Frequently Asked Questions


 

Patents and Trademarks

A patent gives the holder the right to exclude others from making, offering to sell or selling, and importing the patented invention. Each patent is enforceable only in the country the patent is issued. The patented invention is defined by the patent claims in the issued patent. In the US, patents are issued by the US Patent and Trademark Office (USPTO).

A copyright is a form of protection for authors of original works. Copyrights protect the form of expression and give the holder the exclusive right to reproduce the work, prepare derivative works, distribute copies and perform the work. Copyright may be used to protect educational materials, artistic works or computer software. Copyrights are registered by the Copyright Office of the Library of Congress.

According to US patent law, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent” subject to the conditions and requirements of the law.

  • “Process” is defined by law as a process, act, or method, and primarily includes industrial or technical processes.
  • “Manufacture” refers to articles that are made, and includes all manufactured articles.
  • “Composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.

A patent cannot be obtained upon a mere idea or suggestion. Rather, a complete description of the subject matter for which a patent is sought is required.

More information concerning patents can be found on the USPTO website.

According to the US Patent and Trademark Office, an inventor is a person who “contributes to the conception of the invention.” Inventorship is a matter of law and determined by US patent law. For more information, please visit www.uspto.gov.

Throughout the process, inventors are needed to review drafts of the patent application, answer any technical questions about the invention and assist patent counsel with providing responses to any communications from the USPTO.

Filing and obtaining a US patent application may cost between $25,000 and $30,000. Filing and obtaining patents in other countries may cost an additional $25,000 or more per country. Once a patent is issued in the US or other countries, there are required maintenance fees to keep the patent alive.

A public disclosure occurs when you show your disclosure in any form that would allow for someone skilled in the art to reproduce your invention. This includes oral presentations at a conference or meeting, publishing research papers, thesis/dissertation presentations and posting on the Internet.

The Bayh-Dole Act of 1980 allows universities and other non-profit institutions to own rights to inventions and discoveries resulting from federally funded research, as long as certain obligations are met. These obligations include making efforts to protect and commercialize the invention/discovery, reporting progress to the funding agency, giving preference to small businesses and sharing profits with inventors.

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Working with OTTED

Contact OTTED as soon as you think you may have an invention or discovery. An OTTED Licensing Associate will work with you to determine the next steps and can help you complete the invention disclosure form. Also contact us if you have any questions about disclosing an invention or protecting your intellectual property.

If you have already submitted a disclosure form to OTTED, the best person to contact is the Licensing Associate assigned to your invention. Otherwise, you can contact OTTED at otted@hawaii.edu or 956-9024 with any questions or for assistance with the myInvention website.

Technology transfer is the process of transferring knowledge and discoveries to the public. This includes publishing research, educating students to enter the workforce, presenting discoveries at conferences and relationships with private industry.

OTTED executes license agreements which grants UH rights in an invention or discovery to a third party for a defined amount of time in order to allow the third party to develop the invention and bring it into the market. License agreements include performance requirements as well as financial terms. Profits are then divided among the inventors, schools/colleges and UH.

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Disclosing an invention

Under UH policy EP12.205, UH has ownership rights in your invention if:

  • You are a UH faculty, researcher, staff or employee; and
  • The invention was developed in the course of your work.

UH Faculty & Staff have exclusive rights to original works of authorship unless it is a “work for hire”. “Work for hire” is defined as a work commissioned by UH and prepared by an employee who is hired or assigned to specifically produce such work.

To disclose an invention, you may use the myInvention portal or visit the OTTED website to download a fillable Word document. Completed and signed disclosures can be emailed, faxed or mailed to OTTED. We will need the signatures of all UH inventors and the immediate supervisor of each UH inventor.

Complete and submit an invention disclosure when you believe you have discovered something unique and before presenting it via publication, presentation at conferences or other ways of publicizing. Be sure to let OTTED know of your plans to publish or talk to anyone outside of UH about your invention. Publicly disclosing your invention before filing a patent application may lead to a loss of protection for your invention.

Rights to any intellectual property coming out of a sponsored research project depends on the research agreement. The US government has certain rights to all inventions developed with funding from a federal grant or contract.

If you have co-inventors from other institutions or companies, OTTED will contact them and work with their institution or company to determine if a patent application should be filed.

You can log into myInvention to check on the status. You can also contact the Licensing Associate assigned to your invention or OTTED for the current status of your invention.

A license is a contract in which the owner of intellectual property grants permission for another party to act under all or some of the owners’ rights. OTTED executes license agreements to grant UH rights in a specific invention/technology to a third party for a period of time.

Revenues are shared according to UH Executive Policy 12.205 and collective bargaining contracts. The revenue split can be found at www.hawaii.edu/research/uh-ip-policies/

Once OTTED receives a completed disclosure, a Licensing Associate will contact you in a few weeks to review your disclosure and ensure a thorough understanding of your invention. Based on this information, OTTED decides on whether to file a patent application. These first steps will take approximately 2-3 months.

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