For University Researchers:
Frequently Asked Questions

 

  1. What does the Technology Transfer Office do?
  2. What is intellectual property?
  3. What intellectual property (IP) policies govern NDSU personnel?
  4. What is Bayh-Dole?
  5. Why does NDSU develop its Intellectual Property (IP)?
  6. Does NDSU development of IP interfere with my academic freedom?
  7. Why should I report an invention to NDSU?
  8. When should I report an invention or discovery?
  9. What is enabling information?
  10. How do I notify the Technology Transfer Office
  11. How is invention revenue
  12. Who is an assignee?
  13. What is a jointly owned invention?
  14. Why do I need an intellectual property agreement to send/receive research materials or to have outside testing done for my research?
  15. Why does it take so long to get anything done?
  16. Can I take my research with me when I move?
  17. Why can't I just give my work away?
  18. Can I use my technology to start a business?
  19. What sort of intellectual property protection exists for plant research?
  20. How can commercializing NDSU technology help my research?
  21. What conflicts can arise from my research actions?
  22. Can I still do research on something that is licensed to a company?
  23. What are my intellectual property obligations?
  24. What are my confidentiality obligations?
  25. What are my recordkeeping obligations?
  26. Can ownership be released to the inventor(s)?
  27. Who can sign intellectual property (IP) agreement?
     

What does the Technology Transfer Office do?

    1. The Technology Transfer Office (TTO) reports to the Vice President for Research, Creative Activities and Technology Transfer through the Sponsored Programs Administration office. The TTO assists NDSU faculty, staff and students by managing the intellectual property component of research support activities and by developing the university's intellectual property into tangible property before NDSU transfers that property to the NDSU Research Foundation.
    2. TTO operational activities include:
      1. Supporting pre-discovery research activities such as: transferring research materials and proprietary information; negotiating inter-institutional collaborative research agreements; and assisting in the construct of intellectual property language in sponsored research agreements.
      2. Assisting NDSU faculty, staff and students with the submission of invention reports when they discover or invent something in their research.
      3. Determining the appropriate intellectual property protection (patent, trademark, copyright, or plant variety protection) for the inventions or discoveries after they are reported to the TTO.
      4. Actively positioning inventions to enhance NDSU Research Foundation's ability to commercialize the university's intellectual property.
      5. Actively seeking commercial sponsorship research opportunities while marketing inventions.

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What is intellectual property?

    1. Property is a tangible asset to which value is attached and ownership is legally regulated. Transferring the title to ownership of property (sales) is the essence of commerce.
    2. Intellectual Property is the result of the human creative process. The creative results of human thought and innovation are transformed into intellectual property (tangible commercial assets) by the patent, trademark, plant variety protection, and/or copyright protection process.

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What intellectual property (IP) policies govern NDSU personnel?

    1. U.S. Federal and North Dakota state law (Section 47-28-01) regulate IP ownership. The North Dakota state legislature has charged the State Board of Higher Education (SBHE) with establishing IP regulatory policy for all public universities in North Dakota. Based on the SBHE policies, NDSU has developed university specific guidelines and policies to manage NDSU IP.
    2. Some specific NDSU policies addressing intellectual property are:
      1. Patents, Section 341
      2. Copyrights, Section 340
      3. Confidential Information, Section 343
      4. Ownership of Work Products of Teaching Assistants, Section 342
      5. External Professional Activities, Section 152
      6. vConflict of Interest Policy, Section 151
      7. Code of Student Behavior, Section 601

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What is Bayh-Dole?

