my patent application?
The degree of disclosure required for a patent in the United States is very high. Enough information must be provided in the patent application that the invention can be made to function. Furthermore, the best mode of practicing the invention must be described. University inventors should err on the side of too much disclosure rather than too little. For example, if a researcher submits more information in a funding proposal than in the corresponding patent application, the issued patent might later be challenged for failure to disclose essential information. Requirements are different outside the United States, but to obtain a U.S. patent, one needs to comply with U.S. law.
- What if it is not clear that UNLV owns my invention, but I want the Office of Technology Transfer to handle my invention?
The Office of Technology Transfer will entertain proposals from students and others to have UNLV share ownership of an invention in return for the patent and commercialization services offered by the Office of Technology Transfer. Feel free to discuss your invention in confidence with us, preferably soon after you have discovered your invention.
- If my invention is commercialized, how much of the net proceeds do I receive?
Net proceeds are determined after deducting all patent and commercialization expenses and a 15% management fee. The inventor receives 60% of net proceeds, the inventor’s department receives 25%, and the Division for Research and Economic Development receives 15%.
- What is signature authority?
By virtue of UNLV’s Intellectual Property Policy, the UNLV Office of Technology Transfer has sole signature authority on behalf of the university for license agreements, material transfer agreements, industrial contracts, and other agreements that pertain to intellectual property. University faculty and other inventors are not authorized to sign agreements that obligate the university to assign or license intellectual property rights to another entity.