Intellectual Property Overview: FAQ’s and Resources

U-M Student Intellectual Property

Meet Bryce Pilz, Director of Licensing at the Office of Tech Transfer at the University of Michigan. Bryce has many years of experience in student IP and also created the Law Clinic for U-M students.

Intellectual Property FAQ’s for UM Medical Students:

 

1. What is Intellectual Property (IP)?
Intellectual property (IP) refers to legal rights in creations of the mind.  Common forms of intellectual property include: patent rights (commonly for novel technological innovations); copyrights (for new forms of expression, including software source code); trademarks (for goodwill associated with brand names); and trade secrets (for information that has economic value by virtue of not being commonly known).

A single invention may be protected by multiple forms of IP.  For example, a medical device may incorporate new structure and functionality that is patentable, may incorporate software that is protected by copyright, may have a brand name and logo that is protected by trademarks, and may be manufactured using trade secrets.

This video further explains the general categories of intellectual property.

 

2. Who owns IP generated at UM?

UM Employees:  For UM employees, under UM Policy, UM will own the rights in inventions created by a UM employee with the support of UM funds.  UM-owned IP is governed by UM’s Tech Transfer Policy including the sharing of revenues by UM employee inventors.   UM’s Tech Transfer office manages the protection and commercialization of UM-owned IP.  Inventions made by UM employees may be reported to UM Tech Transfer here.

UM Students: As a general principle, UM does not claim any ownership in the rights in inventions created by students.

Some students might be paid for their laboratory research work such that they function as both a student and an employee at various times.  For these individuals, ownership will depend on the capacity in which the individual made the invention.  For example, if the invention derived from the individual’s paid research work, then UM will typically consider the individual to be an employee inventor and UM will own the IP rights in the invention.

 

There might also be situations in which a student, in order to participate in a particular project, will be required to sign an IP Assignment document, assigning to UM rights in any potential future invention arising from that particular project.  In these situations, the student will be made aware of this obligation in advance and have an opportunity to select a different project.  Such agreements will typically specify that the student will be treated as a UM inventor under UM’s Tech Transfer Policy including the sharing of revenues by UM employee inventors.

 

3. What if I’m a medical student working on my faculty advisor’s project?

The default rule at UM is that students own the rights in the IP they invent.  However, in some cases, prior to working on a project, students may be asked to assign their rights to UM, or another project sponsor, in order to participate on the project.  This might be the case when a medical student works on a faculty advisor’s project.  If there is existing IP in the project, in order to maintain a single owner of the IP in the project, all participants on a faculty member’s existing project are often asked to assign their rights to UM.  In these situations, the assignment agreement will often specify that the medical students assigning their rights to UM will be treated as employees under UM’s Tech Transfer Policy including the sharing of revenues by UM employee inventors.

 

4. What if I’m working on my own project, but want my faculty advisor’s advice and guidance?

UM encourages faculty and students to collaborate on projects.  The mere fact that a faculty member assists a student with his or her project does not trigger any UM ownership of that project.  Most advice and guidance take the form of general mentoring, better understanding a problem, or coaching about the entrepreneurial process.  This type of assistance, by itself, does not trigger any ownership by UM or the faculty member in any IP in the student’s project.

If on the other hand, an individual’s contribution amounts to “inventorship,” then that individual (or the individual’s employer, if the individual is contributing through the course of their employment) would have an ownership interest in the patent rights in that project.  In contrast to naming authors to a scientific paper, which is typically dictated by the discretion of the paper’s contributors, patent inventorship is a complicated legal decision made by attorneys.  The inventorship determination is important because incorrectly naming the inventors to a patent may have negative legal consequences. This video explains more about “inventorship” and  this video explains “joint inventorship” in the situation of multiple inventors collaborating.

If a situation arises where UM and a student jointly own IP rights in an invention, then the parties can discuss an agreement on how to proceed.  In some cases, students will elect to transfer their rights to UM in order to be treated as faculty inventors under UM’s Tech Transfer Policy including the sharing of revenues by UM employee inventors.  A student startup could also potentially license UM’s joint ownership interest of those rights so that the student startup would be the exclusive holder of the IP rights.

 

5. What if I’m a medical student working with other undergraduate/graduate students (engineering, business, law, biomedical engineering, etc.)? What if I am working with PhD students?

