Inventions at the University of Alaska Fairbanks begin when faculty, staff, and/or students conceive of an idea. All new inventions developed at UAF should be disclosed to the Office of Intellectual Property and Commercialization (OIPC). The first step is to complete an Invention Disclosure Form. Please submit an electronic copy to UAF-OIPC@alaska.edu, fax it to (907) 474-2690 or send a paper copy to:
Office of Intellectual Property and Commercialization
3352 College Road
P.O. Box 757265
Fairbanks, AK 99775-7265
How are disclosures evaluated?
Upon receipt of the disclosure, OIPC reviews the disclosure for ownership issues (if there are inventors from an organization other than UAF); sponsor-related directives; and royalty sharing agreement amongst inventors.
The invention disclosure undergoes thorough assessment for:
- Legal issues
Ownership of the invention – Ownership usually follows inventorship. Under most employment contracts, employees are required to assign their invention to their employer. If there are inventors at institutions other than UAF that have contributed to the invention, the technology is typically jointly owned between UAF and the employer of the other inventors. OIPC then negotiates an inter-institutional agreement with the joint owner to determine how the two organizations intend to manage and commercialize the technology.
Sponsor Directives – If the invention has been conceived and reduced to practice with support of non-UAF funds, OIPC reviews the terms of the funding agreement to see what obligations, if any UAF has to the sponsor. OIPC is responsible for fulfilling the terms of these sponsor agreements. The commitments to the sponsor may then influence the scope of options available to OIPC to market and commercialize the technology.
- Public disclosure issues (Public disclosure and its impact on the ability to patent)
Determining the earliest possible date of public disclosure known to, or planned by, the inventors influences whether UAF has an opportunity to pursue the protection of the invention and the critical dates by which patents may have to be filed. If the technology has already been fully disclosed, there may be limited opportunity for protection of the technology as most countries require complete novelty of the invention to allow patent protection of the same. In such a case, OIPC will consider determine whether there is still a possibility to commercialize the technology with limited or no patent protection and whether the disclosure is truly enabling.
- Novelty of the invention
OIPC performs a prior art review of patents and literature to determine the novelty of the invention to define the scope of the patent application, if any, that may be filed. This review is shared with inventors and we encourage an open dialog to determine what we believe may be the truly inventive and novel aspect of the invention over what information may already be in the public domain. In the event that novelty is clear and can be broadly defined, UAF is more likely to file a provisional patent application to preserve the intellectual property position of the university and further explore its market potential.
- Stage of development
Determining whether the technology is a concept or a proven invention influences the timeframe for filing patent applications. Since patent law in most countries requires that an invention is fully reduced to practice prior to filing a patent application, the ability to prove that the invention, as disclosed, is an integral part of the timing of patent filing. If the inventors have the sufficient data to enable the invention, either at the time of disclosure or have a reasonable expectation that they will be able to do so within a one year time frame, UAF is more likely to file a provisional patent application to preserve the intellectual proctored position of the university and further explore its market potential.
- Market potential
This is probably one of the most critical elements in making a decision to pursue protection and commercialization of a technology. The decision to file for patent protection makes sense only if the university believes that the patent will result in revenues to the university that will exceed the expense incurred in obtaining it. OIPC has an active market research and marketing program to make these decisions. Some of this work may often be done after a provisional application has been filed. However, a clear potential market needs to be demonstrated prior to conversion of the provisional application to a full patent application.
Filing for a patent
Once a decision has been made to file a patent on an invention, OIPC covers the costs of filing the patent application. OIPC will typically file a provisional application to help manage cost and increase the potential time frame for protection. This is, however, only the first of many steps necessary to commercialize the technology. Potential market applications then must be ascertained and a commercialization strategy tailored to the specific technology. At this point, optional paths to the marketplace – such as licensing to industry or forming startups – will be explored and evaluated.
License to a startup vs. established company
Assessment of all of the above-mentioned issues influence decisions regarding the development of a marketing strategy for the technology and best instrument for taking a technology to market. If the technology is an early-stage, platform technology that is likely to be disruptive to the marketplace, a startup is probably the best chance that it has to get to the marketplace. In such cases, OIPC works closely with local entrepreneurs, alumni and investors to market the technology, develop a business entity around it, provide business and in some cases financial support, and help the company raise the necessary funds to execute its business plan. In the event that the technology is at a relatively mature stage and has a well-defined product or application, it may be more appropriate to license it to an existing company that has the resources to expedite the time to market. In such cases, OIPC undertakes an aggressive marketing campaign to introduce the technology to companies that would have an interest and then pursue all leads to ensure successful licensing relationships.
In accordance with the University of Alaska Board of Regents’ Policy and University Regulation, revenues from a technology are distributed to UAF and inventors as follows:
Subject to restrictions arising from overriding obligations of the university pursuant to grants, contracts or other agreements with outside organizations, the university agrees, for and in consideration of the assignment of patent rights, to pay annually to the named inventor(s), the inventor(s)’ heirs, successors or assigns, a royalty share of the net proceeds received by the university for each patent or other intellectual property right assigned to the university, as shown below.
Total Net Royalty Per Invention ($):
• Inventor's Share: 100%
• University Share: 0%
• Inventor's Share: 50%
• University Share: 50%
Where there are two or more inventors, each inventor will share equally in the inventor’s share of net proceeds, unless all inventors previously have agreed in writing to a differing distribution of such share.
Distribution of the inventor’s share will be made no less than annually. In the event of any litigation, actual or imminent, or any other action to protect patent rights, the university may withhold distribution of all royalty proceeds until resolution of the matter. Of the remaining net proceeds, the share will be distributed as determined by the president.
University proceeds from university inventions will be used for the support of university research and scholarly activities; however, exceptions may be granted by the president or president’s designee.