Penn Center for Innovation

Who owns the invention and the patents?

The Bayh-Dole Act of 1980 provides universities with ownership rights to inventions made by their employees using federal funds. Therefore, Penn owns the technology developed at Penn by Penn employees and actively manages the licensing rights to the technology while also taking direct responsibility for the protection and maintenance of patents or copyrights.

 

What happens if there is a co-inventor from another institution?

The fact that co-inventors may be employed at different institutions or commercial entities, does not affect the inventorship determination or patentability of the invention, although the commercialization process may be influenced by such collaborations. Inventorship of patents is determined in strict accordance with patent law and patent applications are filed in the name of inventors and assigned to their employers. If there are multiple owners of a given piece of intellectual property, PCI will represent Penn’s interests in negotiating inter-institutional agreement(s) with the other institutions or entities owning or having rights to the intellectual property defined by the claimed invention.

 

Who pays for the patent costs?

Penn retains outside patent counsel and PCI manages the professional services of these patent firms without charge to the researcher/inventor. PCI generally assumes the upfront financial risk to obtain patent protection for its technology, but when a company licenses the technology the company will be required to take over payment of patent expenses and reimburse PCI for any previously incurred costs associated with the preparation, filing, and maintenance of the licensed patents.

 

Will filing a patent application prevent me from publishing or disclosing my research?

Absolutely not! It is a fundamental tenet of the University of Pennsylvania that researchers should share publicly the results of their investigations, and there is no reason why patents should cause the scientific community to alter the age-old free exchange of ideas. However, if the invention is to be fully patented worldwide, a patent application must simply be filed prior to publicly disclosing the invention. PCI will work closely with the researcher to quickly protect commercially viable intellectual property and insure that there is minimal delay, if any, in publishing or disclosing research.

 

What are typical terms of a license agreement?

A license agreement should provide for a fair economic return to Penn and its employee inventors if the product is commercially successful. Typically, revenues to the University occur as license payments or are royalties on sales of products based on the Penn invention. The negotiated royalty percentage is generally based on a number of factors, including the stage of development of the product candidate, the relative profit margin for the particular product, the investment required to commercialize the product, competing technologies, strength of patent or copyright protection, and the type of license rights (nonexclusive vs. exclusive). Licenses may also provide for the University to receive payments such as upfront fees, annual maintenance fees, minimum royalties, and milestone payments. When the technology is licensed to a start-up company, Penn often shares some of the early risk by taking equity in lieu of cash payments. However, once the licensee has succeeded in generating revenues on the product sales, the University will generally expect a portion of these revenues in the form of back ended royalty payments.