Tech Transfer Glossary
Authorship” and “inventorship” are not synonymous. Authorship is defined as “the quality or state of being an author,” as well as “source; origin.” To determine authorship on a paper, one examines the finished product and acknowledges all who contributed to its creation. Thus, authorship will include the researchers who conducted the subject study. It may also include individuals who contributed algorithms, equations, or figures used during the research, as well as the person who committed the research to paper or the mentor who suggested a comparative approach.
Inventorship, on the other hand, is a precise legal term. What differentiates an inventor from an author? An author is someone who contributes to the final product, but an inventor is someone who participates in the inventive step. An author might imagine an outcome or a solution, but an inventor shows the steps and mechanisms necessary to get there.
The American Heritage Dictionary defines an inventor as someone who has produced or contrived (something previously unknown) by the use of ingenuity or imagination. The U.S. Patent and Trademark Office (USPTO) defines an inventor as someone “who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor . . . .” Thus, the issue of inventorship hinges on the legal definition of “conception.” Fortunately, the USPTO provides clarity taken from case law surrounding this issue. Conception is defined as “the complete performance of the mental part of the inventive act” (Townsend v. Smith, 36 F.2d 292, 295, 4 USPQ 269, 271 [CCPA 1930]). Conception also means providing a description of the invention thorough enough to allow someone skilled in the art to reproduce the invention without “exercise of the inventive faculty” (Gunter v. Stream, 573 F.2d 77, 197 U5PQ482 [CCPA 1978]).
It is extremely important to get inventorship right on a patent application. Honest mistakes may be amended, but willful misrepresentation (naming an inventor who didn’t contribute to the conception of the invention or failing to name someone who did contribute) can lead to serious difficulties with IP rights—up to and including invalidation of the patent. Ultimately, the question of who is an inventor is best decided by a patent attorney.
The integrity of a community of scholars requires the exchange of ideas in an atmosphere free from commercial conflict and influence. Thus, universities must ensure that reports of research and scholarship are disseminated on an open and timely basis without externally imposed restrictions, in keeping with academic tradition. To this end, all members of a university community are expected to be open about involvements with—and obligations to—external parties that could be interpreted as leading to such restrictions. This is especially important in cases where relationships with external parties could lead to personal financial benefit from the scholarly work or ideas of an investigator or from that investigator’s access to the work or ideas of colleagues including faculty, students and staff. For more information on Tufts University’s conflict of interest policy, please visit http://viceprovost.tufts.edu.
Consulting can affect many aspects of the patenting and technology transfer process, and relationships from consulting work often lead to the identification of potential licensees. For information on Tufts University’s conflict of commitment policy, please visit http://viceprovost.tufts.edu.
Original works of authorship are protected by copyright from the moment they are fixed in a tangible medium of expression. Works do not have to be published, registered, or contain any copyright statement or symbol to be protected. Except for conditions outlined in Tufts University’s “Policy on Rights and Responsibilities with Respect to Intellectual Property”, and in keeping with academic tradition, Tufts does not usually assert ownership in copyrightable works produced by its faculty. Exceptions from this tradition include works produced with significant use of university resources, institutional works, or works subject to contractual obligations. The OTL&IC administers copyrights owned by Tufts. In cases where Tufts University is the owner of a copyright, the following notice should be used: Copyright or © [year] Tufts University.
Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed. Although not required to maintain copyright, registration of a work with the U.S. Copyright Office affords additional advantages: http://www.copyright.gov.
The Scholarly Communications Team at Tufts provides information to faculty, staff, and students about copyright, author’s rights, and scholarly publishing: http://sites.tufts.edu/scholarlycommunication.
Technologies disclosed by university researchers are offered to licensees at an early stage of development. Because early-stage technologies require considerable additional research to prove their value or to support good patent protection, universities look for licensees that are adequately financed (or can obtain financing) and willing to focus resources on the research necessary to advance the technology. Early-stage technologies are typically launched by small or start-up companies that find it difficult to lay out significant cash for development expenses. Universities usually accept equity as partial consideration for technology licensed to start-ups.
The Random House Dictionarydefines an invention as “a new, useful process, machine, improvement, etc., that did not exist previously and that is recognized as the product of some unique intuition or genius, as distinguished from ordinary mechanical skill or craftsmanship.” Additionally, a patentable invention must not be anticipated by prior art. Examples of prior art include obviousness, where the subject matter would have been obvious to a person having ordinary skill in the art, and prior public knowledge of the inventive step. When questioning whether a discovery is an invention or not contact TTIC.
Patent rights (if granted) generally last for 20 years from the date a patent application is filed and, unlike copyrights, patent rights must be awarded by a national organization such as the U.S. Patent and Trademark Office.
There are three types of patents in the United States:
– Utility patents cover new and useful processes, machines, articles of manufacture, or compositions of matter. They also include improvements to existing processes, machines, articles of manufacture, or compositions of matter.
– Design patents cover new, original, and ornamental designs for an article of manufacture.
– Plant patents cover new plant varieties.
Applying for patent protection before publishing research is ideal. Public disclosure can inhibit the ability to patent an invention. It is always best to contact the TTIC before publishing in order to determine if a patent application should be filed in advance of publication.
In the context of invention disclosure and reporting, “reduction to practice” is considered to be the point at which a concept is embodied in an invention with recognizable utility.
Industry sponsors of university research are often entitled to review publications in advance to determine if a patentable invention will be disclosed or if information confidential to the sponsor will be disclosed. Universities generally agree in the sponsored research agreement to a delay in publication so that patent applications can be filed. At a sponsor’s request, an investigator may be required to remove a sponsor’s confidential information from a publication.
Trademarks are words, logos, designs, or other marks used to identify the source of goods or services. Trademark rights accrue to an owner through use in commerce, and owners of marks used in interstate commerce can apply for trademark registration with the U.S. Patent and Trademark Office. Tufts University owns federal and international trademark registrations on the words TUFTS and TUFTS UNIVERSITY, on the university seal (with the descending dove), and on various marks specific to individual schools and units. The OTL&IC administers Tufts University’s trademark registrations.
Use of Tufts trademarks is governed by the “Policy on the Use of Tufts University Name and Insignias” at http://legal.tufts.edu/?pid=12. The Office of University Counsel coordinates all requests for use of the Tufts name and logos, with final decisions being made by the vice president for university relations. Requests for name use approvals may be sent to firstname.lastname@example.org.
A trade secret is proprietary information that gives rise to a competitive commercial advantage—the IP is protected by locking it away. Commercial enterprises that sponsor or are otherwise involved in university research may seek to protect their trade secrets with agreements requiring the maintenance of confidentiality. Universities will not generally enter into such agreements involving university research because of the resultant conflict with academic practice, which requires the free and open publication of university research.
“Use of resources” is defined as any substantial use of university laboratories, equipment, funds, personnel, or facilities. Questions about whether someone has made significant use of university resources, should they arise, are resolved by the vice provost of Tufts University.