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Frequently Asked Questions
Should I Publish or Patent?
Try doing both! Seeking a patent for a discovery or development does not prevent scientific publication and, in most cases, does not delay publishing. However, to retain the potential for foreign protection, a U.S. patent application must be filed before any description of the invention is published in an article, abstract, thesis, presentation, or other public format. To find out if your discovery should be patented, contact Missouri S&T's Office of Technology Transfer and Economic Development (TTED). Staff there will work with outside patent attorneys to accommodate publishing dates. But to achieve optimum results, a description of the discovery should be submitted at least three months in advance of first publication to allow time for review and for drafting a patent application. Through TTED, the University may elect to pay to patent, copyright, and/or trademark inventions and to license them to companies in return for royalty payments on resulting products. Royalties are divided according to University policy among the inventors, their college, and the technology transfer program.
What's the First Step?
The technology transfer process begins when an inventor or inventors submit a confidential disclosure to TTED. This form is available on TTED's web site. The form asks for such information as a description of the invention, names and contact data for everyone involved in making the invention, funding sources for the research that led to the invention, prior publications or public descriptions of the invention, commercial contacts in the field of the invention, and any potential conflicts of interest the inventors may have with commercial contacts.
How are Inventions Evaluated?
TTED will evaluate the invention disclosure and discuss it with the inventor(s). The evaluation process involves two components: a patent and literature search to evaluate the uniqueness of the invention and a marketability survey of the literature and industry contacts. The goal of these efforts is to answer two basic questions:
- Is the invention patentable (new, useful, and not an obvious improvement on an existing invention)?
- Is the invention licensable (an invention that a company will pay the University for the right to commercially practice)?
If the answer to these questions appears to be yes, and if the expected return from licensing justifies the time and cost, the University will proceed with the patent application. The University has limited funds for the expensive process of patenting, so staff must make informed decisions about which inventions have the most potential to be legally protected and become valuable products. There doesn't necessarily have to be a massive market awaiting the product. However, there does have to be some industrial or entrepreneurial interest in obtaining rights to develop a product, in funding further R&D in hopes of realizing the invention's value, or in starting a company to produce it.
How are Inventors Involved?
Inventor involvement is very important to the entire patent and licensing process. The degree of involvement varies according to the nature of the invention and the availability and interest of the inventors. Their expertise is especially helpful in the evaluation for patentability, in the patent application process, in identifying licensing prospects, and in meeting with companies expressing interest. Inventors typically provide technical evaluation of previous patents and publications in their field, supply information to the patent attorney and review draft applications and responses to government actions, and discuss technical aspects with interested companies. Regardless of the amount of involvement, inventors are kept informed of the evaluation process and any actions taken, and their input is considered in making decisions about the University's protection and licensing of the invention. However, final responsibility for such decisions rests with TTED.
How Long Does it Take?
The disclosure evaluation process may take anywhere from a week to three months, and possibly longer, depending on the complexity of the invention and the target industry. After filing a patent application, it can take from one to three years for the patent to be issued or denied by the U.S. Patent and Trademark Office. It may take five years or longer for commercial sales to begin, depending on how much work needs to be done to develop and market a product based on the invention. University technology transfer offices find that it takes an average of eight years after an invention is disclosed to begin receiving significant royalties on sales.
Who Owns Missouri S&T's Inventions?
Like nearly all universities, the University of Missouri's policy states that the University has first rights to acquire title to any invention that results from use of University resources or University-administered funds. External sponsors of research often require disclosure and patenting of results when appropriate, and they also may have some ownership rights. If the University and sponsoring agency decide not to protect and transfer an invention, ownership rights are waived to the developer(s).
Why Should I Participate in Technology Transfer?
The University is substantially supported by the public, including the majority of its research programs. The public deserves maximum return for its investment in research through publication of results, sharing of expertise with students and others, and transfer of technologies to companies for commercialization. Many university inventors report great satisfaction in seeing their research efforts result in practical benefits to society. Many also find that the increased contact with industry improves the relevance of teaching programs and increases students' chances for internships and employment.
Is More Information Available?
Yes. A packet containing University policies related to technology transfer, invention disclosure forms, and detailed information on the patenting process is available from TTED.
For more information, please contact Keith Strassner at (573) 341-6725 or e-mail us.