Frequently Asked Questions
What is the role of the Kansas State University Research Foundation?
The Research Foundation aids faculty, staff and students in matters relating to the protection and eventual marketing of the University's technologies. Basic functions include the following:
- protecting the inventors' and the University's rights regarding inventions, discoveries, trademarks, copyrights and software
- assisting researchers in preparing invention disclosures, the initial step in disseminating new and useful knowledge for public benefit
- evaluating the potential to protect the technology and to generate commercial interest
- promoting transfer of technology to industry through negotiations of intellectual property issues related to sponsored research, material transfer agreements or licensing
- distributing royalty and other income to inventors
What is the KSU-IC?
KSU-IC, the Kansas State University Institute for Commercialization, is a not-for-profit corporation contracted by the Research Foundation to market and commercialize university technologies. KSU-IC focuses on external activities by assisting the Research Foundation in identifying potential licensees and negotiating licensing terms on the Research Foundation's behalf. KSU-IC licensing agents often consult with inventors on marketing activities involved with their particular invention.
What is an invention?
An invention is a novel and useful idea resulting from study and experiment, and may relate to a process, machine, article of manufacture, composition of matter or any improvement thereof.
Who are inventors?
Inventors are those who conceive of and reduce an invention to practice. Inventorship is a legal determination. Patent attorneys will make this determination based in part on the claims that are allowed. Researchers will be asked to list contributors on the disclosure form. All contributors may be asked to provide documented proof of their contributions to the technology.
If I invent something at KSU, does it belong to the University?
Yes, if the inventor was employed or otherwise financially supported by the university or if he/she used university facilities, materials or time to conceive and develop the discovery or invention. If legal protection of an invention is pursued, faculty inventors are asked to complete an assignment form documenting the university's ownership.
What about inventions prior to joining KSU?
K-State will not claim ownership of such inventions; however, any developments or improvements of such inventions that are made while at K-State must be disclosed to the Research Foundation. Inventions made at more than one institution can be managed by the Research Foundation when the institutions formalize such an arrangement via an inter-institutional agreement.
What is the benefit of disclosing an invention to the Research Foundation?
Disclosing your invention to the Research Foundation is an important part of protecting the rights to your discovery. One of the most important benefits may be the commercialization of your technology through the Research Foundation's efforts in patenting and licensing the discovery. Other benefits through the Research Foundation's marketing efforts include new contacts with industry or industry-sponsored research in your laboratory. If royalties are generated, they are distributed according to university policy.
How do I disclose my invention?
You may either download the form from our website (www.k-state.edu/tech.transfer/forms)/ or contact us by phone at (785) 532-5720 or email to firstname.lastname@example.org..
Be sure to disclose using the most up to date form available.
Do I need to reduce the invention to practice before disclosing to the Research Foundation?
No. Disclose your idea verbally or in a brief memorandum to the Research Foundation as soon as the intellectual property is clearly conceptualized. It is not wise to wait for reduction to practice. The Research Foundation can assist you in determining the timing for completing the disclosure form.
After a disclosure form has been submitted to the Research Foundation, what is the evaluation process?
The University's Intellectual Property Advisory Committee (IPAC) reviews disclosures of all intellectual property by university employees and makes a recommendation on the suitability for further patent investigations, filings and protections. The researchers may be asked to present their technology to IPAC to clarify points and offer additional information.
What is IPAC?
IPAC is the Intellectual Property Advisory Committee, which is composed of technology transfer personnel who consider the technical merit as well as market and commercial potential of inventions, discoveries, and creations in recommending whether the university, via the Research Foundation, should accept the technology. IPAC reports to the president through the vice president for research.
Who decides whether or not to file patent applications?
The Research Foundation's professional staff works with IPAC to decide. Such decisions are based on the scope of the invention, its patentability and its commercial merit.
What makes an invention patentable?
- Novelty: It is new and wasn't known, sold or used by others or printed in a publication more than one year prior to the filing, however, this one year grace period does not exist internationally.
- Usefulness: The invention must be useful.
- Non-obviousness: The invention cannot be obvious to a person of "ordinary skill" in the art. Non-obviousness is usually demonstrated by showing that practicing the invention yields surprising and unexpected results.
Is computer software patentable?
Software may be patentable when it is part of a functional system. In addition, software is covered by the Copyright Act of 1976 under which computer software (as well as all other copyrightable work) is protected by federal statute from the moment it is "fixed" in a tangible form.
How does public disclosure affect patenting?
To protect the patentability rights to your invention, it is important that you contact the Research Foundation as early as possible prior to public disclosure. Public disclosure includes journal articles, publication on the Internet, conference abstracts, oral presentations or poster presentations. Foreign patent rights are lost immediately upon public disclosure. In the U.S., it may still be possible to file an application within one year from the date of the public disclosure.
Is a grant proposal considered public disclosure?