It is common for students to collaborate in seeking to solve unmet medical needs.  For patentable inventions, the student inventors of the invention will initially hold an ownership interest in the invention.  In contrast to naming authors to a scientific paper, which is typically dictated by the discretion of the paper’s contributors, patent inventorship is a complicated legal decision made by attorneys.  The inventorship determination is important because incorrectly naming the inventors to a patent may have negative legal consequences. This video explains more about “inventorship.”  This video explains “joint inventorship” in the situation of multiple inventors collaborating, and this video explains patent ownership determinations.

Graduate students and PhD students might be “employed” by UM for a portion of their work.  If such a student makes an invention during the course of their employed work (e.g., research for which they are paid by UM to perform), then UM will likely own that individual’s interest in their invention pursuant to the terms of that individual’s employment agreement.  In these circumstances, the invention may be jointly owned by the unpaid student inventors and UM.  If a situation arises where UM and (a) student(s) jointly own IP rights in an invention, then the parties can discuss an agreement on how to proceed.  In some cases, students will elect to transfer their rights to UM in order to be treated as faculty inventors under UM’s Tech Transfer Policy including the sharing of revenues by UM employee inventors.  A student startup could also potentially license UM’s joint ownership interest of those rights so that the student startup would be the exclusive holder of the IP rights.

For inventions that are jointly owned by multiple students, then each student will have the right to exploit the invention.  Because of this, no individual will have the exclusive ability to commercialize the invention nor the ability to transfer exclusive rights to another.  Accordingly, in these circumstances, the joint owners typically seek to enter into an agreement concerning commercialization plans, or more commonly, to form a startup entity to which all of the IP rights are assigned by each inventor.  The UM Law School ZEAL Entrepreneurship Clinic is available to answer questions about entity formation for startups.

 

6. Can I assign my IP to UM?  What are the advantages? What are the disadvantages?

While the default rule is that students own the IP rights in their inventions, students may propose to assign their rights to UM in order to be treated like faculty inventors under  UM’s Tech Transfer Policy including the sharing of revenues by UM employee inventors.  UM’s Tech Transfer office manages UM’s IP rights related to inventions from its employees.  When it deems the investment is appropriate, UM Tech Transfer will invest significant university resources in funding the IP and commercialization efforts for a technology.  More specifically, UM Tech Transfer provides the following services for inventions submitted to it:

  • Assessment of commercialization potential, including patentability assessments
  • If appropriate, funding of patent applications expenses, including attorneys’ fees and government filing fees
  • Advice and consulting on software enabled inventions, including open source projects
  • Marketing of technologies to potential industry licensees
  • Assistance with applications for gap or translational funds in order to advance a technology to a licensable or investable state
  • For inventions with startup potential, Tech Transfer mentors-in-residence assist in finding a business model, recruiting talent, and seeking capital

Due to the volume of inventions arising from research at UM, UM Tech Transfer cannot invest time and resources in all inventions submitted to it.  If Tech Transfer decides not to invest resources in a student invention, Tech Transfer will return the rights in the invention to the student inventors and direct the students to other campus and area resources to assist in commercializing the invention.

 

7. Who can answer IP questions and help support medical student projects that are faculty paired and/or student lead?

UM Tech Transfer is available to answer IP questions for inventions involving UM employee inventors.  Questions may be submitted to techtransfer@umich.edu.  Tech Transfer also attends the Biomedical Innovation Office Hours held at the med school, where its representatives are available to answer IP questions from students or faculty.

Additionally, UM Law School’s ZEAL Entrepreneurship Clinic is available to help student entrepreneurs with IP and other legal questions related to startups, including through their campus office hours.

 

8.  When should I seek out IP advice when working on a faculty or project?
It is likely wise to seek IP advice about your invention when you: (a) believe you have a technological solution to a problem that may have commercial value: and (b) have either built a working prototype or are capable of describing the solution such that a person could use it.

 

It is important to seek advice prior to publicly presenting your invention because “public disclosures” of your invention may impair your ability to obtain patent protection.  This video provides further information on public disclosure issues with patent rights.

 

Prior to talking to an IP professional about your invention, it is often helpful to understand how your invention is novel in light of existing technology.  This video explains the concept of patent novelty and how to understand whether your invention is novel.

 

9. What should be in place before I present my project at a demo day, showcase, or other events featuring medical student projects?

