Frequently Asked Questions
This page is intended to provide useful reference information for some of the more common issues pertaining to technology transfer, but does not provide definitive answers, as each situation is unique. Please contact our office for additional guidance.
1. How do I protect my intellectual property/invention?
The first thing that you should do is notify Technology Ventures. We will explain your rights and responsibilities as a University inventor, including the policy on sharing of royalty income.
2. What impact will filing an invention disclosure have on the ability to publish
Your prerogative to publish scholarly articles is paramount, and Technology Ventures will work with you to minimize the impact of disclosing your invention. Remember that your sponsored research agreement may have some restrictions on publication.
3. What is considered a public disclosure of an invention?
Anything that is readily available (a newspaper article, journal article, chalktalk, poster, web abstract) that describes the technology. For a more detailed explanation, see the section “Public Disclosure of Inventions” at the end of this FAQ.
4. Who owns patents at the University of Arkansas?
The Board of Trustees of the University of Arkansas.
5. What is the cost to the inventor or their respective department to obtain patents?
None. The University covers all patenting costs, if the Patent & Copyright Committee elects to take assignment.
6. What is the life of a patent?
Generally, if all maintenance fees are paid, twenty years from the earliest filing date of a non-provisional application for patents filed on or after June 8, 1995, although there are provisions for patent term adjustments (design patents and plant patents have different lifespans).
7. Does the University pursue foreign patents?
Yes, the University will occasionally pursue patents in foreign countries if warranted by commercial opportunities.
8. May I license my own invention from the University?
Yes, provided that you can show that a licensing arrangement with your company provides the University favorable prospects to commercialize the technology, subject to University conflict of interest policies.
9. If I am an undergraduate or graduate student at the University of Arkansas and
I invent something, create software, or develop some other scholarly work, am I required
to submit an invention disclosure or university works disclosure to the Technology
No. If the intellectual property you develop was solely developed by you or you and other student collaborators, then the invention or work belongs to you, unless you make an invention while working on a project that was federally sponsored. However, if you have a co-inventor or co-developer that is a University of Arkansas faculty or staff member, they must submit an invention disclosure or university works disclosure and must include you as a co-inventor or co-developer.
10. If I am not required to submit an invention disclosure or university works disclosure,
may I choose to submit one voluntarily?
Yes. If you’d like to submit your invention, software, or other scholarly work to Technology Ventures to be considered, you may do so. If you elect this scenario, Technology Ventures will present your intellectual property to the University of Arkansas Patent & Copyright Committee. If the Committee elects to take assignment, then Technology Ventures will make best efforts to commercialize the invention, software, or other scholarly work you submitted. Should the Technology Ventures be successful in commercialization, the inventor/developer/author royalty sharing rules outlined in Board of Trustee Policy 210.1 and 210.2 will apply. That means that should royalties be forthcoming from the assigned intellectual property, the inventors/developers will receive 50% of the first $200,000 of net royalties received by the University and 35% thereafter. Net royalties available for distribution to inventors/developers/authors equal gross received royalties less all patenting or copyright costs that have been incurred.
Public Disclosure of Inventions
An invention that is the publically disclosed before it is the subject of a patent filing will lose all patent rights in most foreign countries. In the United States, an invention that is publically disclosed starts a one year clock on the time to file a patent application – that is, to have patent rights in the United States, an invention must be the subject of a patent application that is filed within one year of a public disclosure.
For these reasons, it is important to know what constitutes a public disclosure, and to be aware of the consequences of public disclosure. Generally, a public disclosure means that the invention has been revealed to the general public to such an extent that it would be possible for a person skilled in the art to produce the invention, or to practice the invention based on the information disclosed. If published information does not “enable” a person skilled in the art to know the invention, or to practice the invention, then the information is not a disclosure. For example, simply describing what an invention can do, without revealing how it is done, is not a disclosure for patent law purposes.
It is often necessary to reveal an invention to particular people for various reasons, say for example to discuss a possible business opportunity, or to discuss funding for future research. In these cases, an agreement can be made between the inventors or the inventor’s institution and other outside parties, so that the outside parties promise to keep information on the invention confidential. This type of agreement is called a “Confidentiality Agreement”, a CDA, also called a “Non-Disclosure Agreement” or an NDA. Information revealed to an outside party that has signed an NDA will not be counted as a public disclosure.
Not every disclosure constitutes a “public disclosure”. Below are listed some examples of a public disclosure.
- A thesis or dissertation that describes the invention and is then placed on the shelves of a library, even a small departmental library, constitutes a public disclosure.
- A disclosure that is published in a journal, a magazine, or newspaper, or any publication that is generally available to the public.
- A disclosure that is made available on a web site that is available for anyone to access is a public disclosure. Some people like to put lots of their personal information on social media websites, or personal websites, so that their friends and others can see what interesting things they have done. If they publish enabling information about an invention in this way, it is a public disclosure.
- Presentation of the invention at a conference attended by people who have not previously signed a CDA, whether or not the conference was “by invitation only”.
- A “Poster Presentation” at a conference, or even a poster placed in a hallway at the University, is a public disclosure if it reveals the invention to such an extent that the invention could be reproduced by someone skilled in the art.
The following are not public disclosures.
- Revealing the invention to someone who has signed a confidentiality agreement (CDA), or to persons at an organization that has signed a CDA.
- Telling your parents about an invention you made at the University.
- Revealing an invention to people who are also employed at the same University or Organization that owns the invention, such as a University that employs the inventor.
- Revealing an invention in an application for funding, such as an SBIR application, where the application is understood to be held in confidence by the receiving party. If you are an inventor at the University of Arkansas, and you are not sure if a particular situation may be a confidential disclosure, you are urged to contact Technology Ventures beforehand so that we can assist in protecting your invention from an unwanted public disclosure.