Inventor FAQs
Frequently Asked Questions for Inventors
Disclosure
NJIT faculty, staff, or students should disclose an invention to the IPTLO if they believe their research could be commercialized for public use and benefit. University inventions are typically in the very early stages of development and still require time and effort to reach the market. Intellectual property protection, together with tech transfer, often provides the necessary incentive for a company to pursue such a project.
NJIT’s patent policy requires that potentially patentable inventions be disclosed on a timely basis to the University. The IPTLO will assess whether to begin the legal protection process and work to identify outside development partners. If government funds were used for your research, you are required to file a prompt invention disclosure, which will be reported to the sponsoring agency. Similar requirements may exist for other sponsored projects.
You should complete an invention disclosure whenever you feel you have discovered something unique with possible commercial value. This should be done well before presenting the discovery through publications, speeches, poster sessions, conferences, or other communications. Once the invention is publicly disclosed, potential patent rights are limited.
Be sure to inform the IPTLO of any imminent or prior presentation, lecture, poster, abstract, website description, video presentation, research proposal, dissertation/master’s thesis, publication, or other public presentation of the invention. Please note that a thesis is considered a publication even if it is embargoed.
There are significant differences between the U.S. and other countries as to how early publication affects a potential patent. Once publicly disclosed (published or presented in some form), an invention may have a restricted or minimal potential for patent protection outside of the United States.
Anything that is readily available to the public (a journal paper, a conference presentation, an online publication, even a dissertation indexed at the library) that describes the basic ideas in enough detail that someone else would be able to make and use the invention; i.e., those ideas that are new.
Showing or telling these ideas may also constitute disclosure, as does selling or offering for sale a prototype of the invention.
IP Ownership
Ownership depends upon the employment status of the creators of the invention and their use of University resources. Considerations include:
- What was the creator's employment status at the time the intellectual property was made?
- Were NJIT resources used in creating the intellectual property?
- What are the terms of any agreement related to the creation of the intellectual property?
As a general rule, NJIT owns inventions conceived or reduced to practice in whole or in part by members of the faculty or staff (including student employees) of the University in the course of their University responsibilities or with more than incidental use of University resources.
The University’s copyright policy describes the applicable rules for copyrightable works. In some cases, the terms of a sponsored research agreement or materials transfer agreement may impact ownership. When in doubt, please contact the IPTLO for advice.
Generally, the invention will be jointly owned between NJIT and the other institution or company. Each inventor will assign his or her rights to their employer. The IPTLO will work with the other institution to decide on management of the invention.
Usually, if the other institution is a university or research institution, we will make an inter-institutional agreement that provides for one of the institutions to take the lead in protecting and licensing the invention, sharing of expenses associated with the patenting process, and allocating any licensing revenues.
Patents and Licensing
It typically costs $25,000 to $35,000 to file and prosecute a U.S. patent application. The costs could be significantly more than $35,000 depending on the office actions and other requirements. This includes patent attorney costs and the filing fees paid to the United States Patent and Trademark Office (USPTO).
If the technology is unlicensed, NJIT pays the patent costs. These expenses are reimbursed by the licensee or deducted from royalties received. Filing and obtaining issued patents in other countries is a very expensive undertaking. Usually, once a patent is issued in the U.S or in foreign countries, certain substantial maintenance fees or annuities are required to keep the patent alive.
A provisional patent application allows NJIT to begin securing patent rights while a non-provisional patent application is the first step toward a legally recognized patent. A provisional patent application is meant to help protect your idea and give you time to perfect it. Once you have the design and function ready, you can apply for the non-provisional patent application.
Your active involvement can dramatically improve the chances of matching an invention to an outside company. Your research and consulting relationships are often helpful in both identifying potential licensees and technology champions within companies.
Once interested companies are identified, the inventor is the best person to describe the details of the invention and its technical advantages. The most successful technology transfer results are obtained when the inventor and the licensing professional work together as a team to market and promote use of the technology.