    1. The Bayh-Dole Act is found in Public Law 96-519, Patent and Trademark Act Amendments of 1980 (35 USC 200-212; 37 CRF 401). Under this federal law, universities are permitted to seek patent protection for inventions resulting from federally funded research. Universities that own the title to these patents can engage in legal commercial trade of those patent rights.
    2. A recent Association of University Technology Managers survey reports that universities were issued less than 250 U.S. patents before the Bayh-Dole Act. Between 1993 and 2000 and as a direct result of the Bayh-Dole Act, universities averaged more than 1,600 patent applications annually, and university technology development and licensing activities have resulted in the addition of more than $40 billion dollars in commerce and more than 260,000 jobs to the U.S. national economy.
    3. Some of the major provisions of the Bayh-Dole Act include:
      1. Non-profit organizations (including universities, research foundations and small businesses) may elect to retain title to innovations developed under federally-funded research programs;
      2. Universities are encouraged to collaborate with commercial entities to promote the utilization of inventions arising from federal funding;
      3. Universities are expected to file patents on inventions they elect to own;
      4. Universities are expected to give licensing preference to small businesses; and
      5. The government retains a non-exclusive license to practice the patent throughout the world and march-in rights.

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Why does NDSU develop its Intellectual Property (IP)?

    1. The Bayh-Dole Act requires NDSU to report all inventions resulting from the use of any federal funds. NDSU must also formally tell federal authorities of its intent to either take ownership of the inventions or return all ownership to the Federal government. If NDSU takes ownership, the university must file for IP protection.
    2. As a publicly funded institution and as the legal owner of the public's IP, NDSU is charged with properly maintaining the IP developed by its faculty, staff and students. To this end:
      1. NDSU intellectual property is protected using the U.S. government systems that regulate patent, trademark, copyright and/or Plant Variety Protection; and
      2. NDSU commercially develops its intellectual property for the public's general benefit.

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Does NDSU development of IP interfere with my academic freedom?

    1. Developing intellectual property and exercising academic freedom are not mutually exclusive activities. NDSU fully recognizes the need of its faculty and students to publish research and engage in worthy intellectual dialogue. Likewise, faculty, staff and students must fully recognize NDSU's responsibility to:
      1. Be good stewards of the public resources that fund the institution; and
      2. Ensure NDSU policies are equally applied to all employees and students.
    2. Some researchers are concerned that the desire to commercially develop NDSU inventions causes extended publication delays, slows academic exchange or impedes the momentum of their research.
      1. Delays, if they do occur, are rare and often unavoidable. They may only last a few weeks.
      2. To avoid publication delay, a good rule to follow is, to report the discovery of an invention to the TTO when you begin to draft a manuscript and most certainly before posting enabling information about the invention on a web site.
      3. NDSU can assess the invention's patentability and (if required) file a patent application before the manuscript is submitted for publication and well before the manuscript is actually published (normally six months after submission). The TTO will work with the inventor(s) to minimize any delays and ensure caution is used to avoid publication of enabling information about the invention in any abstract or web site that may precede the patent application filing.
    3. A critical factor in determining the availability of patent rights is the public release of information about an invention's enabling characteristics. Prompt reporting of an invention to the NDSU TTO allows the university to anticipate an inventor's need to send out communications about the invention and help preserve U.S. and foreign patent rights.

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Why should I report an invention to NDSU?

    1. Official NDSU policy requires you to report inventions to the TTO, regardless of whether you think an invention is patentable or you doubt the invention has commercial value.
    2. You may receive academic, public and professional recognition as an inventor of a legally issued and official U.S. patent.
    3. Inventors and their college, department, and/or unit receive a portion of net income generated when (on behalf of NDSU) the NDSU Research Foundation licenses university patent rights to commercial companies.
    4. The development and commercialization of an invention by NDSU may provide significant public benefit and generate further income for research and education.
    5. Companies that NDSU or the NDSU Research Foundation approach as potential licensees of an invention may wish to sponsor research in your laboratory.

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When should I report an invention or discovery?

