Frequently Asked Questions for Inventors

Your Invention

Patents

Trademarks

Licensing

Inventions, patents, trademarks, and know-how are made available to the public through contractual arrangements called licenses.

Copyrights

Find answers to your copyright questions in our Copyright Handbook.

Your Invention

What are intellectual properties?

Intellectual properties are intangible products of the mind - ideas and their representation. Such things as inventions, publications and other works of scholarship like videotapes, computer programs, or works of art are intellectual properties. Intellectual properties can be protected by means of copyright, trademark, or patent.

In becoming an employee of Michigan State University, you agreed to give certain inventions and discoveries to the university. The authority to manage inventions and discoveries is vested in the President of the university, who in turn has delegated it to the Vice President for Research and Graduate Studies. The MSU Technologies (MSUT) office administers this function by evaluating, patenting, and then transferring protected inventions into the marketplace. In doing so, MSUT helps fulfill Michigan State University's land-grant commitment to the extension of applied knowledge.

The information below explains the preliminary actions necessary to protect an invention. Other processes of protection - patenting and licensing - are explained in separate brochures. These brochures serve to answer commonly asked questions about handling intellectual properties but leave many other points unaddressed. When you need additional information, please direct your intellectual property questions to:

MSU Technologies
Michigan State University
3900 Collins Road, Suite 1044
Lansing, MI 48910
517-355-2186

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What is an invention?

The dictionary defines an invention as the creation of something not previously in existence - that is, an original device or process. U.S. Patent Law is even more specific: an invention is "a device or process that is not only novel and useful but that reflects creative genius, makes a distinct contribution to and advances science, is recognized by masters of science as such an advance, and reveals more than the skill of expert artisans or mechanics in discovering new and useful gadgets or processes of wide commercial application." For further questions on what an invention is, please see MSUT's brochure on inventorship.

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Can my invention be patented?

To be protected by patent, an invention must possess the following qualities:

Novelty: Your invention must be new - that is, it must be different from "prior art." Prior art is defined as the total amount of technical experience and knowledge of every person who has ever lived. It also means that you, the inventor, may not have published it, put it in public use, or offered it for sale for more than one year before you apply for a United States patent.

Utility: The invention must be useful.

Nonobviousness: The invention must not have been obvious to anyone of ordinary skill in the invention's art at the time the invention was made.

To receive a patent, you must also disclose enough information about your invention that others are able to use it. The U.S. government sees the granting of patents as an incentive to invention disclosure - a way to add to the amount of available knowledge.

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What is an invention disclosure?

Invention disclosure is the act of sharing sufficient information for another person to carry out or duplicate your invention. It is the first step in the patenting process. Such disclosure should be accompanied by a written agreement of confidentiality. Improper disclosure will result in losing all rights to patenting in foreign countries. Failure to file a patent application with the U.S. Patent and Trademark Office within one year of improper disclosure results in complete loss of patenting rights.

Generally you may disclose your invention to fellow university colleagues without a written agreement of confidentiality. You may make disclosure to someone outside the MSU community without jeopardizing invention patentability if proper confidentiality requirements are in place. The MSU Confidential Disclosure Agreement provides these confidentiality requirements. When appropriately signed at MSU and by the potential recipient's organization, this agreement will prevent loss of foreign patentability and obviate the U.S. patent timeline.

In order for Michigan State University to begin the process of protecting, patenting, and transferring your invention, you must make proper disclosure to the MSU Technologies by means of an Invention Disclosure Form, available online or from MSUT.

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Must I disclose my invention?

Yes, if your invention has been funded wholly, or in part, by the federal government. In 1980, Congress passed the Bayh-Dole Act. This Act outlines the rights and obligations of both the university and the government whenever there is a federally supported research and development project. Researchers are obligated to report any inventions to the university (i.e., MSU Technologies), and the university must report the invention to the agency within 60 days. Be sure to completely fill out item 3 regarding funding on the Invention Disclosure Form.

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What is Michigan State University's patent policy?

MSU's patent policy defines what inventions and discoveries you have agreed, by becoming an employee of the university, to give to the university. The patent policy and royalty distribution schedule are included at the end of this brochure.

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When should I make my invention disclosure to MSU?

