The Office of Intellectual Property and Commercialization works with faculty, staff, and students to commercialize inventions at the University of Alaska Fairbanks.

What is an invention?
We want to help any faculty, staff or student who believes he or she may have created an invention. An invention is any discovery, process (including computer programs), machine, instructional material, composition of matter, article of manufacture, know-how, design, model, technological development, strain, variety, culture of any organism, or portion, modification, translation, improvement or extension of these items. Additionally, many research tools are inventions. Materials such as antibodies, vectors, plasmids, cell lines, mice and other materials are used as "tools" in the research process.

How can an inventor get help from OIPC?
Getting help from OIPC starts with the filing of an Invention Disclosure Form (IDF). This form gives us some basic information about the invention, and the inventor.

This form should be submitted to our office once an inventor can concisely define the invention and substantiate that the invention has been reduced to practice. Reduction to practice can be proven by showing a prototype, a model, a draft of a publication, or a draft of experimental results. Further, an inventor should contact us prior to disclosing the invention publicly. This includes discussing the invention at a conference, publishing a paper on the invention, or talking to groups outside the university about research.

OIPC’s Invention Disclosure Form and instructions can be found here.

How does OIPC help Inventors?
Our office helps inventors:

• Assess their idea;
• Negotiate Non-Disclosure Agreements
• Market their idea to companies who may be interested in the invention;
• Seek intellectual property protection;
• License the invention or execute other beneficial agreements; and/or
• Garner Royalties.

How does OIPC assess the invention?
OIPC assesses the following:

• Inventorship Issues - OIPC helps faculty, staff, and students determine who is an inventor, and eligible for the benefits of inventorship. We will asses whether a team of inventors needs a contract for the equitable sharing of royalties, or whether a particular person qualifies as an inventor.
• Ownership Issues – UAF owns all intellectual property produced as a result of the use of university resources. However, there may be inventors at institutions other than UAF that have contributed to the invention, and the technology may be jointly owned between UAF and the employer other inventors. OIPC will negotiate an inter-institutional agreement with the joint owner to determine how the two organizations intend to manage and commercialize the technology.
• Sponsor Issues- 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.
• Disclosure Issues – Disclosure of intellectual property before it is protected can lead to an inability to file for intellectual property protection, especially if such a disclosure occurs beyond certain timeframe or if it occurs without a non-disclosure agreement. OIPC assesses whether the invention has been disclosed or whether an inventor needs a non-disclosure agreement to discuss the intellectual property.
• Intellectual Property Issues - OIPC determines whether the invention is novel, non-obvious, and useful under U.S. patent law, and performs a prior art review to determine patentability. This review is shared with inventors and we encourage an open dialog to determine what we believe may be the truly inventive over what information may already be in the public domain. In the event that novelty is clear and can be broad in scope, 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.
• Development Issues - 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 is reduced to practice is an integral part of the patent filing. If the inventors have 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 - The decision to file for patent protection makes sense only if the university believes that the patent will result in revenues 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 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.

How does OIPC help inventors with non-disclosure agreements?
In some cases, it may be necessary for a researcher or inventor to execute a non-disclosure agreement with a company. The office is very considerate of the needs of inventors under these agreements, and enters into them cautiously.

Non-Disclosure Agreements can cause numerous legal issues. For example, sometimes companies  draft non-disclosure agreements that are expansive in scope, restrictive on publication, ambiguous in  nature, and extremely risky. Sometimes the non-disclosure agreements can act as a non-compete  agreement, which limits the university’s ability to publish or patent.

Executing a Non-Disclosure in these cases would not be in the best interest of the inventor or the university, and these agreements will be renegotiated if possible. After review by OIPC and General Counsel’s office, the Non-Disclosure Agreement may be approved, and signed by the President’s authorized designee. If the agreement cannot be changed, it may be in the best interest of the inventor  and University not to sign. Please note, that researchers, inventors, or other administrators are not authorized to sign Non-Disclosure Agreements.

To expedite the processing of non-disclosure agreements, OIPC asks you to contact us for a limited Non-Disclosure form that fits your particular situation, rather than try to negotiate a boilerplate document sent to us by an outside party. Further, “Mutual Non-Disclosure Agreements” are discouraged in situations where a researcher is merely evaluating a product or information from an outside party, and such agreements will take an extended period of time to change.

How does OIPC market the invention?
OIPC has an active market research and marketing program. OIPC will create target market lists, determine whether the invention fits a suitable market, and contact potential licensees across the United States. In some cases, OIPC may draft business plans or financial plans to garner investment from private investors. OIPC works with the inventor to find the most suitable use and market for the invention, execute non-disclosure agreements when necessary, and find a licensee.

How does OIPC seek intellectual property protection?
OIPC will determine whether an invention can be protected under U.S. or international intellectual property law, and work with intellectual property attorneys to file most documents. When an invention meets the requirements under patent law, OIPC may pursue patent protection by filing a provisional patent or a full patent. In other cases where such an option is not available or it would be detrimental to file a patent, OIPC may simply file for copyright protection, or help an inventor establish trade secret protection. In each case, OIPC will work with inventors to determine which is the best option.

How does OIPC license the invention?
OIPC will draft contractual language that is suited for the inventor, the licensee, and the university. This language will determine how the invention will be transferred to the private sector, and how the university may support the licensee. First, OIPC will draft a proposed term sheet and discuss it with the inventor. Next, OIPC will contact the potential licensee to discuss the terms. After the terms are negotiated, OIPC will sign the license on behalf of the University, and send it to the licensee for execution. OIPC will track whether the terms have been adhered to for the duration of the license.

How does OIPC distribute royalties?
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 ($):
First $10,000
     • Inventor's Share: 100%
     • University Share: 0%
>$10,000
     • 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.

For more information, please see the links below, or contact UAF-OIPC@alaska.edu