Frequently Asked Questions
Disclosure
What types of intellectual property should I disclose?
Intellectual property of all types may be disclosed to OTT including inventions, new methods, materials, and systems, confidential information, software of all types, research materials including biological samples, databases, algorithms, models, instructional materials, and assessments tools.
How do I disclose intellectual property to OTT?
Please visit the submit a disclosure page which describes options for disclosing your intellectual property.
When should I submit a disclosure?
Please submit a disclosure at any time you create one of the forms of intellectual property listed above that others outside of Penn State might find useful. In the case of a potentially patentable invention, method or process we encourage you to submit the disclosure prior to the first public disclosure of your work including presentations and published abstracts. However, even if you have already publicly disclosed your work, please still disclose your discovery to OTT as patent rights or other forms of intellectual property protection may still be available.
Who should disclose intellectual property to OTT?
Any Penn State person that is under an obligation to assign intellectual property to Penn State that creates any of the types of intellectual property listed in the first question above. OTT only administers intellectual property owned by Penn State.
All contributors to the ideas leading to an invention should be mentioned in your disclosure, even if they are not Penn State employees. The OTT, along with legal counsel, will determine the rights of such persons and their associated institutions.
Why is the contract/grant information important to OTT?
Under federal law, Penn State is required to report inventions created under federally funded research. If the university decides not to take title to such an invention (that is, decides not to keep it), then the invention is returned to the Government under its primary ownership rights. Non-government sponsors, such as corporations, may also have intellectual property license rights included in sponsored research agreements with which Penn State must comply.
Intellectual Property Agreement (“IPA”) and IP Policies
Where can I find out more about Penn State’s IP Policies?
Why is a signed IPA required by Penn State?
Federal funding regulations (35 US Code Chapter 18 § 200-212, the Bayh-Dole Act) specifically require federally funded research entities to have, on file for every person participating in a research program, an agreement to assign ownership of certain intellectual property to the research entity. Like the federal government, industrial and foundation research sponsors require Penn State to own and control certain intellectual property as a condition of receipt of research funds. Failure to have an individual’s signed IPA on file puts Penn State at risk of non-compliance of such regulations and obligations.
Patenting and Licensing
Who pays for patent costs for Penn State inventions?
The OTT with funds allocated from the Penn State Research Foundation will pay for all patent expenses deemed appropriate as determined by internal assessments of licensing interest and commercial potential. The OTT operates within a strict total patent budget and seeks to obtain reimbursement for patent expenses when licensing its intellectual property.
What types of intellectual property can be licensed?
Intellectual property of all types may be licensed by OTT to other companies/entities including inventions, new methods, materials, and systems, confidential information, software of all types, research materials including biological samples, databases, algorithms, models, instructional materials, and assessments tools.
What happens with licensing revenue that OTT receives?
In general, after subtracting any intellectual property protection costs, revenue is split 40/40/20 with 40 percent paid to the creators/inventors as personal income, 20 percent is transferred to the administrative unit(s) that the intellectual property was created in (e.g. the college) and the remaining 40 percent is retained by the Penn State Research Foundation to support the operations of the OTT and further the foundation’s mission.