For Inventors

As part of its research mission to disseminate knowledge for the public good, EMU is committed to helping faculty, students, and staff protect and commercialize University-made discoveries.  Here you will find information about intellectual property, as well as the process for protecting and commercializing it, the obligations Principal Investigators and other research personnel to report discoveries made on funded projects, and EMU's obligations to protect these research discoveries.  Before getting into University-specific information, here is a quick overview about the various forms of Intellectual Property.

Intellectual Property

The U.S. Patent and Trademark Office defines intellectual property broadly as creations of the mind—creative works or ideas embodied in a form that can be shared or can enable others to recreate, emulate, or manufacture them. It further Indicates that there are four ways of protecting of intellectual property.

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  A property right granted by the government of the United States of America to an inventor "to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States" for a limited time in exchange for public disclosure of the invention when the patent is granted. 
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  Information that companies keep secret to give them an advantage over their competitors. This form of IP is protected providing that it remains secret.
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  Simply put, copyright is a form of legal protection for original works of authorship that provides an economic benefit for creativity and promotes public welfare. 
• Trademarks/Service Marks: Expand dropdown
  Trademarks/Service Marks essential are word, phrase, symbol, design, or a combination of these things that identifies goods or services, provides legal protection for the brand, and helps guard against counterfeiting and fraud.

EMU Policy on Technology Transfer 

The purpose of the EMU policy on Technology Transfer (Board of Regents Policy 06.04.02) is to define rights and responsibilities of EMU, its faculty, students, employees, and other research personnel as they relate to new transferable technology not directly related to classroom instruction.  It strives to:

• Expedite technology transfer and the dissemination of useful knowledge
• Protect and balance equitable rights of Inventors, research sponsors, the University, the public
• Support and stimulate further research and invention
• Prevent improper exploitation of inventions and inventors

Applying to statutory and other proprietary rights, not directly related to classroom instruction, the EMU policy covers computer software, databases, ideas, inventions, and techniques and improvements to existing technologies.  The policy specifically EXEMPTS original works of authorship, trade names, trade dress, trademarks, trade secrets, domain names and copyrights other than those affiliated with software.

Invention Disclosure Record

The intellectual property protection and commercialization process starts with filing an Invention Disclosure Record with the Technology Transfer Office.  The Invention Disclosure Record is a confidential document that provides a description of the invention's key aspects and technical details.  It should be filed prior to any public disclosure, such as a poster presentation or publication of a journal article.  It is used to assess the patentability of a discovery, as well as, the commercial opportunities that might exist.

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  Requirements for Federally Sponsored Inventions Under Bayh-Dole Act of 1980 as Amended:

  When accepting grants, cooperative agreements, or contracts from the federal government, there are certain requirements that must be met.  One of these requirements is that discoveries made with federal funding (partial or full) must be disclosed to EMU TTO.  In addition, the Invention Disclosure Record must identify the award/contract number.  Upon closeout, EMU and the PI must make a certify if all inventions have been disclosed.

• Other Externally-Funded Research

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  Grants and contracts from non-federal sponsors include specific terms, conditions, and reporting requirements related to invention disclosures and intellectual property. ORDA and TTO review and negotiate these before starting work. The IP terms are reviewed with the PI during the award kick-off. Generally speaking, the PI is responsible for ensuring that Invention Disclosure Records are filed in a timely manner with the TTO, and together, EMU-TTO and Inventors will work with the Sponsor to protect project IP.  While the University does not allow sponsor-approval of publications, a review delay for patent filing is often included. Contact TTO with any questions about the timing of public disclosures, such as papers, conference presentations, or posters.

• Internally-Funded Research

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  The EMU policy on Technology Transfer includes all research conducted at EMU facilities funded or otherwise supported at a level beyond a Faculty member's normal duties, including additional compensation, research award, release time, sabbatical leave, or Summer Research Award.

• EMU Intellectual Property Policy

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  As a Research 2, Community Engaged Carnegie classified institution of higher education, EMU is committed to the dissemination of new knowledge for the benefit of broader society.  Disseminating new knowledge through technology transfer is in direct alignment with our classification.  As an institution that is also committed to intellectual freedom, EMU Regents Policy 06.04.02, specifically excludes works of original authorship, delineating “Transferable Technology” as the area of responsibility for the EMU Technology Transfer Office.  Most often the TTO is assisting faculty with protecting research discoveries and working to see them commercialized by private entities for the public’s benefit.

• Student Inventors 

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  Students with employment relevant to the project are considered project personnel under the policy.   All project personnel who contribute to the conception of a technology and meet the the definition of Inventor under U.S. patent law must be included as Inventors in any resulting patent .  Ownership under the University's policy may involved the Inventor, the University, or a third-party assignee.  While discoveries related to classroom or independent research is not covered by the policy, students are still able to file an Invention Disclosure Record with the Technology Transfer Office and receive training and technical assistance form the EMU Technology Transfer Office.

Patent Protection Process

We find that the process is most successful when we are working together collaboratively so please feel free to contact the Technology Transfer Office at anytime to discuss potential discoveries, options for protecting and commercialization it, and resources that may be available. 

• File and Invention Disclosure Record Expand dropdown
  As indicated above, the patent protection process begins with filing an Invention Disclosure Record describing the discovery with the Technology Transfer Office.  An Invention Disclosure Record and instructions can be downloaded here in Word format.  When complete please return the signed document to [email protected].
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  Once this is received EMU TTO conducts an assessment considering the patentability or a disclosure and the opportunities for commercialization and licensing.  For a discovery to be patentable, it must first meet the basic criteria of being novel, useful, and non-obvious.  We also look at the patent landscape to determine if there might be commercial interest in this patent, or potential for industry-sponsored follow-on research.  
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  Based on the outcome of the assessment the decision will be made to file an application, or not.  In cases where the University does not move forward, available options for the Inventor(s) will be provided.  These may vary greatly depending on the funding source for the research (i.e., internal like an Summer Research Award, or federally funded grant).
• Patent application is processed by the U.S. Patent and Trademark Office (USPTO) Expand dropdown
  During the prosecution of a patent application, it is common for the USPTO to raise concerns about the application. The examiner may indicate that the application describes two separate inventions, or they may believe that there is prior art that precludes the novelness of the application.  With these Office Actions, the University has an opportunity to submit a response to argue and overcome the objection of the examiner. This requires that Inventor(s) to work closely with our patent council in preparing a response to the USPTO.
• Technology is disqualified for patent protection, or a patent is issued by the USPTO Expand dropdown
  If the objections cannot be overcome, the technology may be disqualified from patent protection.  If the application prevails and all objections are successful addressed the USPTO issues a patent for the invention.