On one hand, it is always important to consider patent issues when discussing an invention with a third party prior to filing a patent application on that invention.  Publicly disclosing one’s invention prior to filing a patent application can negatively impact one’s patent rights.  Such a disclosure will start a one-year clock running to file a U.S. application and will bar patent protection in many important foreign territories, such as Europe, where the one-year grace period does not exist.

On the other hand, however, it is important to note that in order for a “public disclosure” to negatively impact one’s patent rights it must be sufficiently detailed to enable those in the relevant field to understand and use the invention.  Accordingly, in most cases, generally mentioning the nature of the invention will not constitute a patent-harming public disclosure.  Therefore, in many formats, such as demo days and other early-stage pitch competitions, it is possible (and often preferable) to treat one’s invention as a “black box.”  Talk about the problem you are solving, the benefits of the solution, the size of the market, and perhaps a general description of the invention.  But, do not specifically describe the invention in a way that others could reproduce it.  Such a presentation should not constitute a public disclosure that would harm your patent rights.

If you necessarily must describe your invention in detail in a public setting, then you should seek out IP assistance to understand the possibility of filing a well-drafted provisional patent application prior to making the public disclosure.

This video provides further information on public disclosure issues with patent rights.

 

10. Can I talk about my project and do customer discovery interviews without secured IP?

In the perfect world, an inventor would file a well-drafted patent application, with the help of an experienced patent attorney, prior to conducting any customer discovery interviews.  The reason to do this is that publicly disclosing an invention (with sufficient detail such that those in the field would understand the invention and be able to use it) can negatively impact one’s ability to later obtain patent rights.  This video provides further information on public disclosure issues with patent rights.

However, filing a patent application prior to any customer discovery is rarely possible, especially in the case of students, who typically have limited resources to file patent applications, and who often need to conduct customer discovery interviews for the very purpose of deciding whether it is worth investing the time and money in pursuing patent protection.  The good news is that, generally speaking, you can talk at a high level about your invention during customer discovery interviews and have very little risk of negatively impacting your ability to later pursue patent protection. When done correctly, customer discovery interviews are focusing on the customer’s pains and desire for a particular solution to a problem.  Such discussions do not involve a detailed discussion of your invention and therefore should not constitute patent harming “public disclosures.”

If, though, you get to the point where you need to provide the details of your invention to third parties, you should either: (i) first file a well-drafted patent application; or (ii) enter into a confidentiality agreement with the third party such that your discussions are not “public.”

 

11. What does the UM Office of Tech Transfer do?  Can they help with student projects?

UM’s Tech Transfer office manages UM’s IP rights related to inventions from its employees and handles all licenses of IP in UM inventions to external entities, whether existing companies or newly formed startups.  Specifically, UM Tech Transfer provides the following services for inventions submitted to it:

  • Assessment of commercialization potential, including patentability assessments
  • If appropriate, funding of patent applications expenses, including attorneys’ fees and government filing fees
  • Advice and consulting on software enabled inventions, including open source projects
  • Marketing of technologies to potential industry licensees
  • Assistance with applications for gap or translational funds in order to advance a technology to a licensable or investable state
  • For inventions with startup potential, Tech Transfer mentors-in-residence assist in finding a business model, recruiting talent, and seeking capital

While the default rule is that students own the IP rights in their inventions, students may propose to assign their rights to UM in order to be treated like faculty inventors under UM’s Tech Transfer Policy including the sharing of revenues by UM employee inventors.  If Tech Transfer decides not to invest resources in a student invention, Tech Transfer will return the rights in the invention to the student inventors.  Due to the volume of inventions arising from research at UM, UM Tech Transfer cannot invest time and resources in all inventions submitted to it.  When UM Tech Transfer cannot accept a student invention, it will direct the students to other campus and area resources to assist in commercializing the invention.

Further information about UM’s Tech Transfer office can be found at the Tech Transfer website here.

 

12. What does the Michigan Law ZEAL Entrepreneurship Clinic do? Can they help with student projects?

UM’s ZEAL Entrepreneurship Clinic is an innovative clinical law program that represents and advises UM student-led entrepreneurial ventures.  The clinic provides no-cost legal services to a significant number of student-led and other startups.  The clinic offers both direct legal services as well as office hours where it can answer basic questions.  The direct legal services provided by the Clinic include entity formation, provisional patent drafting, trade mark clearance and registration, advice on worker classification issues, financing, and deal-making.

Further information about the Clinic, including how to apply for direct legal services or to schedule an office hours appointment, can be found at the Clinic website here.

