VIP Intellectual Property
Students working on Vertically Integrated Projects generally own all intellectual property.
There are several categories of intellectual property including patents, copyrights, trademarks, trade secrets, and knowhow, however we are usually talking about patents and copyrights in the context of university inventions.
A. Intellectual Property Information and Guidelines for Students
What to know about Patents
Patents are effectively instruments for encouraging public disclosure of technical innovations in exchange for certain enforceable rights. The applicant discloses the ideal method for realizing an invention, and receives the right to essentially enforce a 20-year monopoly for practicing that invention commercially as it is described in the claims.
A Provisional Patent Application is an initial patent filing that provides applicants with one year runway to file a full, non-provisional application.
Patent Cooperation Treaty (PCT)
There is no such thing as an “international patent” But a PCT (patent cooperation treaty) application can preserve rights in any of the signatory countries for 18 months from filing. Before the 18 months are up, the applicant must file in the individual jurisdictions. Translational costs can be in the thousands.
Cost & Time
A US utility (non-provisional) application typically costs between $5,000 and $15,000 for counsel and filing fees. Costs in other jurisdictions vary, particularly when translation is required. NYU has several entrepreneurial resources to help understand and mitigate these costs.
The time from filing a patent to the US patent being issued is typically 2-3 years.
What is Patentable
A key requirement for an invention to be considered patentable is “enablement”. An invention is enabled…
“if the specification describes the invention in such terms that one skilled in the art can make and use the claimed invention.”
Additionally, the USPTO will only grant patents to applicants if the invention described by the claims is determined to be:
When to Patent
A provisional patent should be filed prior to public disclosure of the invention so it is important to get in touch with the Office of Industrial Liaison when an invention is made; well before public disclosure. Public disclosure includes publication of any kind that discloses enabling details, talks at conferences or for outside parties, web page descriptions of the research.
If a provisional patent is filed after public disclosure, but before the one year anniversary of that disclosure, US patent rights may still be pursued though foreign rights are lost.
B. University Owned and Non-University Owned IP
When a Technology is Obligated to the University
For a full understanding of this topic, please see the NYU IP Policy. It is important to start this discussion by underscoring an important part of NYU’s IP policy: students who are not employees of the university and whose research is not supported by a grant or other funding administered by the university usually own their own IP. In those circumstances, they have no obligation to assign their sole inventions.
If any of the following are true, the university does have an ownership stake:
– The technology was developed using federal research money.
– An inventive contribution was made by an NYU employee during and in the course of their employment– E.g. If an NYU professor was an inventor while working in their area of expertise.
– The invention was conceived or reduced to practice using substantial NYU resources- Substantial resources would not include resources such as a computer lab, a breadboard, a commonly available 3D printer, or any resources in the NYU Tandon Makerspace, for example. Rather it covers unique NYU resources without which the invention could not have been made or tested.
Obtaining Support for Student Projects from the Office of Industrial Liaison
As stated above, most undergraduate student projects, whether they are pursued inside or outside of the classroom, are not obligated to the university. On occasion, students who wish to pursue start-up companies based on their work request to assign their inventions to the university and then license the rights into the company in order to defer the costs of the patenting, increase the investability of the company and reduce the early risk. In such cases, OIL would evaluate the merits of the invention, the level of development, and decide whether to accept assignment and pursue patent protection.
Even in instances where the university is unlikely to have an ownership stake in IP, students founding companies will want to talk to OIL. The reason being is that the issue of clear ownership will inevitably need to be resolved when a company is seeking funding for a venture.
Commercialization of University Technologies
The focus of the OIL is to protect and commercialize university technologies, most of which are developed under grants from federal agencies. That includes managing the patent process, negotiating license agreements with outside companies, helping start-up companies commercializing university technologies get off the ground, and generally acting as a resource for faculty and students who want to learn more about commercialization. When a technology is licensed for commercialization, the university splits any revenue received with the inventors. 42.5% of consideration received by the university is distributed directly to the inventors.
What to Know When Working With an Outside Company
Frequently, companies wish to work with NYU students to help solve their technical challenges. This opportunity can be presented in the context of coursework or in the form of an internship. In either context, companies sometimes request that students assign IP developed in the course of the project and/or sign confidentiality agreements. As long as the IP is not obligated to the university as described above, students are free to sign such agreements as they wish. Frequently, however, assignment agreements drafted by a company’s counsel are far reaching. Terms one may wish to watch for, and discuss with your own counsel, include:
Assignment of any IP should usually be limited to what is developed during and in the course of the project. The agreement should not obligate the student to assign IP in the future, after the project has been completed, or to assign IP rights broader than the company needs and will exploit.
Employment contracts frequently have non-compete clauses (clauses which limit the employees ability to work on a similar project after leaving). Such clauses are not appropriate for a brief project that is part of classwork.
Long terms of confidentiality
Normally confidentiality lasts for a few years. Obligations beyond that may be inappropriate.
Guarantees or Warantees
Some agreements ask the party assigning or licensing the IP to offer warrantees regarding the IP’s fitness for a specific purpose or that it does not infringe on the IP rights of others. This would never be appropriate in the context of a student agreement since the student could then be held liable if those things turn out not to be true.
If contracts are suggested in the context of a capstone, or class project they can be forwarded to the Office of Industrial Liaison for additional review if students and/or faculty involved have concerns.