Frequently Asked Questions
What is “Intellectual Property”?
“Intellectual Property” refers to intangible ownership rights in an invention or research product. It is the inevitable result of research and scholarship and can be protected under law by patent, copyright, trademark, or trade secret. The owner of a given piece of intellectual property has the right to control how it is used or distributed. The Boston College Intellectual Property Policy dictates when Boston College will own and control certain research intellectual property produced by faculty, staff, or students.
Who is an Inventor or Author?
An inventor is someone who has contributed intellectually to both the creation and development of a given invention. As courts have said: “making the invention requires conception and reduction to practice. While conception is the formation, in the mind of the inventor, of a definite and permanent idea of a complete and operative invention, reduction to practice requires that the claimed invention work for its intended purpose.” Patent inventorship is a matter of law and may be determined by patent attorneys at the time a patent is being prepared.
The author of a copyrighted work is the person who created the original expression, that is, the person who put an idea into tangible (often written) form.
How do I know if my discovery is an invention?
All researchers are encouraged to contact OTTL with any research that may solve a significant problem or have significant value, or any time they are considering transferring intellectual property to a third party.
What is a patent?
A patent is a government-issued right to stop another person from making, selling, or using an invention, or importing it into the US or another country. It is considered an incredibly valuable advantage to industry, because a patent (or an exclusive license to one) allows businesses to prevent competition and preserve market share.
Virtually anything that is new, useful, and nonobvious can be patented, so long as it is not a law of nature, scientific principle, or idea. That being said, the bar for novelty and nonobviousness is high and hard to overcome. Also, because the patent process is very expensive (the total cost for a domestic patent can be upwards of $100,000, and international patent prosecution costs can exceed even that), the University also considers the commercial potential of an invention when considering whether or not to pursue a patent. This can all be discussed in careful conversation with OTTL at the time an invention disclosure form is filed.
Who manages the patent application process at Boston College?
Boston College generally retains outside patent counsel to prosecute its patent applications, though some provisionals may be filed in house. Because the inventor is best positioned to argue the novelty and nonobviousness of the invention, the inventor is necessarily deeply involved in the process, often asked to review and comment upon draft claims and communications to the patent office. By signing the University Intellectual Property Agreement, inventors agree to provide all necessary support to OTTL during the patent prosecution process, which may continue after an inventor has left the institution.
Who manages the costs of the patent application process?
Boston College retains outside patent counsel and manages the services of these patent firms without charge to the inventor. OTTL generally assumes the upfront financial risk to obtain patent protection for its technology, but when a company options or licenses the technology, the company will be asked to take over payment of patent expenses and reimburse OTTL for any previously incurred costs associated with the preparation, filing, and maintenance of the licensed patents, sometimes on a deferred payment plan. When revenue is received from commercial license agreements, OTTL will deduct the balance of any outstanding patent expenses from that revenue before distributing.
What is copyright protection?
Copyright is the legal right to control certain aspects of an original work which is fixed in a tangible form of expression (e.g., writing, music, photography). It is an automatic right which exists at the moment a work is created and does not need to be applied for or officially granted, although you must register a work with the U.S. Copyright Office in order to pursue claims of infringement. Best practice is to always affix a proper copyright notice to your original work, citing the year(s) the work was made and the legal owner (you, as an individual, or The Trustees of Boston College)
Ownership of (or license to) a copyright allows you to:
- Reproduce the work
- Prepare derivative works based upon the work.
- Distribute copies of the work to third parties by sale, transfer, or license
- Perform or display the work publicly if it is a literary, musical, dramatic, choreographic work, motion picture or other audiovisual work.
Under the Boston College Intellectual Property Policy, the author retains ownership of most scholarly works (e.g., textbooks, refereed literature, dissertations, theses, papers, and journal articles) or works of artistic imagination (e.g., general nonfiction, poems, novels, and musical composition) unless they were produced with “Substantial Resources” or under a “work-for-hire” agreement. Per the Policy, “Substantial Resources” includes work with the Center for Digital Innovation in Learning or other University services, or other simultaneous or sequential contributions over time by numerous faculty, staff, or students. Accordingly, most websites created at the University are Boston College-owned, though a faculty member might own a particular piece of posted content. Any questions regarding the ownership of copyrighted materials should be directed to OTTL.
How do I represent a proper copyright notice?
All works which are University-owned must bear prominently the legend “© <year> Trustees of Boston College. All rights reserved.” Authors can use a similar notice to protect their individual rights in their own works.
Can I use third-party owned copyrights in my work?
The Boston College libraries has prepared a detailed guide discussing how to consider using third-party copyrighted works. Find that guide here.
What intellectual property protection is available for software?
Software code (both source code and executable code) is protected by copyright at the time of creation, and some software may also be patentable. In order to be patent eligible, software patent applications must meet certain technical requirements, and must be written very carefully. From a technical standpoint, your software may be patentable (1) if it improves computer functionality in some way (i.e. it enables certain computations that were previously unavailable, speeds up processes, or requires fewer resources), or (2) if it solves a computing challenge in an unconventional way. If you believe your software may be patentable, OTTL can work with you and outside counsel to consider potential claims.
As a copyrighted work, software and its associated user guides or manuals should always be clearly marked with a copyright notice and distributed under some sort of license agreement. Authors considering an open source license should talk with OTTL to discuss the parameters of common open source models, as well as to consider any obligations that might result from the incorporation of third party code into an original work.
What is tangible research property?
