Frequently Asked Questions
1.1 Why
should I disclose an invention to NovaUCD?
1.2 What is a patent?
1.3 Who is an inventor?
1.4
When should I submit an invention disclosure form?
1.5 When
should I disclose an invention to NovaUCD?
1.6 Should
I disclose work with an outside collaborator to NovaUCD?
1.7 What
happens after I disclose an invention to NovaUCD?
1.8 What is a licence?
1.9 What is a
non-disclosure agreement?
1.10 Will
every invention disclosed to NovaUCD result in a patent application?
1.11 What
if an external collaborator makes a contribution to my invention?
1.12 What is a
materials transfer agreement?
1.13 Why
do I need to use a materials transfer agreement when I give materials to
other researchers or receive materials from other researchers?
1.14 I
have a start-up company, will NovaUCD license my invention to it?
1.1
Why should I disclose an invention to NovaUCD?
The commercial development and distribution of the results of research to
benefit the inventor and the economy is part of the University's mission
of public service. The development and commercialisation of your invention
may benefit society and generate funds for research and education. To
enable the University to fulfil its mission, the University should be
given first option to exploit all patentable inventions, products, methods
or technologies arising out of funded or non-funded research where such
research has made substantial use of the equipment, facilities or other
resources of the University, unless such action is precluded by prior
agreement between the University and third parties.
Furthermore, under the terms and conditions of many of the funding agencies, e.g. SFI and Enterprise Ireland, the University has an obligation to report inventions arising from the funded research to the funding agency in a timely manner.
In addition to the above, the potential exists for both you as an inventor
and the University to benefit financially should your invention be
successfully exploited. The possibility also exists that a licensee might
agree to fund further research in your laboratory if it is of commercial
interest to the company.
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1.2 What is a patent?
A patent represents the right to exclude others from making, using, or
selling the subject matter described by the claims of the patent. A patent
contains a narrative description of the subject matter covered by the
patent called the specification. It also contains one or more claims that
describe the subject matter covered by the patent in highly technical and
specific terms.
There are three basic criteria required to patent an invention. The
invention must be novel, have an inventive step (i.e. it should not be
obvious to someone skilled in the state-of-the-art) and it should have an
industrial application. All three criteria must be met.
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1.3 Who is an inventor?
Unlike authorship of a scientific publication, inventorship is a matter of
law and a patent that fails to name the correct inventors may be ruled
invalid. Determining who is to be named as an inventor on a patent is a
legal decision rather than a choice made among participants, such as for a
credit in a publication. Only those individual(s) who furnish an idea can
be named as inventors. If two or more persons working together make an
invention, and each had a share in the ideas forming the invention, they
are joint inventors. If the share of contributions by two or more persons
to the ideas forming the invention is not equal, the percentage
contribution of each individual to the invention has to be agreed. If only
one of these persons has provided all of the ideas of the invention, and
the other has followed instructions in making it, the person who
contributed the ideas is the sole inventor.
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1.4 When
should I submit an invention disclosure form?
You should complete an Invention Disclosure Form (IDF) (internal UCD access only) if you have
evidence of a discovery that potentially may have a commercial
application(s) either through licensing or through the creation of a
start-up company. . Please
contact NovaUCD staff if you have any questions in relation to completing
the IDF.
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1.5 When
should I disclose an invention to NovaUCD?
An invention should be disclosed to NovaUCD before it has been published
or presented in public. Disclosure can destroy the novelty and the
inventive step of the invention thus greatly reducing or prohibiting the
ability to protect the invention by patent in most countries. A notable
exception is the United States, where patent rights may be obtained until
the first anniversary of the date of the first publication/disclosure
describing the invention. Please contact NovaUCD staff if you have any
questions regarding the submission of an IDF and/or the completion of an
IDF.
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1.6
Should I disclose work with an outside collaborator to NovaUCD?
Yes, please disclose the invention to NovaUCD even if your collaborator
offers to handle the invention, as each inventor has an obligation to
inform his or her employer. Further, the employer of each inventor may
have ownership rights in the invention. NovaUCD has a responsibility to
liaise and to coordinate the Intellectual Property Rights (IPRs) with
other joint owners of inventions.
