General Information for Faculty
Frequently asked questions about...
top GRANT APPLICATIONS
My grant requires I provide information about commercialization - is there language available for me to use?
General information about the services ORC provides can be found below. In addition, feel free to contact the office if you need more detailed assistance. ORC Staff Listing
Commercialization at Rutgers, The State University of New Jersey Rutgers Office of Research Commercialization (ORC) has been successfully commercializing technologies since its inception in 1988. From early stage technologies to those close to market, ORC provides a range of services suited to the innovation's stage of development and discipline. We view our researchers as clients and partner with them throughout the entire commercialization process, ensuring that they receive the services they need when they need them.
Commercialization activities provided to our researchers are divided into four main categories:
Research/Intellectual Property Support
• Consulting on research grants and contracts in regards to technology, intellectual property and commercialization
• Obtaining and maintaining patent and other forms of intellectual property protection
• Conducting prior art and market research to evaluate the competitive landscape
• Using personal and proprietary database contacts to market technologies
• Establishing contacts with consultants, industry experts
• Marketing via written campaigns, phone contacts, promotional materials, large trade or industry shows, national meetings (BIO, BIO NJ, AUTM,) etc.
• Facilitating confidentiality, material transfer, sponsored research and other agreements
• Handling term sheets and options
• Technology licensing from draft stage to execution
- sublicense or other agreement drafts and reviews, (including contract negotiation)
• Facilitating research support by considering research monies and programs supported by licensees when consolidating the aggregate monetary terms of licenses (royalties, milestone payments,timing, etc.)
• Once a technology is licensed, ORC may assist licensees/startups in the following areas:
- sublicense or other agreement drafts and reviews
- marketing campaigns (for sublicensing purposes)
New Ventures/Start-Up Companies
• Assisting faculty in the creation of start-ups by providing
- business plan guidance
- investor introductions and potential funding sources
- venture pitch coaching
- assisting in locating incubator space, legal and other business services
• Hosting large events such as Entrepreneurship Day, Medical Device Innovation Conference drawing hundreds of people from industry, venture community etc.
Important to note is that we communicate with the researcher throughout the entire commercialization process. Our office has a successful track record of technology licensing and start-up company creation, accomplished with a growing office staff of highly trained Ph.D.s, M.B.A.s, patent agents, and others with years of experience in science, business, technology commercialization and entrepreneurship.
top INVENTION DISCLOSURES
What are the benefits of participating in the technology commercialization process as a Rutgers Faculty or Staff member?
The main benefit of participating in the technology commercialization process and protecting your intellectual property is seeing your invention have an impact on society. Today it is common place for research from academia to be put to practical use, improving the quality of life. For example, helpful and often lifesaving technologies become products such as drugs, medical devices, crops, etc. and are made available to the public.
Another benefit of technology commercialization is the ability to supplement your faculty income and also the money coming into your department via royalty payments under the Rutgers Patent Policy. For those faculty members who want to start companies, intellectual property protection is important in this process. Finally, federal and other grant agencies increasingly require that research have practical application to order to obtain grant renewals.
I think I have a new discovery, what should I do?
Currently the Rutgers Invention Disclosure Portal is under construction. For the time being, if you have a new discovery, please disclose it to Rutgers ORC by filling out a disclosure form. Please note that there are currently different forms for Rutgers inventors and inventors from legacy UMDNJ positions. Once you send in your form, a representative from ORC will be in touch shortly thereafter. Thank for your patience.
If you were a Rutgers employee prior to 7-1-2013 please use the:
- Rutgers Notice of Invention Form (MS-Word)
If you are an employee of a legacy UMDNJ positon, please use the:
- Invention Disclosure Form (MS-Word)
For disclosures involving only materials and have no IP implications, please use the:
- Materials-Only Disclosure Form (MS-Word)
If you are unsure whether the materials have IP implicaitons, please contact the appropriate licensing managers/directors from our Staff Listing page, or email email@example.com with your question.
Once completed, please email the disclosure form to: firstname.lastname@example.org and send an executed hard copy to:
Invention Disclosures, ORC - 3rd Floor ASB III, 3 Rutgers Plaza, Cook Campus.
top PUBLIC DISCLOSURE
Do you know... A Public Disclosure can lead to the Loss of Patent Rights
For most countries outside of the U.S., inventions cannot be publicly disclosed prior to submission of the patent application.
