University of Northern Iowa

 

 

Intellectual Property - Disclosure & Protection

 

"The University of Northern Iowa owes
a large part of its reputation to the
ingenuity and passion of its
​distinguished faculty and researchers,
and to its active engagement with
business and industry."

-Bill Harwood

 

Safeguard your discoveries

Disclosure is Protection

Properly disclosing IP ensures that inventors are in compliance with University policy. Disclosure establishes ownership and protects the rights of all contributors to the IP. 

 

What you'll need to get started?

The first critical step to protecting an invention is to report it to us in advance of any public disclosure. Our team will then work to ensure the intellectual property (IP) is protected and managed according to UNI policy. Proper stewardship ensures your invention may be developed to its fullest capacity. Early action protects IP In light of recent changes to U.S. patent law, it’s important to protect innovations before other parties have a chance to file, and before you publicly share information. If you plan to disclose any information about your innovation to others, please contact us immediately.

 

Reporting your innovation

Simply complete our short disclosure form and all information is completely confidential.

Our disclosure form makes it easy to confidentially report innovations to the UNI IPO, well in advance of any public disclosure.
Whether you hope to commercialize your innovation or simply want to share materials or resources with a third party,
our patent and licensing specialists will collaborate with you in order to:

  • Assess and secure your asset(s)
  • Protect your rights and interests as a University inventor
  • Establish a solid foundation for commercialization

 

Our expertise ensures you navigate this complex process successfully. Our team will take the lead in securing intellectual property assets and handling all legal and administrative expenses associated with patent filing and prosecution.

 

DID you know

Downloads: Forms & Facts  

IP and Tech Transfer at UNI - FAQs (DOC)

Disclosure Form (DOC)

Available Technologies (DOC)

 

Questions?
Contact our UNI IPO for clarification and information.

 

Benefits of Disclosing

  • Establishes ownership rights and gives credit to the inventor(s). 

  • Protects IP against infringement and unauthorized use.  

  • Initial patent costs are paid by the UNI Research Foundation.

  • Patent search and market research are provided at no cost to the inventor(s).

  • IPO can assist with the proper placement of the IP in the public domain, or licensing for commercial use.   

  • ∙Ensures that all parties entitled to royalty compensation are identified. 

 

Profiting from Intellectual Property

One of the greatest incentives for patenting, copyrighting, or securing a trademark is the potential to move the creation into commercial use. The route that best accomplishes this is the pursuit and negotiation of a license agreement with an interested company. The license agreement is written permission for a company to produce or use the creation. A book written by a University professor might also be licensed in order to be printed. A patented technology, such as a new industrial machine, is a good example of something that might be licensed. In exchange, the licensee pays a royalty for the privilege of using the IP.

After paying expenses that result from the pursuit of most forms of IP (i.e. lawyer fees, application fees, patent searches), the net proceeds are distributed as defined in the University of Northern Iowa Patent Policy. The first $10,000 of profit from the technology is awarded to the creator(s). After this initial award, the profits are shared between the creator(s) and the University. This is referred to as profit sharing. The creator receives 50% of future profits and the University is entitled to the remaining 50% of future profits. The University’s share is distributed to the Research Foundation and the University Sponsoring Unit, which receive 20% and 30% of the total profits, respectively.

 

Definitions

Research Foundation

The incorporated unit through which University intellectual properties are managed, and profits from intellectual properties are received, disbursed, and managed.

University Sponsoring Unit - The College(s), or Administrative unit outside the College, or the applicable Divisional Vice President which contributes the support for personnel time, procurement, and/or prototype development of the intellectual property.

Net Proceeds - The gross receipts derived from trademarks, trade secrets, materials, inventions, discoveries, and/or intellectual properties, including but not limited to, rents, royalties, dividends, earnings, gains, and sale proceeds less development costs.

The official policy can be found on the UNI Policies and Procedures page.

 

Highlights of the UNI Intellectual Property Policy

The complete policy can be found on the UNI Policies and Procedures page.

The President of the University appoints an Intellectual Property Officer and an intellectual Property Committee consisting of faculty and staff members who are chosen to serve staggered three-year terms. These individuals assist the Office of Intellectual Property and the UNI Research Foundation in the protection and management of intellectual property.

University employees, students and other individuals using university facilities in the development of intellectual property and those who receive grant or contract funds through the University are required to assign inventions and patents to the UNI Research Foundation.

The UNI Research Foundation agrees to pay inventors a royalty share of the net proceeds for each patent or other intellectual property right assigned to the UNI Research Foundation.

The University will not assert ownership of copyrightable materials produced by faculty members as a part of their normal teaching or scholarly activities at the University unless University ownership is specifically provided for in a related agreement.

A student author of a thesis shall own the thesis copyright but must, as a condition of a degree award, grant royalty-free permission to the University to reproduce and publicly distribute copies of the thesis.

Research and other information about IP development will be made available in the UNI Library, once IP rights have been claimed.

The official policy can be found on the UNI Policies and Procedures page.

 

Definitions

Research Foundation - The incorporated unit through which University intellectual properties are managed, and profits from intellectual properties are received, disbursed, and managed.

University Sponsoring Unit - The College(s), or Administrative unit outside the College, or the applicable Divisional Vice President which contributes the support for personnel time, procurement, and/or prototype development of the intellectual property

Net Proceeds - The gross receipts derived from trademarks, trade secrets, materials, inventions, discoveries, and/or intellectual properties, including but not limited to, rents, royalties, dividends, earnings, gains, and sale proceeds less development costs.

The official policy can be found on the UNI Policies and Procedures page.

 

Duty to Disclose

Any individual(s) using University resources in the process of developing or discovering intellectual property must properly disclose in a reasonable and prompt manner the conception and/or reduction to practice of potentially patentable or otherwise legally securable inventions in keeping with the time restriction of U.S. Patent or Trademark law. Such disclosure shall be made to the UNI Intellectual Property Officer.

 

Disclose Policy 

As mentioned, IP is any new, novel, and useful idea or product created by individuals through their own initiative. IP may be protected in the form of patents, copyrights, trademarks, and trade secrets. IP protection provides inventors, authors, and the University with exclusive ownership rights. 

UNI’s Intellectual Property Policy was established as a no-cost service to assist faculty, staff, and students in properly disclosing and protecting intellectual property (IP). 

The complete policy can be found on the UNI Policies and Procedures page. 

 

How to Claim Intellectual Property Rights

When UNI employees create a new, novel, and useful product, they should contact the Intellectual Property Officer for support in the intellectual property process. The timing of this disclosure is especially important. In order to obtain full intellectual property rights, the earliest communication is recommended. Disclosure to the IPC must be done before any type of public exposure, including publication or public presentation. Pre-patent public exposure can result in the loss of patent rights.

 

Detailed procedures for claiming Intellectual Property rights are found at the following links.

  • Patents and Trade Secrets

  • Copyright

  • Trademark

 


 
Our office is conveniently located in the Business and Community Services Building
at 8120 Jennings Drive, Suite 128.

If you have an idea to discuss, or if you have any questions, please reach out to one of us:
 

Paul Kinghorn, Intellectual Property Officer and Director of Advance Iowa
paul.kinghorn@uni.edu 319-273-4327

Bill Harwood, Science and Technology Officer, and Head Chemistry & Biochemistry
bill.harwood@uni.edu 319-273-2052

Randy Pilkington, Research Foundation Chair and BCS Executive Director
randy.pilkington@uni.edu 319- 273-6945