The sooner you submit your invention disclosure to our office, the more we will be able to assist you. Your invention need not be complete when you first disclose it to MSUT. Additional information can be added to the disclosure file as it is developed, until your invention is complete. Early submission allows us to review the invention and initiate inquiries to determine its commercial potential before you invest further time and effort in it. Early submission also provides us the opportunity to discuss the handling of the invention and, perhaps, assist you in locating an industrial research sponsor for continued invention development.

The early submission of your invention disclosure could result in an earlier filing of the patent application in the U.S. Patent and Trademark Office. An earlier filing date may be important if a similar invention is being developed elsewhere.

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What information do I need to provide to complete an invention disclosure?

You will need to provide:

  • A working title for the invention
  • The name(s) and department(s) of the inventor(s)
  • The function of the invention
  • A description of the invention
  • Ways in which your invention relates to other inventions
  • To be patentable, your idea must somehow be reduced to practice. You can make a working model, but this is not necessary. A more common course of action is to include clear and complete drawings and descriptions of the invention in your patent application.
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What will MSUT do with my disclosure?

First, we will perform a search to determine if your invention is patentable. If it is patentable, MSUT may or may not pursue the patent in the name of Michigan State University. This determination will be based on a number of factors, including potential commercial value and benefit to the public. You will be consulted during this process. If a patent is not pursued, the university will return the assigned patent rights to you upon your written request.

If MSUT pursues the patent on your invention in the name of the university, it will assume all domestic costs related to obtaining the patent. Once the patent has been obtained, MSUT will investigate possibilities for marketing the invention, usually through licensing all or part of the patent rights.

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What if my invention is not patentable?

Inventions that are not patentable may still be valuable. There may be a great deal of "know-how" about your invention. Basically, know-how is "knowing how" to do something using this knowledge. The university could market this know-how or it could return the invention to you.

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Will the patent process interfere with publishing my research?

Because of the requirement that an invention submitted to the U.S. Patent and Trademark Office may not have been disclosed to the public more than one year before the patent application is submitted, you must be cautious about publishing your research if you wish to seek a patent. However, we attempt to facilitate the patent process so that publishing research is not compromised. Once the patent application has been submitted, you can publish as much and as often as you want.

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How can I protect my patentable inventions?

Make sure you keep good records of your work while you are creating your invention. A detailed research notebook is very important in documenting the inventive progress [see appendix]. As you invent, you should make sketches and detailed written descriptions of your activities, numbering and dating them as you go.

Your notebook record should be reviewed by witnesses as you go along, even daily. Witnesses cannot be coinventors. It's best to have the same people witness your later work who witnessed your original conception of the invention. Witnesses should be people who are technically capable of understanding the invention. Good potential witnesses might be the chairperson of your department or institute or a departmental colleague who is not a part of your project. Office support staff members are generally not appropriate witnesses.

An accurate record of important dates is critical. Be sure to note the date the invention is conceived - that is, the date you first present a written description, sketch, drawing, or model of your invention to witnesses - as well as the date the invention is reduced to practice either by the filing of a patent application describing the invention or by making a working model.

You should also make note the date the invention is first put in public use - that is, the date the information is first disclosed outside the university community. Once disclosure in a printed publication occurs, you have a time limit of one year in which to file a domestic patent application.

As defined by patent law, "printed" can mean printed, typed, or handwritten, and "published" simply means made available to the public. If your invention is disclosed to the public more than one year before application for patent is made, this disclosure will be considered prior art and your invention will not be patentable. As a researcher, it is particularly important for you to keep this time limit in mind.

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Suggested form and contents of a research notebook

  • The notebook should be bound and pages numbered sequentially. (Secondary records or duplicate pages should be made periodically and stored in another area to prevent loss.)
  • Entries should be made in ink or indelible pencil.
  • Each page should contain the date (month, day, and year) and the signature of the individual performing the work.
  • The work should be identified with a description of the project or a project number.
  • Notes should be in sufficient detail to provide understanding and repetition of the work performed:
  • Describe the idea or conception of an invention or technical achievement.
  • Describe the experimental procedure or plan.
  • Describe the equipment used, how it operates, and conditions of operation.
  • Data should be entered directly in the notebook with an analysis and conclusion which can be derived from the data.
  • Information entered should be original, not transcribed, and should be dated, signed, and witnessed. Data from equipment, graphs, etc. should be identified and/or referenced in the notebook.
  • Provide an identifying code for any sample or product developed. The code should be placed on the compound or product and entered in the notebook. This code should be used for tracking the sample or product and is particularly helpful when something is sent out for evaluation.
  • Mistakes should be crossed out, initialed, and dated. The correction should be noted chronologically on the next available page. Pages should not be obliterated or removed.
  • Unfilled portions of pages should have an X drawn from the point just below the last entry to the line provided for witnessing on the bottom of the page.
  • Conception and reduction-to-practice pages of the notebook should be read, understood, witnessed, dated, and signed by at least one person other than the notekeeper, but NOT by a coinventor.