 

13. What is the recommended process for medical students to secure their own IP?  How does that differ from UM owned IP?

For Student-Owned IP:

If you are a medical student, working with student-owned IP, and believe that you have a technological innovation that has commercial potential, you should consider the following steps:

  1. Schedule an appointment with the Biomedical Innovation Office Hours to talk about the potential for IP protection for your invention.
  2. Familiarize yourself with the basic IP concepts through watching the IP Basics videos.
  3. Attend your appointment with the Biomedical Innovation Office Hours to understand: (i) steps you can take to validate the commercial potential of your invention; and (ii) a basic process to assess the potential for obtaining commercially valuable patent protection.
  4. If after following the above steps you desire to pursue a patent application, you should contact the UM Law School’s ZEAL Entrepreneurship Clinic to discuss the potential of obtaining no-cost legal services through that Clinic. You can schedule an Office Hours appointment and/or apply for legal services through the Clinic’s website. You might also consider the following other potential sources of patent application assistance:

Michigan Pro Bono Patent Program – Individuals may apply for no-cost legal services including non-provisional patent drafting and office action responses.

Wayne State Law School Patent Procurement Clinic – UM students may apply for no-cost legal services related to patent application drafting and filing.

 

For UM-owned IP 

If the IP rights are held by UM, then you should consult UM’s Tech Transfer office for assistance in procuring patent protection. Inventions can be reported to UM Tech Transfer here.

 

14. How much does it cost to secure IP?

Patent protection can be time consuming and expensive.  The average cost of obtaining a United States patent, from filing through issuance, is typically around $25,000 and takes around 3 years.  This video further explains the patent application process.  While patent prosecution is typically expensive, there are resources available to assist you for reduced or no costs.  These resources include:

UM Law School’s ZEAL Entrepreneurship Clinic – Provides IP information through campus office hours and students may apply for direct, no-cost legal services including provisional patent drafting.

Michigan Pro Bono Patent Program – Individuals may apply for no-cost legal services including non-provisional patent drafting and office action responses.

Wayne State Law School Patent Procurement Clinic – UM students may apply for no-cost legal services related to patent application drafting and filing.

If students elect to obtain their own patent attorney, this video offers guidance on selecting a patent attorney.

 

15. Can I use university computers / software / resources and still keep my IP?
For students, the use of UM computers, software, or other resources does not impact your ownership of your IP.  UM’s policy is that students own the IP rights in their inventions, and any use of UM resources, by itself, does not change that ownership.

Where circumstances warrant UM maintaining ownership of IP created by students, then students will be asked to sign an IP assignment in advance of their work.

 

16. Can I secure my IP while working in a student organization project or team?

Working on a student organization project or team does not impact your ownership of your IP in your inventions.  When working on teams, joint inventorship is common, so it is important to understand the basics of what qualifies one as an inventor and the rules of joint ownership.  This video explains more about “inventorship.”  This video explains “joint inventorship” in the situation of multiple inventors collaborating, and this video explains patent ownership determinations. For inventions that are jointly owned by multiple students, then each student will have the right to exploit the invention.  Because of this, no individual will have the exclusive ability to commercialize the invention nor the ability to transfer exclusive rights to another.  Accordingly, in these circumstances, the joint owners typically seek to enter into an agreement concerning commercialization plans, or more commonly, to form a startup entity to which all of the IP rights are assigned by each inventor.  The UM Law School ZEAL Entrepreneurship Clinic is available to answer questions about entity formation for startups.

 

17. Does using money / resources from a student organization project or team count as using university resources?

For students, the use of UM resources (including student organization resources) does not impact your ownership in IP you create.  UM’s policy is that students own the IP rights in their inventions, and any use of UM resources, by itself, does not change that ownership.

Where circumstances warrant UM maintaining ownership of IP created by students, then students will be asked to sign an IP assignment in advance of their work.

 

18. Who can I contact for questions and more information about IP?

The following resources are available to assist you with your questions about IP:

Biomedical Innovation Office Hours – Several organizations partner to host office hours specifically aimed at IP and technology commercialization questions from medical students.  Additionally, questions about inventions from UM employees (such as faculty or graduate students inventing something in their paid research capacity) can be submitted to techtransfer@umich.edu.

UM Law School’s ZEAL Entrepreneurship Clinic – Provides IP information through campus office hours and students may apply for direct, no-cost legal services including provisional patent drafting.

December 1, 2017
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