Yes, grant proposals that are approved for funding and published would constitute public disclosure. In many cases you may mark those portions of the proposal that contain information critical to enabling or teaching your invention as confidential and this will be redacted before the proposal is published. This is one way to prevent the disclosure of your invention.
How do I search for prior art patents?
Use the U.S. Patent and Trademark Office website (www.uspto.gov) or an international patent website (http://patentscope.wipo.int/search/en/search.jsf) to search for prior art patents. Other searchable databases are also available for issued patents and published applications. Journals and web searches may also be used to identify other sources of prior art.
How long does it take to obtain a patent?
The entire process in the U.S. may take from two to six years.
What is the cost of obtaining a patent?
The cost of a U.S. patent typically ranges from $10,000 to $20,000. The initial cost to file internationally ranges from $4,000 to $6,000. This allows for up to 30 months of protection following the filing of the first U.S. application; after which, individual country applications must be filed. Individual country costs are approximately $10,000 to $15,000.
Who pays for patenting?
If the invention is pursued by the Research Foundation, then all legal expenses and fees for the preparation, prosecution and maintenance of patent filings are paid by the Research Foundation. However, these costs are often recovered from licensees and/or research sponsors once the technology is licensed.
Who prepares and prosecutes patent applications?
Most applications are prepared by patent attorneys at private law firms. The Research Foundation directs the filing and prosecution of these applications and coordinates all correspondences between the creator(s) and the patent attorneys to ensure that the essence of the invention is captured and that commercialization issues are factored in. Final decisions related to patenting are made by the Research Foundation in consultation with licensees and/or research sponsors when applicable.
Are there different types of applications that can be filed?
There are four types of initial patent applications. They are:
- Provisional Application: This application is available only in the U.S. and is less complex than a utility application. For strategic reasons a provisional application may be filed to establish a filing date that is good for one year. At that time, the utility application must be filed to maintain the early filing date.
- Utility Application: This is a full patent application that must contain all the information on which you wish to obtain coverage.
- Design Application: This application protects the visual ornamental characteristics embodied in or applied to an article of manufacture, but not its structural or utilitarian features.
- Internationally, a Patent Cooperation Treaty (PCT) Application can be filed. Filing a PCT application retains international rights for up to 30 months from the earliest U.S. filing date. Once the 30 months has passed, the PCT process is complete and a decision must be made to select individual countries in which to file.
How long does patent protection last?
U.S. utility patents have a term of twenty (20) years from the earliest date of filing a patent application. International patent coverage generally extends twenty (20) years from the PCT application filing date.
Are there any additional fees once a patent has been issued?
Yes, in the U.S. an escalating maintenance fee must be paid 3.5, 7.5 and 11.5 years from the date that the patent is granted. If any one of these fees is not paid, then the patent coverage is abandoned and the intellectual property becomes part of the public domain. Internationally, annual maintenance fees must be paid in each country to keep the application or patent in force.
How is my invention marketed or licensed?
After consideration of the invention by IPAC and after consultation with the inventor(s), non-confidential material is prepared for distribution to selected or pertinent companies with research or commercial interest in a similar field. Technical details of an invention may be disclosed to interested parties under a confidential disclosure agreement. Based on further evaluation of the invention by interested companies, which often involves direct communication with the inventor(s), a potential licensee may be identified and negotiations for a license would begin.
How is the license income distributed to inventors?
Per Kansas Board of Regents' intellectual property policy, at least twenty-five (25) percent of net proceeds are distributed and shared by inventors directly responsible for the creation of the licensed intellectual property. For patentable inventions, ten percent is also distributed to the department(s)/administrative unit(s) of the inventors to support further research.
What happens if the Research Foundation does not want my invention?
Rights to the invention may be released to inventor(s) if there are no plans to pursue the technology or to secure additional research funding. Each case is evaluated on its own merits before such a decision is made. In some cases, rights must be waived to a research sponsor rather than the inventor(s).
Why are Confidential Disclosure Agreements necessary?
A Confidential Disclosure Agreement (CDA) is a contract for the protection of proprietary information. Such a document is necessary before any transfer of proprietary information is made from one party (university investigator) to another (corporate scientist). Without this agreement, the individual or company to whom the information is disclosed is free to use and transmit this information to others. Such activity may significantly reduce or eliminate the value of intellectual property related to the information.It is important to contact the Research Foundation before disclosing any confidential information to another party.
Why are Material Transfer Agreements necessary?
A Material Transfer Agreement (MTA) is a contract for the protection of tangible research materials and/or information that is created by K-State investigators and is useful to others for research or for commercial development. It is important to contact the Research Foundation prior to receiving or sending out any research materials.
Who do I contact if I have other questions?
Contact the Research Foundation at (785) 532-5720 or by email to email@example.com. The professional staff can answer your questions and assist you in determining the best course of action for your discovery.