NOTE: A coinventor is someone who makes an intellectual rather than purely experimental contribution to the work. Witnessing should be done no later than one week following the entry.

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Patents

What is a patent?

Patent law deals with the protection of the mental concepts or creations known as inventions. The authors of the U.S. Constitution wrote a provision specifically empowering the federal government to implement a patent system. The laws and rules that govern patent law can be found in Title 35 of the United States Code, Title 37 of the Code of Federal Regulations, Manual for Patent Examination and Procedure, Official Gazette, and the United States Patent Quarterly. These sources can be found in the government section on the lower level of the MSU main library. Patent questions should be directed to the Office of Intellectual Property, 238 Administration Building, telephone number (517) 355-2186.

A United States patent is a grant by the government giving a patent owner the right, for a term of years, to prohibit others from making, using, or selling the discovery or invention described in the patent document. A patent is considered personal property and may be licensed or assigned by the owner to others, which permits those others to make, use, or sell the invention.

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Who can obtain a patent?

Patents are granted to the true inventors (researchers) of patentable inventions, and the inventors are listed as such in the patent document. Pursuant to Michigan State University's patent policy, ownership of a patent that is granted to an inventor who is an employee of MSU is transferred or assigned to the university by the inventor(s). The university is listed on the patent as the assignee or owner.

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What can be patented?

To be patented, an invention must possess the following qualities:

Novelty: The invention must be new - that is, it must be different from "prior art" (see below). In other words, it must be slightly different from that which is already known to the public. Novelty also means that you, the inventor, cannot have published the invention, put it in public use, or offered it for sale more than one year before applying for the patent. In addition, you cannot get a patent for someone else's invention.

Utility: The invention must be useful. Some level of benefit must be provided by the invention.

Nonobviousness: The invention must not be obvious to anyone knowledgeable in the area at the time the invention was made. An invention that solves a known problem is nonobvious if others attempted to solve the problem but failed.

In short, anything that is made by an inventor is patentable, excluding such things as principles of science and laws of nature. Whether your invention possesses the above qualities often requires an opinion from a patent attorney. To receive a patent, you must disclose enough information in the patent document to allow one knowledgeable in the area of the invention to use it. The U.S. government sees the granting of patents to an inventor as an incentive to disclose inventions fully and thus a way of promoting the advancement of science and disclosure of that science to the public.

As a Michigan State University employee, you are obligated to disclose your inventions to the Office of Intellectual Property at its office in 238 Administration Building or by calling (517) 355-2186.

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What is prior art?

The novelty requirement means that you cannot patent anything that is not new. This means the invention must be different from all earlier inventions. Prior art is the total amount of technical experience and knowledge that exists in the field pertaining to your invention.

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When should a patent application be filed?

A patent application can be filed upon conception, before the invention has been made in the laboratory, or even before preliminary or exploratory laboratory work has been done. It must be filed before the one-year anniversary of the invention's public disclosure. The Office of Intellectual Property will work with you and the patent attorney to determine the appropriate filing time for the invention.

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In which patent category will my invention be placed?

The U.S. government grants the following three types of patents:

Utility Patents: Utility patents are granted for any new or useful process (how to do something), machine, article of manufacture, or composition of matter or any new and useful improvement thereof. This is the most common type of patent, and the one that will almost certainly be applicable to your invention. Some examples of utility patents are new instruments, tools, accessories, new uses or methods of producing compounds, and transgenic animals and plants.

Design Patents: Design patents are concerned with the appearance of an article of manufacture. They are granted for any new, original, and ornamental design, such as toys, furniture, and containers.

Plant Patents: Plant patents are granted for any distinct and new variety of plant that the inventor has produced asexually, such as flowering plants and fruit trees.

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Who writes and files the patent application?

A patent attorney selected by Michigan State University writes and files the patent application. The application is sent by the attorney to the U. S. Patent and Trademark Office (PTO). Upon receipt, the PTO assigns a serial number and records the date of receipt. This process is referred to as "filing" a patent.

