IP & Commercialization Faculty Guide
Frequently Asked Questions
What is intellectual property?
A UK administrative regulation defines intellectual property (IP) as the "tangible or intangible results of research, development, teaching, or other intellectual activity." (AR II-1.1-3 Intellectual Properties Policy and Procedures--pdf) In other words, IP is any innovation or discovery conceived or developed by faculty, staff, or students using university resources.
The university has a right to own all intellectual properties as defined above. UK does not claim any ownership rights in the area known as "traditional products of scholarly activity." These are work-products such as journal articles, textbooks, reviews, works of art including musical compositions, and traditional course materials. The university considers these items the unrestricted property of the author or originator.
Instructional materials used for distance learning also fall under the UK administrative regulations governing intellectual property.
Who is the inventor?
An inventor is one who conceives either in whole or in part of the invention. An invention may have one or many inventors, and each inventor must be listed in the patent application. It is a question of law whether or not an individual is an inventor. Normally, one who merely helps to develop an invention by performing experiments or providing services that aid in the invention is not an inventor and should not be listed as an inventor.
What do I do if I have an idea?
If you discover or create intellectual property, it is your responsibility as UK faculty, staff, or student to report it to UK's Intellectual Property Committee (IPC).
You can bring your intellectual property to the attention of the committee by contacting the Intellectual Property Office for the IP disclosure form. The form can be opened in Microsoft Word or downloaded with Adobe Acrobat Reader to your computer's hard drive.
Please do not submit your disclosure form over the Internet or by e-mail due to confidentiality issues. Instead mail or bring your form to the first floor of the ASTeCC Building, A144 ASTeCC 0286, 859.218.6555.
Don Keach will schedule your presentation at the Intellectual Property Committee.
What happens at IP committee (IPC) meetings?
The IPC, at regular meetings, decides whether UK has a legal ownership interest in a property and whether there is potential for commercialization. This standing committee is composed of faculty and staff with a wide range of technical expertise.
Typically, you will meet with the IPC to describe the innovation and answer questions.
After your presentation, the IPC will answer three questions in determining whether or not to pursue the university's legal interests in the intellectual property:
- Who is the inventor or inventors?
- Was there "material use of university resources" so that the university has an ownership interest?
- Does the committee recommend that protection, usually in the form of a patent, be pursued?
You should hear from the IPC regarding its decision within six weeks after providing the disclosure form to the Intellectual Property Development Office.
If the committee determines that UK has a legal interest in the IP, the Intellectual Property Development Office begins working with outside patent counsel to determine the appropriate protection – trade secret, copyright, or patent.
What is the patent process & how long does it take?
The first step in the patent process is a patentability opinion. This is prepared by outside patent counsel that specializes in your research area and includes a patentability search. It usually takes three months and costs $1,000.
If the opinion is positive, then outside counsel drafts the patent application. The application contains a detailed description of the background information and "prior art," as well as a complete description of the new invention and how the invention overcomes any problems and disadvantages considered to exist in the prior art. The application contains a number of "claims" that define the scope of the invention.
As the inventor, you will work closely with the outside patent attorney through the IPDO to fully describe the invention. Failure to fully describe the invention may cause the application to be rejected or may result in issuance of a patent whose claims fail to provide necessary protection for the invention.
It typically takes four months to draft and file a patent.
It is important to understand that the patent prosecution process is adversarial in nature and the majority of patent applications are initially rejected. A patent examiner from the U.S. Patent & Trademark Office (PTO) will examine all claims in the patent application. Written responses are generally necessary to fully respond to positions taken by the examiner. As the inventor, your time and assistance is critical in the preparation of each response. The examination process may take from two to three years from the initial filing until a patent is issued.
The entire patent prosecution process typically takes three to four years and costs approximately $25,000. More and more frequently, the university is pursuing a provisional, or temporary patent in tandem with a regular patent. The provisional patent holds an invention's "place in line" for one year while a regular patent is pursued.
The university only pursues domestic patents (domestic patents have a lifespan of 20 years). An international license will be pursued if a licensee agrees to cover the patent expenses. For more on the Patent Cooperation Treaty (PCT) see the International Protection section of the U. S. Patent & Trademark Office Web site.
Disclosure & Patent Process
Your idea goes to the Intellectual Property Office, then to the Intellectual Property Committee (IPC). The IPC either releases your idea to you or sends it on to the University of Kentucky Research Foundation (UKRF) who determines appropriate protection (copyright, trade secret, or patent). You will receive the patent attorney's patentability opinion in an average of three months. If the opinion is negative, the idea is released to you; if the opinion is positive, UK pursues a patent. It takes an average of four months to draft and file a patent application, and patent prosecution takes an average of between one to three years.
What is a publication?
When asked if any "publication" has effectively described the invention, most researchers tend to think first of traditional forms of publications such as journal articles. To be on the safe side, however, you should consider most forms of communication with anyone outside the university to be a publication. Articles, abstracts (which may appear months before an article), electronic postings, student theses, poster presentations, grant proposals, and any other uncontrolled dissemination of the information should be considered a publication.
What is UKRF?
UKRF is the University of Kentucky Research Foundation Inc., the not-for-profit Kentucky corporation established to receive, invest, and expend funds to promote and implement scientific, educational, and developmental activities at UK. UKRF serves as the university's agent in the receipt of all external grants and contracts, intellectual property income, and other designated income. Under the umbrella of UKRF, the university oversees the protection, development, and commercialization of intellectual properties and manages special cooperative agreements. UKRF was established in 1945.
What about working with grad students?
It is important to understand the role of the graduate student in your lab. It is possible that you will name a student as a co-inventor of your intellectual property. Note that the university will not accept a sponsored research agreement that does not allow the freedom to publish results. This would interfere with a student completing his or her degree requirement that the thesis or dissertation be placed in the library, in effect "publishing" it.
See the UK Faculty Handbook Research section for more on working with graduate students, research assistants, and postdocs.