This FAQ section complements the NIU Intellectual Property Policy

What is intellectual property?

Patents, trademarks, copyrights, know-how and trade secrets are all examples of intellectual property.

What is an invention?

An invention is any new and useful process, machine, manufacture or composition of matter. For an invention to be patentable, it must be novel, non-obvious and supported by an adequate written description. 

Who is an inventor?

An inventor is one who conceives and either personally or through someone else reduces an invention to practice. Inventorship is distinct from authorship and ownership. Inventorship is a legal issue that is determined by a patent attorney. The conception of an invention is complete if the inventor is able to make a disclosure that would enable someone skilled in the art to make the invention without extensive research or experimentation. Someone who constructs an invention based on the inventor’s conception is not an inventor. Failure to name the correct inventors can result in invalidation of the patent.

When should I disclose my invention or idea?

You should submit an Innovation Disclosure once you have a clear concept and before you publicly disclose revealing information in writing or orally to a third party. This includes submitting an abstract, manuscript, report, presentation, poster, thesis, publishing it on the Internet or any other public format, or having a discussion. See question 8.

If I developed this invention in full or in part with sponsored research funds, what are my obligations?

Most grants or contracts for sponsored research require the university inventor to disclose the invention to the university. As an inventor, you must inform the Technology Transfer Office (TTO) of the invention and complete an Innovation Disclosure Form

What are my responsibilities once I have disclosed my invention to NIU?

If the TTO decides to patent your invention, you must assign the invention to NIU, via an assignment agreement. You must cooperate with the TTO and its patent counsels in the patent prosecution and marketing of your invention. You may be called on to consult with the licensee to at least a limited extent after the invention is licensed.

When I disclose my invention to the university, what are the university’s responsibilities?

The TTO will inform the funding agency as required and will arrange a prior art search. The term "prior art" is used to refer to the complete set of technical knowledge and experience in the particular field pertaining to the subject invention. If no prior art is found, the TTO will evaluate your invention to decide if NIU should patent your invention. The TTO will pay the costs of patenting your invention and it will undertake the marketing of your invention to potential licensees. The patent protection sought may be a provisional application, which provides the inventor and the TTO with up to one year to further develop the invention, evaluate the commercial potential and decide whether to file a patent application. 

After an invention is licensed, the TTO typically will ask the licensee to reimburse these expenses. The university will also pay you a share of the income it receives from licensing your invention. The NIU Intellectual Property Policy gives inventors a one-third share in such income after university expenses have been paid.

How does publication or other public disclosure affect the protection of my invention or idea?

In order to retain the potential for foreign patent protection, hold on publishing or publicly disclosing the invention until after a patent application is filed. Although the US. system allows you one year from first public disclosure of your invention to file a US. patent application, any public disclosure before filing a patent application bars your invention from foreign patent protection. This is important because many potential licensees have global markets and find foreign patents necessary. Patent applications can often be filed in a timely fashion As a result, the patent process does not prevent scientific publication and in most cases, it does not delay publishing.

What do I do if I want to discuss confidential aspects of a disclosure with a third party or enter into a collaboration, such as an individual or a commercial organization?

A confidentiality agreement, non-disclosure agreement, or confidential disclosure agreement should be signed by all parties. If confidential information will be provided by both or all parties, the document should reflect the obligation of all parties to keep the information confidential.