Frequently Asked Questions
This FAQ section complements the NIU Intellectual Property Policy, which may be found on http://www3.niu.edu/provost2/facpers/appm/I6.htm.
- What is intellectual property?
- What is an invention?
- Who is an inventor?
- When should I disclose my invention or idea?
- If I developed this invention in full or in part with sponsored research funds, what are my obligations?
- When I disclose my invention to the university, what are the university’s responsibilities?
- If my invention is licensed, how long will it be before I receive any income?
- What are my responsibilities once I have disclosed my invention to NIU?
- How does publication or other public disclosure affect the protection of my invention or idea?
- How does publication or other public disclosure affect the protection of my invention or idea?
- What do I do if I want to discuss confidential aspects of a disclosure with a third party, such as an i
ndividual or a commercial organization, or enter into a collaboration?
- What is intellectual property?
Patents, trademarks, copyrights, know-how, and trade secrets are all examples of intellectual property.
- What is an invention?
An invention, in a basic legal sense, is any new and useful process, machine, manufacture, or composition of matter. For an invention to be patentable, it must be novel, non-obvious, and supported by an adequate written description.
- Who is an inventor?
An inventor is one who conceives and either personally or through someone else reduces an invention to practice. Inventorship is distinct from authorship and ownership. Inventorship is a legal issue that is
determined by a patent attorney. The conception of an invention is complete if the inventor is able to mak
e a disclosure that would enable someone skilled in the art to make the invention without extensive research
or experimentation. Someone who constructs an invention based on the inventor’s conception is not an
inventor. Failure to name the correct inventors can result in invalidation of the patent.
- When should I disclose my invention or idea?
You should submit an Invention Disclosure once you have a clear concept and before you publicly
disclose it by submitting an abstract, manuscript, report, presentation, poster, thesis, publish it on the
Internet or any other public format, or have a discussion with a third party in which you reveal information.
- If I developed this invention in full or in part with sponsored research funds, what are my obligations?
Most grants or contracts for sponsored research require the university inventor to disclose the invention
to the university. The university must then disclose the invention to the Sponsor. As an inventor, you
must complete an Invention Disclosure Form found elsewhere on this web site. Then, you must inform
the Office of Sponsored Projects of this invention disclosure.
- When I disclose my invention to the university, what are the university’s responsibilities?
The TTO will arrange a prior art search. An invention must be novel, which means it must be different
from existing inventions, and it cannot be obvious to anyone knowledgeable in the area. The term
"prior art" is used to refer to the complete set of technical knowledge and experience in the particular field pertaining to the subject invention. If no prior art is found, the TTO will evaluate your invention to decide if NIU should patent your invention. The TTO will pay the costs of patenting your invention, and it will undertake to market your invention to potential licensees. The patent protection sought may be a provisional patent, which provides the inventor and/or the TTO with up to one year to further develop the invention, evaluate the commercial potential, and decide whether to file a patent application.
After an invention is licensed, the TTO typically will ask the licensee to reimburse these expenses. The university will also pay you a share of the income it receives from licensing your invention. The NIU
Intellectual Property Policy gives inventors a one-third share in such income, after university expenses
have been paid.
- If my invention is licensed, how long will it be before I receive any income?
Only a portion of the disclosures the TTO accepts are licensed. Once an invention is licensed, it will
probably take several years, and perhaps much longer, before you receive significant income.
- What are my responsibilities once I have disclosed my invention to NIU?
If the TTO decides to patent your invention, you must assign the invention to NIU, via an Assignment Agreement. You must cooperate with the TTO and its patent counsels in the patent prosecution and marketing of your invention. You may be called on to consult with the licensee to at least a limited
extent after the invention is licensed.
- How does publication or other public disclosure affect the protection of my invention or idea?
In order to retain the potential for foreign patent protection, wait until after a U.S. patent application is
filed to publish or publicly disclose your invention. Although the U.S. system allows you one year from
first public disclosure of your invention to file a U.S. patent application, public disclosure before filing a
U.S. patent application bars your invention from foreign patent protection. This is important because
many potential licensees find foreign patents necessary. Remember, patent applications can often be
filed in a timely fashion. As a result, the patent process does not prevent scientific publication, and in most cases, it does not delay publishing.
- What do I do if I want to discuss confidential aspects of a disclosure with a third party, such as
an individual or a commercial organization, or enter into a collaboration?
A Confidentiality Agreement, Non-Disclosure Agreement, or Confidential Disclosure Agreement should
be signed by all parties. If confidential information will be provided by both or all parties, the document
should reflect the obligation of all parties to keep the information confidential.
