definitions & terminology

Association of University Technology Managers (AUTM) – a nonprofit organization dedicated to bringing research to life by supporting and enhancing the global academic technology transfer profession through education, professional development, partnering and advocacy. AUTM’s more than 3,200 members represent managers of intellectual property from more than 300 universities, research institutions and teaching hospitals around the world as well as numerous businesses and government organizations. The core purpose of AUTM is to support and advance academic technology transfer globally.

Authorized Signatory – an individual who has legal power to sign an official document on behalf of someone else.

Bayh-Dole Act – created a uniform patent policy among the many federal agencies that fund research, enabling small businesses and non-profit organizations, including universities, to retain title to inventions made under federally-funded research programs. This legislation was co-sponsored by Senators Birch Bayh of Indiana and Robert Dole of Kansas. The Bayh-Dole Act was especially instrumental in encouraging universities to participate in technology transfer activities.

Commercialization – the process by which a new product or service is introduced into the general market.

Confidential Disclosure Agreement (CDA) – [also referred to as non-disclosure agreement (NDA) or secrecy agreement] is a legal agreement between a minimum of two parties which outlines information the parties wish to share with one another for certain evaluation purposes, but wish to restrict from wider use and dissemination. The parties agree not to disclose the non-public information covered by the agreement. CDAs are commonly executed when two parties are considering a relationship/collaboration together and need to understand the other’s processes, methods, or technology solely for the purpose of evaluating the potential for a future relationship.

Conflict of Interest (COI) – involves circumstances where an individual’s professional actions or decisions at the University could be influenced by considerations of personal gain, usually of a financial nature, as a result of interests outside his/her University responsibilities. The central theme in addressing COI is transparency, and the first step is disclosure of the interest to the appropriate University administrative office.

Copyright – Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.

The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are registered by the Copyright Office of the Library of Congress.

Innovation – a new idea, device, or method.

Intellectual Property (IP) – Creations of the mind – creative works or ideas embodied in a form that can be shared or can enable others to recreate, emulate, or manufacture them. There are four ways to protect intellectual property - patents, trademarks, copyrights or tradesecrets.

Invention Disclosure – A written a description of your invention or work, the identities of possible inventors or creators, and other information that is needed to assess your invention, file for IP protection, and meet our reporting requirements to sponsors. Receipt of an invention or copyright disclosure triggers our formal evaluation, protection, and commercialization process.

Inventor – one who alone or together with others contributes to the conception of an invention. Note: inventorship does not equal ownership or authorship; contribution to a research publication does not automatically qualify one as an inventor.

License – a license agreement provides a company the right to commercially use intellectual property such as a patent or copyright. The agreement spells out the financial and legal terms under which the University grants the licensee rights to commercially utilize this intellectual property so as to benefit society and the general economy.

Material Transfer Agreement (MTA) – a contract that governs the transfer of tangible research materials between two organizations, when the recipient intends to use it for his or her own research purposes. The MTA defines the rights of the provider and the recipient with respect to the materials and any derivatives.

Option – an option agreement provides a company a time-limited right to obtain a full license agreement by “exercising” the option to obtain this license. Options are typically used in instances where the company would like to do further research and development to evaluate the technology prior to entering into a full license agreement. One of the key differences between an option and license agreement is that the former does not allow the company to commercially market and sell the technology.

Patent – a patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO.

There are three types of patents:

  1. Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
  2. Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
  3. Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

Prior Art – constituted by all information that has been made available to the public in any form before a given date that might be relevant to a patent’s claims of originality. If an invention has been described in the prior art, a patent on that invention is not valid.

Researcher – a person who carries out academic or scientific research.

Startup Company – an entrepreneurial venture which is typically a newly emerged, fast-growing business that aims to meet a marketplace need by developing or offering an innovative product, process or service. A startup is usually a company such as a small business, a partnership or an organization designed to rapidly develop a scalable business model.

Trademark – A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product.

Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks that are used in interstate or foreign commerce may be registered with the USPTO.

Trade secret – protection given to a formula, process, device, or other business information that is kept confidential to maintain an advantage over competitors. Due to the open nature of public universities, trade secrets, while commonly important intellectual property in companies, are less commonly protected in academic settings.

Technology Transfer – formal transfer of rights to use and commercialize new discoveries and innovations resulting from scientific research to another party.  Protection includes patents and copyrights, and licensing innovations.

Uniform Biological Material Transfer Agreement (UBMTA) a master agreement which serves to simplify the administrative handling of exchanges of biological materials.

Venture Capital – a type of funding for a new or growing business. It usually comes from venture capital firms that specialize in building high-risk financial portfolios. With venture capital, the venture capital firm gives funding to the startup company in exchange for equity in the startup.