Information for Faculty

What are the benefits of participating in the tech transfer process as a Rutgers Faculty member?
The main benefit of intellectual property protection and the tech transfer process is the ability to obtain increased research funding from private corporations and work on research projects with industry. Another benefit is the ability to supplement your faculty income with royalty payments under the Rutgers Patent Policy. Some faculty members want to start companies, and intellectual property protection is important in this process. Finally, federal and other grant agencies increasingly require that research have practical application to obtain grant renewals.

I think I have a new discovery, what should I do?
The first step in obtaining protection for a new discovery is to disclose it to Rutgers. In order to get the licensing process started, faculty inventors should complete a copy of the Rutgers Invention Disclosure form available at this website, fill it in as completely as possible, and return it to: Triage Administrator, OCLTT, disclosures@ocltt.rutgers.edu.

What happens to my Invention Disclosure when I return it?
Once the disclosure is received by Rutgers OCLTT it will be evaluated to determine :

1) whether intellectual property protection is possible, including patent, copyright, plant variety protection, trademark or trade secret, and

2) whether intellectual property protection makes economic sense. You will be contacted by someone from Rutgers OCLTT once this preliminary evaluation is completed for a follow up interview.

How do we get a Patent?
A US patent is generally available for any  "new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof". In order to obtain a patent, the invention must show utility, novelty and not be obvious (see 35 USC et. seq.). It is important to make sure that no one else has published or patented anything similar to your new invention. Usually OCLTT will perform a patent search to determine if patent protection is available, but you can also search patents online free of charge at the European Patent Office or the United States Patent and Trademark Office (USPTO) before submitting the Invention Disclosure to OCLTT.

If it seems likely that the invention is patentable after the search, it will be necessary to prepare a written patent application to be submitted to the USPTO. The application as filed must provide a written disclosure of the invention which shows the best mode of making the invention; which enables another skilled person to make and use the invention; and which specifically claims the invention (sets out what the invention is) in writing. The level of detail required is similar to an academic manuscript and these are routinely used as the basis for patent applications.

Once submitted, the patent application will be examined by the USPTO for novelty, utility, obviousness, best mode and enablement. If the application meets these statutory criteria, a patent will issue. Often the USPTO requires amendments to the claims, which can take a number of years to reach agreement on. US patents applied for after June 7, 1995 are valid for 20 years from the date of the earliest filing relied upon for priority (US patents filed before June 7, 1995 are generally valid for 17 years from the date of issue).

Who "owns" the patent?
Under US law, only the original inventor of the claimed subject matter, and their assignees, can apply for a patent. Rutgers inventors under the Rutgers Patent Policy are required to assign the rights to any patents made using Rutgers resources to the University. In exchange, the University manages and licenses the patent on your behalf, and pays you a share of the royalties.

How do I know if my post-doc or graduate student is an inventor of the patent?
Under US invention law, inventors must contribute to the conception of the subject matter of the patent as claimed. This is not the same standard as being a co-author on a publication. For example, carrying out experiments at the direction of another does not qualify as an inventive contribution. Nor does supplying a research material. As inventorship is a complex issue which has important implications for patent prosecution and licensing, please contact OCLTT if you have any questions.

What is a "publication"?
Any written enabling disclosure of the invention to a third party is a "publication". Some things considered by the USPTO to be publications include poster abstracts, doctoral theses, grant proposals once granted, on-line listings, offers for sale, newspaper articles, etc. If you have any questions contact OCLTT.

What if I published my invention?
If the invention has been published, the US law grants a one-year grace period during which the inventor can file for protection. But overseas filings require absolute novelty. Other means of protection such as copyright, plant variety protection, trademark or trade secret protection may also be available for published discoveries. Contact OCLTT  for further details.