    1. The best time to tell the TTO about an invention is after you reduce the concept to practice but before you publish, post on a web site or the internet, or publicly present enabling information about the invention.
    2. General criteria to help determine when to report an invention are:
      1. Upon completion of prototype planning supported by successfully modeled data;
      2. Upon successful reproduction (even if inconsistent) of laboratory results;
      3. Before submitting grant proposals containing test data, concepts or designs;
      4. When starting to draft a manuscript describing your research results; or
      5. Before giving a public presentation of enabling information.
    3. If you have questions or are not sure whether you should report an invention, please call the TTO and speak with one of the licensing professionals. They can quickly help clarify our reporting needs.
    4. If you wait until after publishing or publicly presenting enabling information to report an invention to the TTO:
      1. NDSU loses any ability to obtain patent rights outside the United States and the best possible commercial licensing opportunities;
      2. NDSU will not be able to obtain U.S. patent rights if your report of an invention comes later than one year after the first date of the public disclosure containing enabling information;
      3. There is also a chance that you will be out of compliance with Federal granting agencies that funds several different research activities; and
      4. You will be out of compliance with official NDSU policy.

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What is enabling information?

    1. Enabling information is data, designs, drawings, concepts, materials or any other proprietary information that describes "how" an invention is constructed and functions. Enabling information is the descriptive essence of a patent application's specifications and claims.
    2. If enabling information is given (publicly or privately) to someone and the information is transferred before a confidentiality agreement is completed, the transfer is considered to be a public disclosure. Public disclosure prevents anyone from obtaining foreign patent rights. Depending on other facts surrounding a public disclosure, U.S. patent rights may also have been compromised.

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How do I notify the Technology Transfer Office NDSU that I invented something?

    1. As soon as you believe you have an invention, you may notify the Technology Transfer Officer using the Invention Report/Disclosure Form. Licensing professionals in the TTO are available to discuss your invention and assist you with completing the disclosure form. The written information provided to the TTO and all of your discussions with the TTO staff are kept confidential.
    2. The Invention Report/Disclosure Form records significant events associated with your research and serves as the basis for assessing the patentability and commercial development potential of the invention.
    3. Upon receipt of a signed disclosure form, the TTO staff will schedule a meeting with all of the involved inventors to begin the NDSU technology development process. This meeting is used to clarify the invention's intellectual property landscape, identify any NDSU obligations to report findings to sponsors, and develop the information required for a patent, trademark, copyright or PVP application.

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How can I tell if I have a patentable idea?

    1. The US Patent and Trademark Office uses three basic criteria to determine if an application merits examination and approval as an issued patent. If the subject of the application is useful, novel and non-obvious, and if no other issued patents have made the same claim(s), a new patent may be issued.
    2. Patents can be issued for new or novel combinations of existing technology, for "unclaimed" fields of use of previously patented technology, or a variety of methodologies to include business methods.
    3. Contact the Technology Transfer Office with your questions. A quick phone call usually helps to clarify what needs to be done to determine patentability.

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How is invention revenue apportioned?

    1. The potential for inventors to receive revenue for their inventions is realized when the NDSU Research Foundation successfully licenses the patent rights to commercial companies.
    2. The financial terms of a commercial license agreement consist of fees and royalties.
      1. Fees are lump sum payments associated with specific events such as the execution of a commercial license or a licensee's attainment of specific business plan milestones.
      2. Royalties are recurring payments associated with the final sale of each product or service. License royalties normally run for the life term of the intellectual property protection.
      3. Patent and PVP protected rights exist for 20 years, while trademark and copyright protection is conditionally indefinite.
    3. Gross license revenue consists of all license fees and royalties. NDSU uses the gross revenue amount to satisfy all outstanding legal obligations to include patent prosecution costs associated with the invention. The remaining revenue is known as "net" revenue.
      1. Net revenue is annually distributed with 30% going to the inventor(s), 35%–50% going to the involved department(s) and 20%–35% to the NDSU Research Foundation.
      2. NDSU Research Foundation endows a 30% portion of it received revenue to sponsor future research at NDSU. The NDSU/RF also funds the initial IP protection costs during the marketing process and until commercial licenses are negotiated.

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What is the staffing in the Technology Transfer Office (TTO)?