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How much will I be involved in patent application preparation?

As the inventor, you must supply all basic information to the patent attorney and may be asked to supply additional information. Drafts of manuscripts, abstracts, and various reports are often useful when drafting the patent application. The attorney may also need copies of related articles that you or others in the field have published. You will be expected to review the application and seek revisions until satisfied the application correctly identifies the invention.

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What is the content of a patent?

The actual patent document contains numerous items: the patent number, the date the patent was issued, the title of the invention, the name of the inventors, and the assignee. The filing date of the patent application is also included as well as cited references, such as U.S. patent documents and other publications related to the invention. The patent also contains an abstract, which is a detailed one-paragraph summary of the invention, figures, tables, schematics, and drawings that show how the invention is put together. Following the abstract and drawings is a detailed description of the invention and the object of its use.

The most important part of the patent is contained in the "claims." A claim basically defines the extent of the subject matter of the invention or discovery for which patent protection is afforded. Thus, no matter how broadly or how extensively an invention is disclosed in the body of the patent, only what is claimed is actually patented.

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What does "patent pending" mean?

The term "patent pending" is a means of informing the public that a patent application is on file in the U.S. Patent and Trademark Office. The law imposes a fine on those who use this term falsely to deceive the public.

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What happens after a patent application is filed with the U.S. Patent and Trademark Office?

If the application is complete, the U.S. Patent and Trademark Office (PTO) will give the application a sequential serial number and a filing date.

The application will be examined by the PTO group in charge of the technical class to which the invention belongs.

Within six to eighteen months, the individual who examines the patent sends the first "official action" to the patent attorney specified to receive correspondence. If all the claims are patentable and MSU has paid the appropriate fees, the patent will be issued.

Typically, the application is not accepted as is, and some of the claims may have to be modified or eliminated. In this case, the patent attorney may need assistance in amending the application. The amended application is resubmitted and the process begins again.

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How long does it really take to get a patent?

The length of time it takes to get a patent varies depending on the complexity of the invention and the prior art that already exists in a particular field. At the MSU Office of Intellectual Property, patents have been received as soon as one month after filing, and as long as two years or more from filing. On average, it takes approximately eighteen months from filing to issue to obtain a utility patent. Design patents take longer.

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How much does a patent cost the university and the inventor?

Several fees are required to obtain and maintain an issued patent. A typical application for a patent can cost from $4,000 to $5,000 to draft, depending on the complexity of the invention. It includes a basic filing fee and additional fees if an application exceeds the specified number of claims included in the basic filing fee. If the Patent and Trademark Office (PTO) disputes the application, the external patent attorney may have to persuade the PTO to accept the application or amend it to satisfy the PTO, which may add $1,000 to $5,000 to the bill. If the PTO allows the patent to issue, an issue fee is due. In addition, maintenance fees are due periodically throughout the patent's life; if any of these fees are delinquent, the patent will lapse and all rights will pass to the public. In summary, the basic investment in a patent, including patent attorneys fees and maintenance fees will be at or near $10,000 to $20,000.

As a Michigan State University inventor, you pay nothing for the patent. However, you will not receive royalties until the costs are recovered from royalties paid to the university.

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How long does patent protection last?

Assuming all maintenance fees are paid and the patent is not permitted to lapse, the protection given to utility or plant patents will last twenty years from the filing date. A design patent will last fourteen years from the date the patent was issued.

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What does a patent protect?

A patent grants to its owner the right to file and maintain a lawsuit against anyone who makes, uses, or sells the owner's patented invention without the owner's permission. When anyone other than the owner makes, uses, or sells the owner's invention without permission, it is called patent infringement. A patent owner may sue for compensation of past infringement and may obtain a court order preventing further infringement.

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How is patent protection enforced?

Many conflicts involving patents are settled by negotiation. If negotiation fails to produce a resolution, a lawsuit may be brought in a federal district court located where the infringer resides or where infringement occurs and the infringer has a regular and established place of business. The objectives of bringing suit are to recapture damages (i.e., legal fees, back royalties, cash, etc.) and obtain an injunction to prohibit further infringement.

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Does a U.S. patent protect an invention worldwide?

No. Patent rights are limited to the boundaries of the country that granted the patent. A U.S. patent is enforceable only in the United States, its territories, and its possessions. To be protected in another country, an invention must be granted a patent in that country.