A public disclosure is any presentation (open to a member(s) of the public) or publication of the invention that has sufficient detail to allow your scientific peers, or someone that is "skilled in the art" (not necessarily an expert), to understand and recreate the invention.
It includes any printed, photocopied, typed, microfilmed, or otherwise fixed communication. Also included are not only conventional academic publications but also abstracts, master's theses, Ph.D. dissertations, presentation overheads, poster sessions and even tape recordings of speeches are all considered printed publications once they are delivered to subscribers, distributed at a meeting, shelved and cataloged in a library, etc. Important to note is that the publication of a journal article often occurs via e-publication prior to print publication.
This means that most publications or presentations of the invention prior to submission of a provisional patent application eliminate the ability to seek patent protection in foreign countries.
Within the U.S., public disclosure of an invention initiates a one-year period in which one may seek patent protection through the submission of a provisional or non-provisional patent application.
After a patent application has been filed, you may present and/or publish the invention without the loss of patent rights.
It is critical to note that the patent application covers the invention as it existed on the day the patent application was filed. Improvements to the invention may not be covered by the original patent application; therefore, you should consult with Rutgers ORC prior to presenting improvements or modifications of the invention.
In summary, please send your ideas/disclosures to our office BEFORE you publish or present your work. The process at Rutgers is easy and you typically can protect your patent rights by doing so.
How do we get a Patent?
A US patent is generally available for any "new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof". In order to obtain a patent, the invention must show utility, novelty and not be obvious (see 35 USC et. seq.). It is important to make sure that no one else has published or patented anything similar to your new invention. Usually ORC will perform a patent search to determine if patent protection is available, but you can also search patents online free of charge at the European Patent Office, the United States Patent and Trademark Office (USPTO), or goggle patents before submitting the Notice of Invention to ORC.
If it seems likely that the invention is patentable after the search, it will be necessary to prepare a written patent application to be submitted to the USPTO. The application as filed must provide a written description of the invention which shows the best mode of making the invention; which enables another skilled person to make and use the invention; and which specifically claims the invention (sets out what the invention is) in writing. The level of detail required is similar to an academic manuscript and these are routinely used as the basis for patent applications.
Once submitted, the patent application will be examined by the USPTO for novelty, utility, obviousness, best mode and enablement. If the application meets these statutory criteria, a patent will issue. Often the USPTO requires amendments to the claims, which can take a number of years to reach agreement on. US patents applied for after June 7, 1995 are valid for 20 years from the date of the earliest filing relied upon for priority (US patents filed before June 7, 1995 are generally valid for 17 years from the date of issue).
Patent Information can also be found at the USPTO.
Who "owns" the patent?
Under US law, only the original inventor of the claimed subject matter, and their assignees, can apply for a patent. All Rutgers employees are subject to the University Patent Policy. By signing the Faculty Employment Agreement, the faculty employee agrees to the terms of the University Patent Policy, including its requirement that he or she disclose and assign inventions or discoveries to the University. In exchange, the ORC markets the technology, manages and licenses the patent on your behalf, provides advice on business plans, makes connections with investors and pays you a share of the royalties.
How do I know if my post-doc or graduate student is an inventor of the patent?
Under US invention law, inventors must contribute to the conception of the subject matter of the patent as claimed. This is not the same standard as being a co-author on a publication. For example, carrying out experiments at the direction of another does not qualify as an inventive contribution nor does supplying a research material. Inventorship is a complex issue which has important implications for patent prosecution and licensing, please contact ORC if you have any questions.
What is a "publication"?
Any written enabling disclosure of the invention to a third party is a "publication". Some things considered by the USPTO to be publications include poster abstracts, doctoral theses, on-line listings, offers for sale, newspaper articles, etc. If you have any questions contact ORC.
What if I published my invention?
If the invention has been published, US law grants a one-year grace period during which the inventor can file for protection. But overseas, filings require absolute novelty. Other means of protection such as copyright, plant variety protection, trademark or trade secret protection may also be available for published discoveries. contact ORC for further details.
My invention is about to be published, what should I do?
