Frequently Asked Questions About Intellectual Property Commercialization@AU
Once a faculty member has submitted a completed disclosure form, the Office of the Vice Provost for Graduate Studies and Research will review the submission and determine the commercial viability of the innovation. This will include consulting with commercial marketers that specialize in obtaining licenses and partnerships with industry. The Vice Provost will subsequently host a meeting with the faculty innovator(s). Afterward, the Vice Provost will report its findings to the AU Patent Committee, which will ultimately decide whether to pursue an application for patent protection. Once the innovation is determined to be commercially viable, the Vice Provost will apply for patent protection and/or pursue commercial partnerships or licenses for the innovation. Throughout the process, the information in the Innovation Disclosure Form remains confidential.
An innovation (or invention) can be a new process or system, software program, algorithm, machine, composition of matter, article of manufacture, or any improvement thereof. According to the U.S. Patent and Trademark Office, an innovation is patentable only if it is novel, nonobvious and has utility.
According to the U.S. Patent and Trademark Office (PTO), patentable inventions or discoveries include "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." What is not patentable includes "the laws of nature, physical phenomena, and abstract ideas," according to the PTO. Furthermore, an invention cannot be patented if: "(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent," or "(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States ..."
All legal expenses for the preparation, prosecution and maintenance of patent filings are paid for by American University, should the university be interested in the innovation.
U.S. patent law allows a one year grace period from first disclosure of an innovation to file for patent protection; however most other countries consider the right of patent protection lost as soon as an innovation is publicly disclosed. In order to protect your intellectual property rights, the Vice Provost for Graduate Studies can submit an application for patent protection before disclosure of an innovation. A pending patent application can protect your intellectual property rights. To learn more about patent protection, visit the U.S. Patent and Trademark Office.
Public disclosure can be interpreted as any disclosure of an innovation or merely the idea of an innovation, in person, online, through journal articles, conference presentations, posters, dissertations, lectures, and in many other ways – including efforts to sell the innovation. To protect the patentability rights of your innovation, please contact the Vice Provost for Graduate Studies and Research as early as possible prior to public disclosure. If unsure about a potential disclosure, members of the faculty are encouraged to consult with the Vice Provost for Graduate Studies and Research at (202) 885-3753 or firstname.lastname@example.org.
Disclosing an innovation enables American University to protect the rights of the faculty innovators and seek opportunities for licensing or partnership with commercial interests. Other benefits include new contacts with industry, which may lead to further funding of faculty innovators' research.
American University is obligated to disclose discoveries and innovations to research sponsors, including the federal government and most private funders. In addition, the Bayh-Dole Act, enacted in 1980, permits universities to own innovations supported by federal funding, allowing them to create partnerships with industry in order to make the greatest impact. Furthermore, the Bayh-Dole Act requires that universities follow specific guidelines with regard to innovations; among them, a university must disclose an innovation to a federal funding agency within two months of the faculty's disclosure to the university.
American University's Patent Policy provides additional information on the categories of ownership – for specific information about the rights of innovators and the university, please visit the university's patent policy.