Innovation Partnership Services Office

Definitions

An Invention is any new article, machine, composition or process or new use developed by a human.

An invention Disclosure is a written record of a complete description of the invention and how it is made and used containing sufficient detail to permit a skilled reader to duplicate the invention and to describe the basic nature of the invention to an inexperienced reader. The essential elements of a disclosure are a complete description of the invention, the inventor’s dated signature, and dated signature of witnesses who fully understand the invention.

A disclosure serves three different purposes:

  1. Serves as a vehicle for communication to Office of Innovation Commercialization to describe the invention (to initiate the evaluation process), and (for recommendations on ownership, patenting and licensing actions).
  2. Provides preliminary information to patent attorneys for a patent search and forms the basis of the patent application.
  3. Serves as a witnessed invention record to help establish date of conception and/or reduction to practice in the event of a patent interference action. Witnesses serve to corroborate the inventor in case of a patent interference action; the use of more than one person as a witness will be available if needed at a later date.

A U.S. Patent for an invention is the grant of a property right to the inventor(s), issued by the U.S. Patent and Trademark Office. A patent permits its owner to exclude members of the public from making, using, or selling the claimed invention. Most countries of the world have patent systems, although the patent terms and types of patents vary.

There are 3 major types of patents:

  1. Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof.
  2. Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.
  3. Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

A Patent Application is a set of papers that describe an invention and that are suitable for filing in a patent office in order to apply for a patent on the invention.

Trademark (Service Mark) is any symbol, such as a word, number, picture, or design, used by manufacturers or merchants to identify their own goods and distinguish them from goods made or sold by others.

Copyright is given to an author, artist, composer or programmer to exclude others from publishing or copyrighting literary, dramatic, musical, artistic or software works.

The type of works that copyright protects are:

  1. original literary works, e.g. novels, instruction manuals, computer programs, lyrics for songs, articles in newspapers, some types of databases, but not names or titles
  2. original dramatic works, including works of dance or mime
  3. original musical works
  4. original artistic works, e.g. paintings, engravings, photographs, sculptures, collages, works of architecture, technical drawings, diagrams, maps, logos
  5. published editions of works, i.e. the typographical arrangement of a publication
  6. sound recordings, which may be recordings on any medium, e.g. tape or compact disc, and may be recordings of other copyright works, e.g. musical or literary
  7. films, including videos
  8. broadcasts and cable programs

So the above works are protected by copyright, regardless of the medium in which they exist and this includes the internet. You should also note that copyright does not protect ideas. It protects the way the idea is expressed in a piece of work, but it does not protect the idea itself.

There are five exclusive rights authors obtain with copyright protection:

  • the right to reproduce the work
  • the right to prepare derivative works based on the original
  • the right to distribute copies to the public
  • the right to perform the work publicly
  • the right to display the work publicly

Copyrightable Distance Learning Materials

Copyrightable Instructional materials (print materials such as books, texts, glossaries, bibliographies, study guides, laboratory manuals, syllabi) and material performed or intended for performance such as lectures, musical or dramatic compositions and scripts; or visual materials such as films, filmstrips, slides, charts, and transparencies. Video and audio recording of presentation, programs or performances; programmed instructional materials and computer programs; computer software and on-line and web-based courses and education multimedia projects incorporating various copyrighted media formats (i.e., motion media, music, text material, graphics, illustration, photographs and digital software) which combined into a integrated presentation and developed for delivery via the distance education mechanism at a particular institution. Joint Ownership of right to offer commercial licenses and make derivative works.

An Intellectual property is any product of the human intellect that is unique, novel, and unobvious such as:

  • an idea
  • invention
  • expression or literary creation
  • unique name
  • business method
  • industrial process
  • chemical formula
  • computer program process
  • presentation

Intellectual property has some value in the marketplace, and it can be reduced to tangible form, such as a computer, a process a chemical etc.

CONFIDENTIALITY

Due to Public Record Law, agreements to confidentiality must be made in a way that is consistent with NC Public Records Act G.S. 132. The marketing requirements are necessary so employees know what information to treat as confidential. It would be too burdensome to keep track of random information that is not easily recognizable as confidential.

Perpetual confidentiality agreements: The expiration of confidentiality restrictions must be limited due to the University setting. The University cannot keep track of students once they have matriculated or left the University.

EXPORT CONTROL REGULATIONS

Due to export control regulations, the University cannot agree to withhold publication. However, the University can agree to delay publication for 60-90 days in order for intellectual property issues to be addressed.

ASSIGNMENT

An assignment is a transfer of rights to a third party. Assignments are dangerous for the University because they may interfere with the exclusive emoluments clause of the NC constitution by privileging a party to public funds without consideration. Furthermore, assignments may interfere with the duties owed to the University.

INTELLECTUAL PROPERTY OWNERSHIP

The Tax Reform Act of 1986 requires that the University owns patents developed by University personnel using University resources or results from use of facilities built or renovated with tax- exempt bond proceeds. The tax exempt status of the bonds is lost if the facilities are used for private rather than public research. While the patents are owned by the University, the University can license those patents out. The Bayh-Dole Act prohibits the University from assigning its rights to any third party without the approval of the federal agency funding the research.

LIABILITY/ LIMITATION OF DAMAGES/ INDEMNIFICATION

Under the North Carolina Tort Claims Act, (NC Gen. Stat. 143-291), a public University cannot waive the State’s governmental immunity and assume liability for actions not covered under the act. Only the General Assembly has the authority to go beyond the scope of the NC Tort Claims Act. The University is not allowed to purchase liability insurance to cover an indemnity promise. An indemnity clause would be against public policy conveyed by the NC constitution.

FORUM SELECTION PROVISIONS

Forum Selection Provisions are not allowed under NC Stat. 22B-3. The statue holds that such contracts are void and unenforceable.

SOVEREIGN IMMUNITY

The University, as a state agency, cannot agree to “choice of law” clauses requiring the University to consent to litigation in a jurisdiction other than North Carolina. Choice of law clauses are prohibited under NC Gen. Stat. 22B-3. These clauses interfere with the Attorney General’s exclusive duty to defend the University, and they also go beyond the scope of the waiver of sovereign immunity.