My invention is about to be published, what should I do?
Contact OCLTT immediately. Recent amendments to the US patent law provide for a new type of protection, a US Provisional Patent filing. This simplified filing was specifically enacted by Congress to benefit small inventors and research universities. As long as an enabling manuscript is available, a provisional patent can be filed almost immediately. Contact OCLTT for details.

I need to exchange information with another organization about my research, what should I do ?
Exchanges of information can be protected by confidentiality agreements if these are executed before you talk to the other organization. contact OCLTT for details.

What if my patent was funded under a federal grant?
This needs to be reported (37 CFR 401) to the granting agency and disclosed in the patent. The federal government also retains march in rights in the patent. OCLTT will typically handle these issues for you, so continued grant funding is not jeopardized.

How do I get a Copyright?
A US Copyright is available for any work of original authorship which is fixed in a tangible medium of expression and is reproducible (17 USC et. seq.). Examples of things which can be copyrighted include original works of computer software, books, stories, pictures, video performances, plays, musical recordings, sheet music, etc. A copy of the present Interim Copyright Policy of Rutgers is available for review. While the copyright attaches as soon as the work is fixed in a final form which is reproducible, in order to enforce the copyright the copyright holder must register with the US Copyright Office (a part of the Library of Congress) and the copyright holder must serve notice. To serve notice, you should affix the following legend to the copyrighted materials "199X, Rutgers, The State University of New Jersey, All Rights Reserved". The copyright term was recently extended to the life of the author plus 70 years, or for organizations to 95 years from the date of authorship.

What if I use materials written by other people?
While materials written by others can be incorporated into copyrighted materials, it is important to get the author's permission (license) or assignment in each case before the copyrighted materials incorporating the materials written by others can be marketed or licensed. Where agreements are in place in advance, copyrighted materials authored by several parties can be considered "works for hire" which can then be copyrighted by the party who contracted the work for hire. As these issues are complex, we suggest you contact OCLTT with any questions.

How do we obtain protection for new plants?
Many forms of protection are available for new plants including utility patents, plant patents, plant variety protection certificates, plant variety breeders certificates, trade marks and trade secrets. Plant patents are issued by the USPTO while variety protection certificates are issued by the US Department of Agriculture. As the choice of which type of protection to obtain can be somewhat complex, please contact Chris Izzo the licensing officer at Cook College, for further assistance.

How do we obtain Trademark protection?
Trade and Service Marks are used to identify goods and services used in commerce (15 USC $ 1051 et. seq.). Trademarks are increasingly used to identify software, websites, new plants, etc. The trademark will be examined by the US Patent and Trademark Office to see if it meets certain criteria before the mark is issued. There is an additional requirement that the mark be actually used in commerce after it is granted or the mark will be withdrawn. As the particulars can be confusing, contact OCLTT for details.

What if I need to use the Rutgers University Trademarks for my campus activity?
If you need to use the Rutgers University Trademarks (i.e. Scarlet Knights) please contact the Department of University Relations, Trademark Licensing Office, which is not a part of OCLTT.

How do we obtain Trade Secret protection (for biological materials)?
Trade Secret protection is available under state laws and is used protect information

1) which has economic value, and

2) where reasonable efforts are made to keep the information secret. Some examples of things which can be protected and licensed this way include hybridomas, other unique cell lines, and transgenic animals and plants. It is important to use strictly drafted biological materials transfer and license agreements to accomplish this. Contact OCLTT for details.

What if I want to send or obtain a biological materials under a materials transfer agreement with another organization?
Contact Charles Wyckoff, who manages such contracts at OCLTT, to discuss details of the transfer.

What are my rights and responsibilities as a Rutgers Faculty Member?
Please review the Rutgers Patent Policy, Code of Ethics, and Conflict of Interest Policy and other relevant Rutgers Policies to see if you can find an answer there. If not, please contact OCLTT for assistance.

For addtional information about patent issues, see the attached article "Patent Issues Facing Universities" from Research Management Review, Volume 15, Number 2 Fall/Winter 2006.