Michigan State University may investigate seeking foreign patents are not pursued by the university. Rather, a licensee (a third party with permission to use university technology) is given this option in the university's standard license agreement.

Foreign patents may differ from U.S. patents. For example, in the United States, you may file for a patent on an invention up to one year after publishing or selling the invention. In most foreign countries, you cannot get a patent if the invention has been disclosed anywhere in the world before filing a patent application in that particular country. Therefore, if an invention is disclosed anywhere before the date of filing in the United States, patent protection is not available in foreign countries.

In addition, if an invention is important to U.S. security, has military value, or relates to sensitive technologies, the U.S. government will not allow foreign patent applications to be filed.

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What is the relationship between patents and publications?

United States patent law permits an inventor to obtain a patent if a patent application is filed within one year of the date of the first publication that disclosed the invention. In order to obtain a patent, the inventor must fully disclose the invention. Thus, in some ways, the act of patenting ensures publication. If a faculty member or researcher starts the patent filing process at the same time that he or she submits a manuscript for publication, it is likely that the patent application will be filed (in three months) before the manuscript is published (usually more than six months). It is not a matter of having to choose between patents and publications; both are feasible and desirable.

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Does an MSU inventor own the patent?

No. According to university policy, Michigan State University is termed the "assignee" or "owner" of the patent. See above, "Who can obtain a patent?"

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What if my invention is not patentable?

Inventions that are not patentable may still be valuable. There may be a great deal of "know-how" about your invention. Basically, know-how is "knowing how" to do something using this knowledge. The university could market this know-how or it could return the invention to you.

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Trademarks

What is a trademark?

Trademark law deals with the degree to which the owner of a name, word, or symbol used in marketing goods or services will be afforded a monopoly over the use of the name to identify and distinguish his or her goods or services from others. The laws and rules that govern trademark law can be found in Title 15 of the United States Code and Title 37 of the Code of Federal Regulations. These sources can be found in the government section, lower level, of the MSU main library. Trademark questions related to inventions should be directed to the MSU Office of Intellectual Property. Trademark questions related to university logos should be directed to University Licensing Programs, second floor, MSU Union Building, telephone number 517/355-3434.

A trademark is any word, name, symbol, logo, device, or combination of these adopted and used by a manufacturer or merchant to identify its goods and to distinguish them from those manufactured or sold by others. TIDE, KLEENEX, and PILLSBURY DOUGHBOY are examples of trademarks.

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What is a trade name?

A trade name is the name of a business, corporation, company, etc., that distinguishes one business entity from another. For example MICHIGAN STATE UNIVERSITY, CHRYSLER, FORD, and GENERAL MOTORS are examples of trade names.

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What is a service mark?

Service marks are the same thing as trademarks except that they identify and distinguish services rather than products. For example WENDY'S, BLUE CROSS & BLUE SHIELD, and UNITED AIRLINES are examples of service marks.

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What is the scope of protection for a trademark?

Trademark rights in the United States are fundamentally concerned with:

  • Deception: Protection of the public from confusion, mistake, or deception as to the origin and/or quality of goods, services, or commercial identity arising from the use of a confusingly similar mark or name on the same or similar goods/services.
  • Goodwill: Protection of an owner's investment in goodwill associated with the mark or name.
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What do trademark laws protect?

Trademark laws protect the owner's commercial identity in its established trademark against confusingly similar use by a newcomer's trademark. From an economic viewpoint, trademark law protects the value of the trademark owner's reputation and his or her investment in advertising.

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Why trademark an invention?

Trademarking an invention affords double protection, allowing the owner of a trademark and invention to obtain broader protection for the invention, realize greater royalties, and obtain more recognition for the invention.

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Licensing

What is technology transfer?

The transfer of technology from the academic environment into the commercial market is a main interest of the Office of Intellectual Property. This transfer consists of taking a technology invented at Michigan State University and seeking a licensee from industry who can bring the technology to market.

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What is the purpose of licensing?

When a patent is licensed, Michigan State University retains patent ownership, but allows another to make and/or use and/or sell the invention. A license agreement is a contract between parties and includes any provisions agreed to by the parties.

Typically, a license agreement details what use may be made by the licensee (the industrial company) of the invention (made, used, or sold), what length of time this use may be made, and what payment will be made to the licensor (the university).

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How does the licensing of trademark rights work?

Trademark licensing follows traditional contract principles, but the licensor must control the nature and quality of the licensee's goods or services to protect the licensor's rights in the mark.