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Intellectual Property (IP) and entrepreneurial activities

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Intellectual Property (IP) and entrepreneurial activities

Summary and quick links

What is intellectual property?
Why should you protect your intellectual property?
UVA Licensing and Ventures Group (UVALVG; formerly UVA Patent Foundation)
UVA Patent Policy
SOM Clinical and Translational Research Project Directors
Confidentiality and patent rights
Reporting inventions resulting from federal funding
Avoiding problems with IP
Material Transfer Agreements
Confidential Disclosure Agreements
Entrepreneurial activities
UVA Faculty Entrepreneur's Guidebook (VP for Research)
SBIR and SBIR awards

What is intellectual property? "Intellectual property" (IP) literally refers to products of the intellect with commercial value. At the School of Medicine, IP might include:

novel, useful, non-obvious inventions (regardless of whether they can be patented)
software, written documents, or images that can be copyrighted
genetically-manipulated organisms
special antibodies

U.S. patent law defines “invention” as a new and useful process, machine, manufacture or composition of matter, or any new or useful improvement thereof. In order to be patentable, an invention must be novel, have utility, and be non-obvious to others skilled in the art (i.e., colleagues who work in the same area).

Why protect your intellectual property?

Legal/regulatory/policy obligation. UVA policies on patents and copyrights require that employees disclose and assign the title to inventions developed within the scope of their employment or using significant University resources. Under the 1984 Bayh-Dole Act, UVA has the obligation to patent and license inventions developed under federal funding. Recipients of federal funds must disclose to the government any new inventions (see "Reporting inventions resulting from federal funding").
Future revenue streams for your research. IP that is licensed may result in the payment of royalties and license fees. (See the UVA royalty sharing schedule.) Furthermore, licensees of IP often provide funding to the inventor(s) for additional R&D work required to help bring the invention to market. Research agreements are negotiated by the Office of Grants and Contracts.

UVA Licensing & Ventures Group (UVALVG; formerly UVA Patent Foundation). Invention disclosures should be submitted directly to the UVALVG, a not-for-profit corporation whose charge is to protect and license UVA IP. UVALVG notifies the Vice President for Research of invention disclosures it receives. UVALVG:

evaluates inventions for patentability and potential market value;
solicits interest on the IP from potential licensees;
negotiates and manages licensing agreements on behalf of the University;
helps faculty create start-up companies around their own IP.

Most of these activities require input from the inventor(s). For example, faculty may be instrumental in identifying potential licensees, or might suggest a scientific or licensing contact at one or more companies. Similarly, inventor input is required to generate and file a patent application and to respond to the examiner's questions.

UVALVG uses a "deal-based" business model, directing its resources to identify a licensee that would pay for patenting costs and further development of the IP. Inventions that are not licensed quickly are returned or licensed back to the inventors or are abandoned. Income resulting from licensed technologies flows to the University, School of Medicine, inventor's department, UVA Licensing & Ventures Group, and inventor(s) per the UVA royalty sharing schedule. For additional information on IP and the patenting/licensing process, contact a licensing associate (924-2175).

SOM Clinical and Translational Research Project Directors. Mr. David Chen and Dr. Greg Fralish can help move faculty move their technologies along the development pipeline. These individuals work as facilitators and managers of the development project: linking inventors to the UVA Licensing & Ventures Group; identifying critical collaborators; locating investors (if applicable); assessing the market; developing business plans; etc.

Confidentiality and patent rights. Report inventions to the UVALVG as soon as possible, in order to protect U.S. and foreign patent rights. U.S. law provides a one-year grace period between public disclosure and the filing of a patent application. By contrast, most foreign patent rights are lost immediately upon public disclosure prior to filing a patent application – unless the U.S. filing has taken place before disclosure. Although inventorship under U.S. patent law recognizes “first documented date of invention” in establishing priority, it is likely that this will change to “first documented date of invention.” Such a change would require greater efforts by inventors to maintain confidentiality prior to submitting a patent application, lest an inadvertent disclosure were to result in others filing with the Patent Office.

Reporting inventions resulting from federal funding. Such inventions must be reported to the government, which is granted a non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States the subject invention throughout the world. Most federal agencies (including NSF, NIH, and DOD) use the iEdison system to report inventions (see "Reporting requirements for federally-funded IP"). Contact the UVA Patent Foundation for further information on how and when to report inventions to the federal government.

Avoiding problems with IP. Document the conceptualization and reduction to practice of all technology, to establish a priority date. Refer to our section on record keeping. Contact the Patent Foundation as soon as you think you have an invention with potential commercial value. Do not submit a manuscript or abstract describing the technology before conferring with the Foundation, since public disclosure prior to submitting a patent application may restrict patent rights. Any of the following may constitute disclosures:

paper, recording, microfilm, other fixed communication to others
meeting abstracts, as of the date they are delivered to attendees
outside visitors who are not covered by a Confidential Disclosure Agreement.

Nondisclosure Agreements (NDAs). NDAs, also called confidentiality agreements, are used in several contexts:

to protect IP rights when discussing your technology with a potential licensee
required of grant reviewers by funding agencies
required by sponsors of clinical trials before releasing protocols to potential Principal Investigators
included as provisions in many consulting agreements

CDAs may be uni- or bi-directional. Like MTAs, NDAs are negotiated and signed by the Office of Grants and Contracts (see standard NDA to protect UVA information).

Entrepreneurial activities. UVA supports faculty who wish to start their own companies in order to bring their own intellectual property to market. The UVA Faculty Entrepreneur's Guidebook explains the process of starting a new company, opportunities for faculty and their companies to license their own IP, types of institutional and other support available to new companies, and management of conflicts of interest due to ownership in a start-up company. Questions in these areas should be directed to the Patent Foundation or the VP for Research. Entrepreneurs considering starting a company may also consult The Entrepreneur's Guide to a Biotech Startup.

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