Contact ORC immediately. Recent amendments to the US patent law provide for a new type of protection, a US Provisional Patent filing. This simplified filing was specifically enacted by Congress to benefit small inventors and research universities. As long as an enabling manuscript is available, a provisional patent can be filed almost immediately. Contact ORC for details.
I need to exchange information with another organization about my research, what should I do?
To preserve patent rights, exchanges of information should be protected by confidentiality agreements if these are executed before you talk to the other organization. Please contact the Corporate Contracts area for details.
top FEDERAL FUNDING
What if my patent was funded under a federal grant?
Funding under a federal grant needs to be reported (37 CFR 401) to the granting agency and disclosed in the patent. The federal government also retains march in rights in the patent. ORC will typically handle these issues for you, so continued grant funding is not jeopardized. Please be sure to indicate federal funding when you disclose to ORC.
How do I get a Copyright?
A US Copyright is available for any work of original authorship which is fixed in a tangible medium of expression and is reproducible (17 USC et.seq.). Examples of things which can be copyrighted include original works of computer software, books, stories, pictures, video performances, plays, musical recordings, sheet music, etc.
What if I use materials written by other people?
While materials written by others can be incorporated into copyrighted materials, it is important to get the author's permission (license) or assignment in each case before the copyrighted materials incorporating the materials written by others can be marketed or licensed. Where agreements are in place in advance, copyrighted materials authored by several parties can be considered "works for hire" which can then be copyrighted by the party who contracted the work for hire. As these issues are complex, we suggest you contact ORC with any questions.
top IP RELATED TO PLANTS
How do we obtain protection for new plants?
Many forms of protection are available for new plants including utility patents, plant patents, plant variety protection certificates, plant variety breeders certificates, trade marks and trade secrets. Plant patents are issued by the USPTO while variety protection certificates are issued by the US Department of Agriculture. As the choice of which type of protection to obtain can be somewhat complex, please contact Leon Segal, the licensing officer at SEBS, for further assistance.
How do we obtain Trademark protection?
Trade and Service Marks are used to identify goods and services used in commerce (15 USC $ 1051 et. seq.). Trademarks are increasingly used to identify software, websites, new plants, etc. The trademark will be examined by the US Patent and Trademark Office to see if it meets certain criteria before the mark is issued. There is an additional requirement that the mark be actually used in commerce after it is granted or the mark will be withdrawn. As the particulars can be confusing, contact ORC for details.
What if I need to use Rutgers University Trademarks for my campus activity?
If you need to use Rutgers University Trademarks (i.e. Scarlet Knights) please contact the Department of University Relations, Trademark Licensing Office, http://ur.rutgers.edu/trademark which is not a part of ORC.
top TRADE SECRETS
How do we obtain Trade Secret protection (for biological materials)?
Trade Secret protection is available under state laws and is used to protect information:
Some examples of things which can be protected and licensed this way include hybridomas, other unique cell lines, and transgenic animals and plants. It is important to use strictly drafted biological materials transfer and license agreements to accomplish this. contact ORC for details.
top MATERIAL TRANSFERS
What if I want to send or obtain biological materials under a materials transfer agreement with another organization?
If you have requested materials from another University you will probably receive a Material Transfer Agreement from that institution. This must be signed by the appropriate party within Rutgers. For the most part, MTA’s are standardized agreements, however, they occasionally contain provisions that cannot be agreed to by the University. We will negotiate these terms, with your input, as rapidly as possible.
If you wish to transfer some of your own research materials to a colleague at another institution, you should do this under the Rutgers Material Transfer Agreement.
Rutgers faculty and staff (excluding RBHS but including the School of Pharmacy) should Contact Charles Wyckoff, of Corporate Contracts to discuss details of the transfer.
top FACULTY RIGHTS AND RESPONSIBILITIES
What are my rights and responsibilities as a Rutgers Faculty Member?
Please review the Patent Policy (PDF), Code of Ethics (PDF), and Conflicts of Interests Policy (PDF) and other relevant Rutgers Policies to see if you can find an answer there. If not, please contact ORC for assistance.
Note: Employees of legacy UMDNJ positions will continue to follow the Patent Policy that was in place prior to July 1, 2013.