    1. The NDSU TTO employs five full time employees who are assisted by various work-study students. The permanent staff consists of a Director, two Licensing Associates, an Administrative Assistant and an Administrative Secretary.
    2. The staff has diverse background experiences in the areas of university technology transfer, academia, scientific research, intellectual property, industry, government, and law.

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Who is an inventor?

    1. Inventorship is a legal determination that is much different than a decision regarding academic authorship. Each inventor listed on a patent application must have made a direct and significant contribution to at least one of the application's claims. Merely carrying out the instructions of the lead researcher may not qualify one as an inventor.
    2. Being listed as an inventor on a patent application does not guarantee that an individual will remain identified as an inventor. During the USPTO examination of an application, a patent claim may be rejected because it replicates the claim of a previously issued patent. When a claim is rejected, the inventors tied to the rejected claim are deleted from the application unless they are tied to other permitted claims.
    3. The inventors that contribute to the claims of the final issued patent receive full inventorship and may practice the entire invention for the duration of the patent (normally 20 years).
    4. Inventors are not necessarily the assignee or owners of the patent. For information regarding patent ownership and assignments please see "Who is an Assignee?"

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Who is an assignee?

    1. Per university policy, NDSU is the assignee or legal owner of all intellectual property developed by NDSU employees and students or developed at NDSU. This includes ownership of all inventions and discoveries funded wholly or in part with state or federal funds. If a NDSU invention results in an issued patent, the appropriate researchers are credited and acknowledged as inventors.
    2. NDSU may elect to assign its ownership to the NDSU Research Foundation.
    3. Unless other contractual arrangements or employment obligations are made regarding patent ownership (as is the case with NDSU employees and students), inventors are considered to be the owners or assignee of the issued patent rights. Most commercial or industrial companies require their scientists/researcher to turn over all of their invention rights to the company as a condition of employment. The company then uses the intellect property/patent rights as a commercial asset and typically, the commercial inventors receive no return from the company.
    4. For information on other benefits NDSU provides to inventors please see, How is invention revenue apportioned? Or, How can commercializing NDSU technology help my research?

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What is a jointly owned invention?

    1. Inventions with more than an assignee from more than one organization are commonly known as joint or co-owned inventions. Regardless of how much each assignee contributed to an invention, an assignee of a final issued patent has an undivided interest to the intellectual property of the entire patent.
    2. In the absence of any other intellectual property agreement defining the relationship between co-owners, each co-owner is legally free to independently practice the patent or license its rights to the patent, without further obligation to the other co-owner(s).

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Why do I need an intellectual property agreement to send/receive research materials or to have outside testing done for my research?

    1. Proprietary materials used in academic and commercial research encompass a variety of resources that are distinctly different from copyrighted materials or patented inventions. Proprietary materials that are most often the subject of a research transfer are biological cell lines and plasmids, chemical compounds, plant varieties, electrical schematic diagrams, mechanical design drawings, and more abstract products such as detailed descriptions or compilations of laboratory procedures, analytical methods, or other such "know-how."
    2. Proprietary materials, products and tools often represent a significant investment of financial and intellectual resources. Therefore, most commercial companies and universities require Material Transfer Agreements to protect their investment and address other intellectual property issues (to include liability) for use of their material.
      1. In return for providing materials or tools for research, companies and universities typically require access to the experimental results, and a limited time period to review inventor manuscripts, abstracts or other proposed documents prior to their publication to ensure that confidential information and intellectual property are protected.
      2. Some companies may require an option to negotiate for the commercial rights to future inventions, if any, that arise from university use of their materials.
      3. Confidentiality obligations are commonly included in a Material Transfer Agreement.
    3. The Technology Transfer Office will arrange the appropriate research support activity or agreement upon your request, once:
      1. You identify commercial materials that you want to use in your research; or
      2. You find an organization that you want to provide testing, assays or other laboratory services for your research; or
      3. When another organization wants to use your material.

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Why does it take so long to get anything done?

