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TCO Main Page
For
Researchers: Technology Licensing FAQs
- What is the mission of the Technology
Commercialization Office (TCO)?
- Who pays the costs of patenting
an invention?
- Who is eligible to disclose an
invention to TCO and to use TCO’s services?
- What if a collaborator from another
institution (i.e. other than UGA) has contributed to my invention?
- If I publish a paper or make a
presentation on my technology at a meeting, will my invention
be patentable?
- Does TCO file for foreign patents
on inventions?
- Why would TCO not file for a patent
on an invention?
- Who is an Inventor?
- If two or more persons work together
to make an invention, to whom will the patent be granted?
For more information about copyrights and trademarks please see
the Legal Services FAQs.
1. What is the mission of the Technology Commercialization Office
(TCO)?
TCO facilitates the transfer of technology developed at The University
of Georgia* to commercial enterprises where the technology can
be put to beneficial use.
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2. Who pays the costs of patenting an invention?
UGARF covers all the costs of patenting an invention. After an
invention is licensed, UGARF typically asks the licensee to reimburse
these expenses.
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3. Who is eligible to disclose an invention
to TCO and to use TCO’s services?
Any employee of The University of Georgia is required to disclose
an invention to TCO. Students may also disclose inventions to TCO.
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4. What if a collaborator from another institution (i.e. other
than UGA) has contributed to my invention?
UGARF has inter-institutional agreements
with many universities, research institutes and other organizations,
and could likely negotiate
such an agreement with your collaborator’s institution. This
type of agreement determines which institution would take the lead
in patenting and licensing the invention, as well as how any royalty
income would be shared. Employees of other institutions are not
required to sign this document but should be listed on the form.
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5. If I publish a paper or make a presentation on my technology
at a meeting, will my invention be patentable?
After you publish, present or otherwise publicly disclose your
invention, you have one year from the first disclosure date to
file a U.S. patent. After this anniversary has passed, you lose
all U.S. patent rights. For foreign patents, no grace period exists;
that is, publication (or any form of disclosure) of your invention
immediately bars you from foreign patent rights.
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6. Does TCO file for foreign patents on inventions?
TCO does file foreign patents on inventions, depending on the
level of licensing interest, the overall market size and the potential
market share for the technology. Typically, only licensed technologies
will be considered for foreign filings.
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7. Why would TCO not file for a patent on an invention?
There may be several reasons for not filing a
patent on an invention:
- The invention may be obsolete before the
patent is issued.
- The invention may not be a strong patent candidate.
- The invention may be dominated by other patents
(or other patents may be needed for freedom to practice).
- The invention may not be commercially attractive
(it may be early stage, in a market of limited size or with
strong competitive forces, or involve regulatory
approval issues).
- The patent may not be enforceable (i.e. it is
difficult to tell if someone is using the invention).
- The invention may be
obvious, as defined by U.S. Patent Law, to someone skilled
in the art and in light
of previously
known information in the field.
To receive a patent, an invention must be “nonobvious.”
*[In accordance
with University System of Georgia Board of Regents policy, all intellectual
property at The University of Georgia (UGA) is administered
through the University of Georgia Research Foundation, Inc. (UGARF) in accordance
with the UGA Intellectual Property Policy and the Intellectual Property Administration
Agreement. An agreement with the Georgia Seed Development Commission has
established guidelines for the commercialization of new plant cultivars
developed at the
Georgia Agricultural Experiment Stations.]
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8. Who is an Inventor?
An inventor is a person who contributes significant
creative input into an invention. An inventor is one who makes a
contribution to at least one novel and nonobvious concept that makes
the invention patentable.
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9. If two or more
persons work together to make an invention, to whom will the patent
be granted?
If each had a share in the ideas forming the invention
as defined in the claims – even if only as to one claim, they
are joint inventors and a patent will be issued to them jointly
on the basis of a proper patent application. If, on the other hand,
one of these persons has provided all of the ideas of the invention,
and the other has only followed instructions in making it, the person
who contributed the ideas is the sole inventor and the patent application
and patent shall be in his/her name alone.
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