Public disclosures before the filing of a patent application can jeopardize patent rights. Public disclosures can include papers, abstracts, posters and lectures. A paper is considered to be a public disclosure at the time it is made available on the publisher's website, even if it has not yet been indexed in PubMed and will be forthcoming in a future volume of the journal. As you know, an abstract submitted to a meeting may become available online before the meeting begins. This online publication of the abstract is considered a public disclosure. Finally, poster presentations and lectures which are attended by people from outside of the university are typically public disclosures, even if they are presented at Temple. You should endeavor to contact the Office of Technology Transfer regarding your disclosure well before it will be made.
As a general rule for papers and abstracts, you should try and contact our office before the manuscript or abstract is submitted. If you have any questions about whether something is a public disclosure, please feel free to contact us.
Temple is entitled to obtain ownership in any invention (including computer-related software and ancillary materials, but not including pure works of art or musical compositions) which is developed in whole or in part by Temple employees, including, without limitation, faculty, staff member, fellow, resident, graduate student or assistant (whether paid or unpaid), which emerges from Temple research or development activity, or from use of any University facilities or equipment.
Inventors are entitled to ownership in any discovery or invention which is developed wholly on the inventor's own time and with the inventor's own facilities and which does not involve use of any Temple funds, equipment, facilities or personnel.
Temple pays for costs related to inventions it retains ownership to. Expenses related to inventions where the inventors have the right to own, or the university has waived its right to own, are the responsibility of the inventor.
Ownership rights to inventions emerging from activity pursuant to an agreement with an outside sponsor are determined in accordance with that agreement, or, in the absence of a controlling agreement, with rules and regulations, if any, governing that sponsorship. In particular, Temple is governed by Public Law 96-517, Government Patent Policy Act of 1980 (and any successor thereto or similar laws) and its attendant regulations and amendments regarding federal research agreements. In all cases, where feasible, Temple seeks to negotiate agreements which permit the University to retain ownership rights.
Yes. All inventions must be disclosed, even those believed by the inventors to be unrelated to his or her university duties and not involving the use of University support. Disclosure is especially important for inventions emerging from sponsored research agreements so the University can ensure compliance with such agreements.
Please review the section Invention Disclosure Process.
Please review the section Commercialization of Research Results.
Net income is defined as gross income minus a 20 percent OTT Administration Fee and patenting, legal and marketing costs incurred by the University related to an invention. Net Income is distributed as follows:
Typically, a patent attorney has the last word on this matter. However, there are a few general rules to keep in mind:
a) Graduate student and Postdoctoral fellows - If these individuals have simply executed the instructions of the Principal Investigator (PI) without any intellectual input to develop the idea, then they may not qualify as 'inventors'. However, if the PI is keen to reward his coworkers for their efforts, he/she is free to share his/her portion of any future revenue with them. This can be achieved by instructing the OTT, in writing, about the distribution percentage of future income.
b) Academic collaborators - If the collaborators simply provided you with materials for research and your invention was created using the material, then use one or more of the following approaches to resolve the inventorship dilemma:
i) Read the terms of the Materials Transfer Agreement that you signed before getting the materials from your collaborator and determine the rights pertaining to Intellectual Property. Typically, if your collaborator did not contribute to the conception of the idea, he/she might not qualify as an 'inventor'. Collaborators do not become inventors just because they provided the material for your research.
ii) If the collaborator actually contributed to the conception of the idea, the OTT will initiate discussions with the collaborator's institution to establish an inter-institutional agreement before filing a provisional patent application
c) Industrial collaborators -
i) Read carefully, the terms of the agreement executed with the company to determine ownership of resulting inventions. OTT should be contacted to make a final determination.
ii) If the collaborator indeed contributed to the conception of the idea, the OTT will begin discussions with the company to enter into a joint agreement for patent prosecution costs and future revenues.
Inventors – Individuals who contributed intellectually to the conception of the idea; individuals who participated in the ‘eureka’ moment(s).
Authors – Individuals who either collaborated or contributed ideas/labor/effort in completing various experimental tasks.
A patent can be invalidated at any time if the inventorship is found/proven to be incorrect. In the absence of malice and dishonestly, the United States Patent and Trademark Office (USPTO) provides various procedural formalities to correct inventorship that included adding/deleting an inventor(s).
Yes, you may simultaneously do so. The reviewers of federal grant applications are presumed to be sworn to confidentiality.
Yes, after the filing, you can discuss your invention with other parties; but make sure that any information you disclose is covered in the provisional application. That said, we prefer to have a confidentiality agreement in place before you initiate discussions with a company or such other commercial entity since a provisional application is not publicly available.
Either verbal or written communication with a party that was never privy to the invention is technically a public disclosure. In other words, discussing your invention with individuals who never participated in the genesis of the invention is a public disclosure.
Other forms of obvious public disclosures include oral presentations, submission of abstracts, publication of abstracts, articles, and posters.
When the patent application proceeds to ‘grant’ or ‘issue’, you have been awarded a ‘patent’ on the invention. Typically, it takes 3-5 years for procuring a patent. Mere filing of a provisional application does not translate as getting a patent. Until the patent is granted, you may discuss your invention with the tagline ‘patent pending’
When you have gathered preliminary data to support the idea, please send in the disclosure to the OTT.
Yes, although the timeline then becomes extremely tight. If the findings in your manuscript are deemed as an ‘invention’ then, we will need to file a provisional application before the galley proof of your article is posted online.
Yes, we can. However, the disclosure would have resulted in the loss of all international rights. We would be able to apply for patent protection only in the US if the commercial opportunity in the US justifies the cost of a obtaining a patent.
The OTT takes care of reporting inventions to the concerned federal agency through www.iedison.gov
Yes. If Temple decides not to pursue the filing of a patent application, then the rights to the invention are waived back to the inventors through a letter issued by the Director of Technology Transfer.
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Fax: (215) 204-7486