    1. The Technology Transfer Office will try to expedite each request for assistance by using approved NDSU Material Transfer, Confidentiality or other standardized NDSU intellectual property agreements. Some agreements received from industry or other organizations may have language that is contrary to NDSU policies and regulations. However, since these agreements are legally binding and often complex. Extensive negotiations may be required before all of the involved parties can reach agreement.
    2. In addition to requiring use of non-standard NDSU agreements, some commercial companies diligently investigate the background of the involved intellectual property before they sign any document. They may also require the clarification of several "what if" situations, even if there is only a slight possibility of facing those situations.
    3. When processing the report of an invention, the TTO will work as quickly as possible and the full cooperation of the involved researchers greatly facilitates the completion of the invention disclosure, patenting and commercialization process. With the full cooperation of the NDSU team, an IP landscape investigation and patent application filing can be completed in a timely matter (i.e. 6 to 8 weeks).

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I have been asked to give a presentation about the enabling components of my research, what do I need to do?

    1. Please call the Technology Transfer Office as far in advance of the presentation as is possible. We can discuss the particular situation that you are facing and determine an appropriate course of action.
    2. Depending on the type of information in the presentation, the intended audience, the venue and the time available, we may be able to coordinate a confidentiality agreement (in some instances, 36-72 hours) or some other type of intellectual property protection.

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Can I take my research with me when I move?

    1. Since NDSU technically owns all research (including research records such as lab notebooks and the associated data) done by its faculty, staff and students, as well as all research done on the campus facilities, material transfer agreements are required to remove research material, notes or data. Some inventions may be the property of the NDSU Research Foundation or the research may be legally licensed to a commercial company and thus may not be available for legal transfer.
    2. We realize that continuity in your research is very important and we will support you by coordinating the transfer of these items, if allowable, to your new employer. Please call the Technology Transfer Office for information on how this is accomplished.

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Why can't I just give my work away?

    1. NDSU is responsible for properly managing the public's resources and the property with which it is entrusted. Intellectual property is tangible property and a public asset. Specific legal statutes, regulations, and policies regulate the transfer of intellectual property. NDSU complies with those laws and policies.
    2. Even if you want nothing in return for the transfer of research results, material or data, the party to which you want to send such Intellectual Property, may strongly desire a clearly established understanding of who owns the title to the intellectual property. Establishing a clear understanding of ownership to NDSU research is only possible through a Material Transfer Agreement that is signed by the Assistant Vice President for Sponsored Programs Administration.
    3. If your work incorporates material or data owned by another university or industrial entity, several constraints regarding further transfers may already be in place. "Third party" transfers of proprietary material are normally restricted in all intellectual property agreements and it is improper to transfer anything if such obligations exist. Please contact the TTO if you have questions regarding these types of transfers, before sending any such IP.

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Can I use my technology to start a business?

    1. NDSU is supportive of its employees who want to start a business using NDSU inventions, discoveries or other intellectual property. Starting a business is a full time endeavor and the decision to do so requires purposeful deliberation.
    2. Part of the Technology Transfer Office analysis of each newly reported invention includes querying the inventor(s) as to their interest in using the technology to start a business. This discussion touches on several career oriented subjects (time requirements, teaching responsibilities, and conflict of interest) that will help the inventor decide if they want to start a business.
    3. The start up business will be required to develop its own business plan before negotiating a license agreement with the NDSU Research Foundation. An important aid in developing the financial component of a start up business plan is an understanding that the NDSU Research Foundation may accept equity as part of a license agreement.
    4. Should NDSU inventor(s) decide to start a business, NDSU may be able to help by putting the inventor(s) in contact with local business and financial professionals who can help guide them.

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What sort of intellectual property protection exists for plant research?

