Intellectual Property Protection

The primary missions of an institution of higher learning are to engage in scholarly and research activities that expand the frontiers of society's knowledge and to disseminate that knowledge to society. Implicit in this mission is the need to guarantee the protection of the knowledge that is produced. Accordingly, the University of Notre Dame is committed to protecting the works of its faculty and employees.

This article discusses the various types of intellectual property most likely to be encountered in the academic setting and how the University protects and capitalizes upon this intellectual property.

Patents
A patent for an invention is the grant by the federal government to "the right to exclude others from making, using, offering for sale, or selling" that invention in the United States or "importing" the invention into the United States. Patent rights of inventors are secured by the U.S. Constitution, and they are administered by the United States Patent and Trademark Office. A patent provides the inventor with a type of "monopoly" protection - the right to prevent others from infringing on the innovation of the inventor. In order to be patentable, an invention must meet three general criteria: it must be novel, useful, and non-obvious. An invention must also be more than just a mere idea - it must be "reduced to practice," a tangible or constructive representation that sufficiently demonstrates the feasibility of the concept involved and the best mode of enabling the invention.

In the academic setting, the inventor must be aware of the time limitations for applying for patent protection that can impact the ability to protect an invention. Generally, patent protection must be obtained within one year of an invention's public disclosure (such as publication in a professional journal). Failure to protect an invention before publication, however, can have severe effects on the inventor's ability to obtain foreign patent protection. The safest course is to disclose the invention and to obtain appropriate protection before any public disclosures are made. The protection process is discussed later in this pamphlet.

Copyrights
A copyright protects against the copying of original works of an individual. Copyright law protects such items as literary, dramatic, musical and artistic works, and in some instances, the law also confers performing and recording rights. Copyright protection is also applicable to computer software, which in some instances may be protectable by a patent as well. A copyright protects the form of expression rather than the subject matter of the work.

A work of authorship may be considered a "work-for-hire" if it is created by an employee of the University in the scope of his or her employment. This situation may come about through the performance of sponsored research or by virtue of a specific assignment. The copyright ownership of a work-for-hire vests in the University by operation of law. More specific guidance on the characterization of copyrightable works produced by University authors will be contained in the forthcoming revision of the University Intellectual Property Policy.
Other Types of Intellectual Property Trademarks or servicemarks relate to words, names, symbols or devices that are used in trade with goods or services to indicate their source or origin. These marks also serve to distinguish between services or products.

"Know-how" is best described as the information held by a person related to the performance of some task, process, or technique. Know-how is protected generally by holding the proprietary information in confidence and controlling its disclosure through contractual means.

The Protection Process
The process by which the University protects intellectual property is contained in the Intellectual Property Policy in the Faculty Handbook. This policy spells out the rights and responsibilities of both the University and the developers of potentially patentable intellectual property. It also lays out how any income resulting from technology transfer is shared.

Obviously, the process starts with the development of an innovative technology by University personnel. University policy requires that these works be disclosed to the Vice President for Graduate Studies and Research to evaluate them for possible protection under applicable laws. The disclosures are then forwarded to the members of the University Committee on Intellectual Property for evaluation. Along with the information contained within the disclosure, the Committee evaluates the work based on assessments of potential commercial value and value to society. If the Committee recommends protection for the intellectual property, appropriate legal processes are instituted by the University's Office of General Counsel in concert with Office of Research.

Technology Transfer
Technology transfer is the means by which the intellectual property developed and protected by the University is put to use in society. A number of means are available to make this happen, including licensing and starting up new commercial ventures around a technology. Clearly, the best means depends on the facts of any given situation.

The goal of technology transfer at Notre Dame is to provide a service to the University community while providing valuable new ideas to society at large. In this process, the Office of Research seeks to assist University developers of intellectual property in realizing the goals of their professional pursuits.

For more information about intellectual property protection or technology transfer, please contact:

Technology Transfer at Notre Dame
The Office of Research also retains the law firm of Jagtiani + Guttag of Fairfax, Virginia, to provide advice on invention disclosures, filing of patent applications, and copyright matters