Intellectual Property & Patents FAQs

Who can be an inventor?

Any NJIT employee, both full and part-time, including faculty and other academic staff, professional and/or administrative staff, other employees, students (e.g., a graduate assistant) and all individuals who are or become affiliated with NJIT by virtue of their use of “NJIT Resources” can be an inventor on the invention disclosure submitted to NJIT.

Can a student contribute to an invention?

Yes, both undergraduate and graduate students can be an inventors through various ways such as class projects, capstone design projects, funded research or seed grants. For ownership and licensing, same NJIT IP policy applies for student research as for any other NJIT inventor.

Who owns inventions created at NJIT?

NJIT owns intellectual property or inventions if any of these circumstances is true:

  • The intellectual property or invention was created by an employee (faculty, researcher, staff, or student employee) within the scope of employment.

  • It was created on university time, with the use of university facilities or state financial support.

  • It was commissioned by the university pursuant to a signed contract, or it fits within the criterion of the work considered “works made for hire” under the copyright law.

  • It resulted from research supported by funded research, internal seed grants or third-party sponsorship.

Does NJIT own the inventions made by employee or students in their own personal time?

Inventions Made On Personal Time: Inventions or discoveries made by NJIT employees or students entirely on their own personal time and neither within the scope of their employment nor involving any substantial use of “NJIT Resources”, are the property of the inventor. For purposes of this provision, an individual’s “personal time” shall mean time other than that devoted to normal, assigned, or foreseeably anticipated functions in the carrying out of employment and/or academic responsibilities.

Any invention or discovery made while employed by or enrolled at NJIT and of a nature similar and/or related to the employee’s and/or student’s work or field of study at NJIT shall be presumed to have been made with “NJIT’s Resources” as defined herein. Neither use of NJIT’s library facilities nor use of non-confidential information in or authorized for delivery to, the public domain shall constitute substantial use of NJIT resources. All inventions and/or discoveries made on personal time must be disclosed in accordance with this Policy, demonstrating that individual ownership of the invention or discovery is neither in conflict with the employee’s or student’s responsibilities to NJIT nor in conflict with the spirit and/or letter of this Policy.

Can NJIT waive or release the ownership?

  • In Favor of Inventor: NJIT reserves the right, in its discretion, to waive or assign some or all of its ownership rights, in an invention, in favor of the inventor, if NJIT is convinced that the discovery or invention is clearly one that is either non-patentable, not warranting further evaluation as to patentability, not of further academic or commercial interest to NJIT or more advantageously exploited by virtue of the assignment. In such case, NJIT shall retain a limited interest in the invention (e.g. a royalty-free right to use the invention, commonly known as a “shop right”) and may retain a right to receive royalties or other valuable consideration in exchange for such a waiver or assignment.

  • In Favor of Third Parties: NJIT may, in its discretion, assign some or all of its ownership rights in an invention to third parties if NJIT determines that the discovery or invention is one more advantageously exploited by virtue of the assignment. NJIT shall retain a limited “shop right” interest in the invention and may retain the right to receive royalties or other valuable consideration in exchange for such a waiver or assignment. The inventor will retain the right to the compensation set forth in Section V.1 of the NJIT IP policy or such other compensation as mutually agreed upon by NJIT, the inventor and the assignee. Any such assignment, whether full or partial, must be written and signed by the President, the Vice President of Research and Development, or their formally and expressly authorized designees.

  • Conditions: Any grant of waiver or any assignment, whether full or partial must be written and signed by the President, the Vice President of Research and Development, or their formally and expressly authorized designees. Except and only as may be set out in a formal waiver or assignment agreement, once NJIT waives/assigns its ownership interest in the invention or discovery, the inventor/assignee may neither utilize NJIT’s name nor any formal indicia of a relationship between NJIT and the invention, discovery or the attempted commercialization thereof.

Can there be multiple inventors?

NJIT will permit the share of net proceeds allocated to multiple inventors to be divided upon whatever basis the inventors unanimously elect. However, if the inventors cannot reach unanimous agreement regarding allocation, then NJIT shall divide the proceeds among the inventors as it deems appropriate, given its review of comparative contribution, and such decision will be binding on all inventors. There will be a presumption that comparative contribution was equal.

What if the invention was created with someone from another institution or company?

  • Ownership depends upon the employment status of the creators of the invention, their use of university facilities, and any agreement that may be in place between the university and the creator or his or her employer. It is possible for an invention to be jointly owned by NJIT and a third party.

  • If the invention was created under a sponsored research or consulting agreement with a company, NJIT will review the contract to determine ownership and other rights as agreed upon through the executed contract and other relevant agreements. If the technology is jointly owned with another company, NJIT will work with the company to determine the appropriate patenting and licensing strategy.

  • Should the technology be jointly owned with another academic institution, the university will develop appropriate Inter-Institutional Agreement on protecting the invention and licensing.

Can the research results be published or presented at a conference without compromising the patent?

  • An invention disclosure must be filed well in advance before any public presentation or submission for publication. To protect research results of potential commercial value, it is essential that at least a provisional patent is filed before any publication. The international patent laws require filing a patent application before any publication or public disclosure. If any publication or public disclosure is planned, inventors must contact the DIPP office immediately and well in advance to discuss safe options.

  • Where the publication of the results of research, as a scholarly achievement, is delayed in accordance with either this policy’s restriction on publication or a sponsor’s condition as set out in formal agreement and such delay may significantly and imminently affect
    1. the evaluation of a faculty member’s record of accomplishment concerning promotion and/or tenure
    2. the evaluation of a non-faculty member’s record of accomplishment in consideration of continuing employment or
    3. the evaluation of a student’s thesis or dissertation concerning the conferral of a masters or doctoral degree, the evaluating agent(s) of NJIT (e.g. Departmental Promotion & Tenure Committee and each of its members and/or authorized affiliates) shall, operating under a strict confidentiality agreement, receive and evaluate the in-camera publication as to its merit and contribution to the record of the evaluatee in the context of the issue under review. This evaluation will remain under confidentiality agreement with only those having a legal need to know informed while also operating under a strict confidentiality order. Waiver of this process in favor of unrestricted publication may only be authorized by the President.