    1. Depending on the type or nature of the plant research, intellectual property protection can be sought through the US Patent and Trademark Office or from the Plant Variety Protection Act.
    2. Plant patent applications fall under the same examination criteria (novelty, usefulness and non-obviousness) as applications for utility or design patents. Plant patents generally apply to non-sexually propagated species that include cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state. Depending upon the unique plant characteristics or traits that are developed, we may also apply for a utility patent.
    3. Sexually reproduced and tuber-propagated plants are normally protected under the Plant Variety Protection Act (PVPA). The protections afforded by the PVPA extend for the same length of time as a patent and are just as legally enforceable. The U.S. Department of Agriculture manages this program.
    4. The Technology Transfer Office can answer questions regarding the types of protection and will assist you with preparing the necessary forms to file for a PVP Certificate, plant patent or utility patent.

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How can commercializing NDSU technology help my research?

    1. As part of the NDSU technology marketing process, the TTO licensing professionals conduct technical and sales discussions with numerous business executives. It is during these discussions that the TTO may learn of commercial research needs in either the marketed area of interest or in a different area of research. The TTO will explore opportunities and direct the company toward the appropriate NDSU department that may be able to help them fulfill their research needs.
    2. Should NDSU commercialization efforts evolve to the point of commercial licensing negotiations, it is sometimes possible for the Technology Transfer Office to invite the tentative licensee to sponsor research as a condition of the license.
    3. The research and the researcher's department may receive revenue for their invention. See also, How is invention revenue apportioned?

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What conflicts can arise from my research actions?

    1. Most internal university conflicts related to research can be resolved through open and frank communication once the involved parties recognize that a conflict exists. Other, more serious conflicts, may occur when researcher actions include non-university parties. These latter types of conflict need to be avoided if at all possible, since they may require NDSU to defend itself in court.
    2. Typical internal university conflicts that involve researchers or result from their work are:
      1. Conflict of Interest usually arises when university inventors wants to start their own business by licensing the patent rights to NDSU IP. The conflict occurs because the inventors sit on both sides of the negotiating table and can influence the amount of revenue they will receive. Conflict of interest can also develop when NDSU public resources (including the students) are used to support private business research or perform research for a company that is owned (in part) by a NDSU researcher.
      2. Conflict of Commitment arises when university personnel exceed their allowed time for external professional activities. This conflict most often occurs when the time that inventors use to start their own business, detracts from their official NDSU responsibilities.
      3. Automatic loss of foreign patent rights to technology because enabling information was publicly disclosed before an invention/discovery was reported to the TTO and protection was initiated.
    3. Conflicts involving non-university parties that may require NDSU to legally defend its inventorship and/or ownership claims to technology can result from:
      1. Inaccurate or incomplete information provided to the TTO when an invention is reported; or
      2. Using Intellectual Property agreements that are not signed by the appropriate NDSU authority.
    4. Signing (without legal authority) or using unapproved material transfer, confidentiality, non-disclosure, inter-institutional or commercial license agreements can place the university at extreme legal risk. Please immediately contact the TTO if you have questions about using these agreements or if you are asked to sign such an agreement.

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Can I still do research on something that is licensed to a company?

    1. Normal educational research can continue on the technology to which commercial companies license the NDSU patent rights. Each agreement must specify the "fields of use" involved in the license, and NDSU will retain an "educational research" field of use in all of its commercial licenses.
    2. A commercial license to NDSU patent rights permits the licensee to practice, make, have made, sell or offer for sale the object/method in the patent. Ownership to the patent itself, however, never leaves the university. NDSU also incorporates the ability to terminate a license agreement and return all patent rights to NDSU, if necessary.

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What are my intellectual property obligations?