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1.7
What happens after I disclose an invention to NovaUCD?
If NovaUCD determines that an invention could potentially be exploited, a
NovaUCD technology transfer professional will be assigned to the project.
The technology transfer professional will contact prospective licensees
with a non-confidential description of the invention. A prospective
licensee who wants further information about the invention may then sign a
confidentiality agreement (sometimes known as a Non-Disclosure Agreement (NDA) internal UCD access only) prepared by NovaUCD staff in order to review confidential
information about the invention, such as a scientific manuscript,
drawings, working prototype, etc. In addition, the strategy for
commercialisation may or may not involve seeking patent protection and
licensing patent rights.
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1.8 What is a licence?
Under a licence agreement, the University grants a company permission to use an invention that belongs to the University, for commercial purposes, subject to certain terms and conditions that typically include compensation to the University based on the estimated value of the invention. A licence may be exclusive or non-exclusive. In addition, a licence may be restricted to a particular field of use and/or geographical area. Please contact NovaUCD staff who will draft and negotiate the terms of the licence agreement.
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1.9 What is a non-disclosure agreement?
A Non-Disclosure Agreement (NDA) (internal UCD acess only), also referred to as a confidentiality agreement, is a negotiated contract between two or more parties who wish to share confidential information for a specific purpose, e.g. in the lead up to a collaborative research project. An NDA can be one-way or two-way (mutual). Under a one-way NDA, the party receiving confidential information from the disclosing party is bound by certain confidentiality terms. Under a two-way NDA, both parties are mutually bound by certain confidentiality terms. Failure to adhere to these terms can result in one party being sued by the other party. Please contact NovaUCD if you are disclosing any confidential information arising from your research. NovaUCD staff will draft and send the receiving party an appropriate NDA. If you receive an NDA from a third-party, please forward to NovaUCD staff for review prior to institutional signature by an authorised University representative.
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1.10 Will every invention disclosed to NovaUCD result in a patent application?
No. NovaUCD will determine whether or not patent rights should be secured in consultation with the inventor. Obtaining patent rights can be expensive and in some cases may not be necessary to successfully exploit the invention.
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1.11 What if an external collaborator makes a contribution to my invention?
In collaborative research projects, two or more institutional parties may jointly own an invention. In such cases, the parties typically establish an inter-institutional agreement (consortium agreement) that addresses how the invention is to be protected and exploited on behalf of all the joint owners. Ideally, the consortium agreement should be drafted and negotiated prior to the commencement of the project. Please contact NovaUCD staff who will draft an appropriate consortium agreement.
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1.12 What is a materials transfer agreement?
A Materials Transfer Agreement (MTA) is a negotiated contract between the owner of a material and a party seeking the material and the right to use the material for research and/or commercial purposes. The material may be either patented or unpatented. The purpose of an MTA is to document the transfer and outline the terms of use, including identification of the research project, terms of confidentiality, publication, and liability. MTAs tend to be shorter than licence agreements, and they are generally considered to be more informal than licence agreements, although both are enforceable contracts.
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1.13 Why do I need to use a materials transfer agreement when I give materials to other researchers or receive materials from other researchers?
Materials Transfer Agreements provide legal protection for the provider of the materials. In addition to addressing liability issues, MTAs help to maintain UCD's intellectual property rights (IPRs) associated with materials sent to other researchers. NovaUCD is responsible for negotiating Material Transfer Agreements on behalf of UCD. Please contact NovaUCD if you are proposing to send any material to a researcher in another institution (academic or otherwise) or if you have been requested to sign an MTA arising from your request for a material.
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1.14 I have a start-up company, will NovaUCD license my invention to it?
NovaUCD will review the potential to commercialise any invention for the benefit of the public and to generate income for the University. In this regard, your start-up company will be considered along with other third-parties. If in the opinion of NovaUCD, a commercial case can be made to license the invention to your start-up company, then NovaUCD and the promoters of the company will negotiate terms in a licence agreement. In certain case, e.g. for inventions arising from Enterprise Ireland funded research, UCD is obliged to seek the consent of the funding agency.
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