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Inventors Guide
Disclosing, Protecting, and Commercializing your Intellectual Property
Technology transfer is all about getting the intellectual property created at Mason into the marketplace. Your discoveries hold promise to improving the economy and generating revenue to help Mason move forward as a top research institution in the United States. From this page you should be able to find answers too many of the questions you might have about technology transfer, but if our answers are not here, please contact us.
- IP Ownership
Generally, except in the case of scholarly and other academic publications, intellectual property developed by faculty as a part of their employment or where they have used university resources including their effort, university students, facilities or equipment are the property of the university. For details, the university community should consult the specific policy and procedure documents.
- Invention Disclosure
When a member of the University community believes that a new discovery/invention has given rise to intellectual property, he/she should disclose the discovery to the Office of Technology Transfer. If the discovery was made under a federal grant or contract, there is an absolute obligation to disclose. U.S Federal Law mandates that all recipients of federal grants or contracts must report details of inventions and patents that have been made through such awards. Bayh-Dole compliance reporting is handled by OTT.
Every new disclosure should include the “
General Disclosure Form", an “Inventor/Creator
Information Form” for each inventor, and
copies of papers that pertain to the invention. If
the invention includes software, the disclosure must
include the “Software
Disclosure Supplement Form” form. The disclosure
package should be submitted to the Office of Technology
Transfer MS 5G5, Mason Hall D109, Fairfax Campus or
emailed to jmurphy@gmu.edu.
General disclosure forms require the signature
of all inventors/creators and of the relevant department
chair(s).
- Technology Evaluation and Assignment of Rights
Having received a complete disclosure package, intellectual property is reviewed for commercial viability by faculty and other experts in the field of the technology. If, upon evaluation, the OTT determines that the technology has commercial promise, the University takes title to the property. All inventors will receive a request for “Assignment of Rights” from OTT. This document is required by the United States Patent and Trademark Office to enable George Mason University to pursue the patent and subsequent licensing of the disclosed invention on your behalf. In accepting the title to property developed by members of the university community, the University, through the George Mason Intellectual Properties, Inc. assumes responsibility to
- Protect the property
- Commercialize the property
- Share net revenues with the creators of the property
- Intellectual Property Protection
The cost of protection is an important consideration as US patent can cost as much as $10,000 and foreign patents normally cost about $6,000 - $7,000 per country. To make this investment in a property, there must be a significant likelihood that future commercial revenues from the property will exceed the costs of protection. Forms of protection include:
- Patent Protection
- Copyright
- Trademark
- Trade Secret
- Research Recordkeeping
Keeping a detailed account of the research process
- the data generated, the experimental results, and
the timing of events can be very important in establishing
the legal framework for determining inventorship.
Jean Lang’s “Common-Sense
Rules for Research Recordkeeping” provides
an excellent guide to the researcher in establishing
a good record of the research process.
- Commercialization
OTT and GMIP will advertise the availability of technologies through its website, direct and indirect sales, and attendance at a number of conferences and trade shows each the year. In addition, inventors and creators are welcome to identify potential licensees and GMIP will follow up on any leads provided.
When a company shows interest in the technology, GMIP can give the company an opportunity to evaluate the technology either on an exclusive or non-exclusive basis. In the event the company wants to secure rights to the technology, GMIP will negotiate a license with the company.
- Revenue Sharing
In accordance with University policy, net revenues will be shared with the inventors/creators. Net revenues in this case are gross revenues less patent costs incurred by GMIP, Inc. or the University. In some cases, OTT or GMIP may agree with the inventors/creators to incur extraordinary marketing costs that also are deducted from gross revenues prior to distribution. All such agreements will be in writing.
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