    1. Obligations regarding the use of intellectual property are normally spelled out in the specific Material Transfer or Confidentiality agreements used to acquire/distribute that particular property. In general, legal intellectual property owners (university or commercial) monitor IP agreement obligations and they will not hesitate to act if there is non-compliance, misuse or misappropriation of their property.
    2. Members of the NDSU faculty, staff or student body, or any outside parties that use NDSU research equipment, facilities, or funds (gift, grant, or contract), fall under the obligations of the NDSU intellectual property policies. You are obligated to report the inventions and discoveries made to the NDSU Technology Transfer Office.
    3. NDSU policies permit the review of faculty consulting agreements to ensure that NDSU intellectual property rights and obligations are not compromised. If you are conducting external professional activities (consulting) and you invent something, it is best if you also report the invention to the TTO. We will officially verify whether or not there are obligations to the NDSU, the Federal government or other organizations sponsoring research at NDSU.

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What are my confidentiality obligations?

    1. To gain the best possible protection for your patentable work, there can be no public disclosure of enabling information to another party. Discussions with others can be interpreted as public disclosure, including NDSU open seminars where "enabling" details are presented or discussed with visitors.
    2. The best way to avoid public disclosure is to only discuss your work using such terms that prevent others from being able to replicate your work. However, should you need to discuss potential or actual enabling information or if you need to collaborate with non-NDSU personnel on enabling issues, the TTO can develop confidentiality or collaborative research agreements to protect your work.
    3. Other non-NDSU people or organizations may approach you for assistance and ask for a confidentiality agreement. Negotiating these agreements may take time, so please apprise the TTO of your situation as early as possible. We will do our best to complete a confidentiality agreement by the time you need an agreement for productive discussions.
    4. In either case, the confidentiality agreements of NDSU or another organization will clearly define the exact nature of the information being protected, the length of time the protection is valid and those exceptional circumstances that permit treating the protected information as public information.

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What are my recordkeeping obligations?

    1. The United States honors the principle of "first to invent" rather than the "first to file" for intellectual property protection. Thus, there is increased importance placed on the maintenance of good laboratory records and well documented notebooks. Researchers who prove by written record that they first developed and properly protected the enabling information of a patent, will receive recognition by the U.S. Patent Office and court system as the rightful owner of the patent.
    2. Thoughts, concepts and experiments should be written out and explained in a bound notebook. Periodic countersignature and witnessing of lab/notebooks by NDSU peers is an additional good practice to follow. If you use another file or book to store your experimental data, you should clearly be able to identify a link from your journal entries to the data.
    3. Practicing good recording habits in your research lab/notebooks not only facilitates establishing a clear line to inventorship, it will save you time if you need to reconstruct or replicate research results.

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Can ownership be released to the inventor(s)?

    1. Yes, under certain circumstances. However several conditions may need to be satisfied and each situation may require unique actions before the transaction is complete.
    2. If NDSU decides to release its ownership rights, the inventor(s) will need to sign a conditional letter of release that becomes void if the conditions are not followed. This letter may contain provisions requiring the inventor(s) to:
      1. Acknowledge that no further NDSU resources will be expended on the continued development of the invention; or
      2. Inform the NDSU TTO of inquiries regarding the commercial development of the invention; or
      3. Assume financially responsibility for continuing any further patent prosecution costs; or
      4. Assume responsibility for negotiating potential licensing activities.
    3. NDSU may have already agreed to certain research sponsor ownership restrictions as a condition of obtaining research funding. Some sponsors may also prohibit the release of title/ownership to inventions made with their funds.
    4. Inventions generated with federal money will need to be first returned to the federal government so that it can, if it so chooses, assert title to the invention. The inventor may then ask the federal government to release rights to the inventor.

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Who can sign intellectual property (IP) agreement?

    1. NDSU makes IP agreements (e.g. material transfer, confidentiality, sponsored research, testing, licensing) with numerous other universities, commercial entities and private individuals. Because NDSU is the legal owner of the IP developed at the university, only an authorized NDSU official can sign/commit the university to an IP agreement. The Assistant Vice President for Sponsored Programs Administration is delegated as an authorized IP signature authority for NDSU.
    2. Please contact the TTO if you need an IP agreement or if you have been given an IP agreement and you need to get it signed. The TTO will coordinate the agreement throughout the university and get it signed before returning it to you.

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Last Updated: 10/16/06


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