FAQs - Patents and Intellectual Property
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What is meant by intellectual property (IP)?
"Intellectual property" (IP) refers to the ownership rights to inventions, discoveries, innovations, and copyrightable works. Cases regarding potentially patentable IP are reviewed by the Patent Board in order to determine the respective interests of the University and inventor/creator as well as the dedication of financial support to the process required to protect the IP. Cases regarding all other intellectual property are reviewed by the Intellectual Property Committee.
Who is on the Patent Committee?
The Patent Board consists of the following members:
i. The Provost and Vice President for Academic Affairs
ii. The Vice President for Administration
iii. The Associate Vice President for Research and Sponsored Programs
iv. The Dean of Graduate Studies
v. A representative of the California State University, Fresno Foundation Auxiliary Corporations
vi. Three members of the faculty appointed by the President
What constitutes extraordinary resources?
“Extraordinary resources” means University and/or Foundation resources that are essential to the development of the intellectual properties, and/or that in the reasonable consideration of the Patent Board appear to be substantial in terms of the volume, value, or unusual nature of the resources provided to the inventor. These resources include time, facilities or materials regardless of whether they emanate from federal or state appropriations, student fees, donations, grants, contracts or other sources. Extraordinary resources do not include the ordinary use of resources typically available to the developer of the IP within his or her scope of employment.
Can I commercialize something without applying for a patent?
Yes, you can commercialize without seeking patent protection, but you take significantly more risks than going through the patent process, and it is highly unlikely that the University or Foundation would provide financial support. You would open yourself to having others also commercialize your invention, and they might even inhibit your own commercialization efforts.
What is equity interest?
Even when the University does not own IP, if it provides extraordinary resources, it is entitled to recover all extraordinary expenses it provided toward the creation of intellectual properties. The amount of the University’s equity interest in a particular intellectual property will be agreed upon before pursuing protection/commercialization, and in the absence of such agreement, will be presumed to be 50%.
What are net proceeds?
"Net proceeds" refers to the net amount received in each fiscal year from the transfer or licensing of IP after deduction of all accrued costs reasonably attributable to such intellectual property. All expenditures, special advances and repayment terms shall be identified and detailed in writing at the time they are made. The time of regular University and Foundation personnel will not be included in the determination of costs attributable to IP protection and commercialization.
By what means by whom are equity and extraordinary resources determined?
The Patent Board is the University’s deliberative body with respect to all policies and procedures related to patentable intellectual property. After the inventor submits an Invention Disclosure Form, the Patent Board reviews the disclosure for its merit as being potentially patentable. The Patent Board then recommends to the Provost whether or not the University should file patent application. This recommendation will include the Board's determination of equity and rights of all parties concerned and the means for prosecuting the patent application.
What’s the difference between the Intellectual Property Review Committee and the Patent Committee?
The Intellectual Property Review Committee shall be consulted on any significant proposed practices involving the application or interpretation of this policy as it relates to non patentable IP. The Patent Board shall be consulted on any significant proposed practices involving the application or interpretation of this policy as it relates to patentable intellectual property.
What if I never actually sign an agreement with the University related to equity interests?
The amount of the University’s equity interest in a particular intellectual property will be agreed upon before pursuing protection/commercialization, or in the absence of such agreement, is 50%.
What if the University decides not to provide financial support for my invention’s development and claims no equity interest?
If the University decides not to provide support and makes no claim of equity, then you can move forward on your own with no other obligations to the University.
How confidential is my application?
With respect to the IP subject to this policy, confidentiality shall be maintained to the extent required to protect its value and to the extent allowed by law.
What if I decide not to file an Invention Disclosure Form?
The Disclosure Form is required! If you do not disclose your invention, then the University cannot provide resources for any activity related to its development. Also, if you go forward, then it can claim an equity interest later and possibly full ownership of your invention, depending on the degree to which it provided extraordinary support.
What if I am on staff and not a faculty member?
Staff creations are treated essentially the same as faculty creations, except that in all cases, the University would enjoy and retain a permanent, non-exclusive, worldwide, royalty-free license to use all IP produced in the course of the staff member’s employment.
I am a student. What are my rights and responsibilities with regard to Intellectual Property, Copyrights, Patents, Technology Transfer, and Commercialization?
Students will normally own the copyright to the scholarly and creative publications they develop, including works fulfilling course requirements (term papers and projects), Senior Projects, Masters Theses/Projects, and Doctoral Dissertations/Projects and the like. Students retain copyright ownership as long as they are not paid for the work that results in the creation and do not receive extraordinary resources in support of the work. Nonetheless, by enrolling at the University, the student grants the University a nonexclusive, royalty-free license to modify, publicize, retain, and use that IP in the advancement of the University’s educational mission.
What if I receive funds from an outside entity through a grant or contract that supports my invention or innovation? Is that kind of funding considered extraordinary resources?
Yes. “Extraordinary resources” means University and/or Foundation resources that are essential to the development of the intellectual properties, and/or that in the reasonable consideration of the Patent Board, appear to be substantial in terms of the volume, value, or unusual nature of the resources provided to the inventor. These resources include time, facilities or materials regardless of whether they emanate from federal or state appropriations, student fees, donations, grants, contracts or other sources. Extraordinary resources do not include the ordinary use of resources typically available to the developer of the intellectual property within his or her scope of employment.
What if I am receiving income allocations from an invention but I decide to leave the University?
Any income allocations to which a faculty, staff member or student is entitled hereunder, shall continue to be made to such faculty, staff member or student even after he or she has left the University.