Intellectual Property (IP) and entrepreneurial activities

SOM Home > Research > Research > Intellectual property and entrepreneurial activities

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
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) developed at the School of Medicine 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 should you 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 Bayh-Dole Act, UVA must attempt 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. Inventors should disclose their inventions to this office using its invention disclosure site. UVALVG is a not-for-profit corporation whose charge is to protect and license UVA IP.  UVALVG notifies the Vice President for Research of disclosures it receives and does the following:

  • 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.

 

UVALVG attempts to identify a licensee to support patent prosecution 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, inventor's lab, and individual inventor(s) per the UVA royalty sharing schedule.  For additional information on IP and the patenting/licensing process, contact a licensing associate (924-2175).


Confidentiality and patent rights.
Disclose your inventions to the UVALVG as soon as possible, in order to protect U.S. and foreign patent rights.  Public disclosure prior to the filing of a patent application may cause the loss of certain patent rights; UVALVG can counsel you on when and how you may disclose your invention publicly.


Reporting inventions resulting from federal funding.
Inventions that are generated under federal research support 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 use the iEdison system to report inventions (see "Reporting requirements for federally-funded IP").  Contact the UVALVG 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 recordkeeping.  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, or other fixed communication to others
  • meeting abstracts, as of the date they are delivered to attendees
  • conversations with outside visitors who are not covered by a nondisclosure agreement.

 

Nondisclosure Agreements (NDAs). NDAs, also called confidentiality agreements, are used as follows:

  • 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 site PIs
  • included as provisions in many consulting agreements

 

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.  Contact the UVA Licensing and Ventures Group for further information.  Questions in these areas should be directed to that office or the VP for Research.