Tangible research property are research products that are not patented or otherwise protected by law, but that are difficult or expensive to create, such as: biological materials, engineering drawings, computer software, integrated circuit chips, computer databases, prototype devices, circuit diagrams, equipment and associated research data. OTTL can support the transfer of these items to third parties and license these materials to commercial entities with protective clauses for the university and royalty payments. The University’s Intellectual Property Policy follows a special revenue distribution scheme for material transfer agreements, such that inventors receive a greater percentage of royalties than for a patented invention or other work.
What is a trademark?
A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. Legally, a trademark allows you to use a word or phrase in connection with your goods and services, and to prevent others from using the same word or phrase in association with similar goods. The Boston College IP Policy does not address the ownership of faculty, staff, or student trademarks.
Can I use the Boston College trademark in my work?
The use of the Boston College trademark is governed by a specific policy on the Use of Boston College Indicia, which requires that any person (including inventors and authors) seeking to use the Boston College name or logo in commercial practice must obtain a specific license to do so. Inventors or authors seeking to promote their Boston College affiliation in commercial materials (i.e., pitch decks) should consult with OTTL.
Who owns the inventions and discoveries I create at Boston College?
Ownership depends on the resources that were used to develop an invention, as well as whether or not the invention was developed within the scope of University research or employment.
In general, per the Boston College Intellectual Property Policy, the University owns any invention which “results from activities related to an individual’s employment responsibilities or conducted with support, in whole or in part, from University-administered funds, facilities, or personnel, including student employees.”
Ownership of tangible research property generally resides with the University.
Also, “the University owns the copyright in any works created or developed through the use of Substantial Resources. These include any works to which there have been simultaneous or sequential contributions over time by numerous faculty, staff, or students.”
However, the Policy states that Boston College generally does not own “pedagogical, scholarly, or artistic works” such as “textbooks, refereed literature, and scholarly works created by students in the course of their education.” The Policy also states that it generally does not own works developed by students during design and innovation courses, unless required by the course sponsor. The word “generally” does, of course, mean there are exceptions.
Anyone with questions about the IP ownership should contact OTTL for support.
How can I find out if Boston College owns my intellectual property?
If ownership cannot clearly be determined by reference to the Intellectual Property Policy, inventors or authors with questions about the ownership of their intellectual property can contact OTTL. This will require a robust and documented conversation which details who contributed to the work and what University resources were used, including facilities and staff. Final determination of ownership will be made by the University Vice Provost for Research.
Who owns the data and results of my research?
It is highly likely that the University owns the data and results of your research, though there may be exceptions. As an academic, you are free to share the results of your research with your collaborators with some restrictions, taking into account the national security concerns that relate to international collaborations and certain technologies. (Direct any security questions to exportcontrol@bc.edu.) Any transfer to a commercial company or other non-academic party should only be done under a license or confidentiality agreement, and OTTL can help prepare that.
Who owns software created at Boston College?
Per the Intellectual Property Policy, software created under a specific grant or research program is owned by the University, and other works which are created over time from the contributions of numerous faculty, staff, or students or with the assistance of University offices (such as the Center for Digital Innovation in Learning) are also University owned. Because the Vice Provost for Research is responsible for making all determinations of copyright ownership, authors are encouraged to consult OTTL with regards to the ownership of their work.
Who owns the copyright on my course materials?
Most course materials are the original scholarship of faculty and so remain faculty owned, but the Boston College Intellectual Property Policy places special emphasis on the University’s obligation to steward these materials and states that “the University has a significant interest in protecting its right to determine the method and manner in which its educational programs and courses are offered to the public.” Accordingly, faculty are obligated to consult with their Dean and with the Provost to seek approval for the dissemination of course materials and are encouraged to contact OTTL for support.
Who owns the curriculum that I create?
Generally speaking, faculty own their own course materials, but the University takes special interest in websites and other electronic resources that may have been created with support of University resources such as the Office of Instructional Design or eTeaching Services, and those may be University-owned. Also, Boston College policy requires faculty to seek approval from the Provost and Provost’s Office for the distribution of course materials. Any questions about distributing course materials to third parties should be directed to OTTL.
Who owns the tangible research property created at Boston College?
Generally, tangible research property created during University research is owned by Boston College, and all transfers or exchanges of tangible research property should be managed in coordination with OTTL.
Who owns the inventions and discoveries I create while consulting?
Boston College does not claim ownership of inventions which are “unrelated to an individual’s employment responsibilities and...developed without University funds, resources, or facilities.” A proper consulting engagement avoids use of University resources, to avoid inserting the University into the consulting relationship. Accordingly, ownership of intellectual property developed during a consulting engagement will be determined by your consulting agreement.
Any faculty or staff member with concerns about the IP terms of a consulting agreement should reach out to OTTL for guidance on adhering to University policies.
What is an invention disclosure?
An invention disclosure is a written and signed statement that reports the inventors or authors and funders or supporters of a particular work or invention, and which details the work or technology with specificity. The invention disclosure form also asks inventors to think about potential commercialization or distribution partners as well as what work might be required to develop a technology into a commercially viable product.
The purpose of the invention disclosure is to allow OTTL to track obligations to funding partners and third parties, and also to track individuals and their departments for revenue distributions. In the case of a technology, the invention disclosure often allows OTTL to evaluate patentability.
Why does OTTL require an invention disclosure for my intellectual property?
Most research funding agreements obligate the University to report intellectual property that is developed during a scope of work, most notably the federal government, so the disclosure form is often a condition of funding. Also, OTTL is obligated to maintain a record of the University’s intellectual property assets, and a disclosure allows the office to do that and to give proper credit to the inventors and departments which supported the development of a particular piece of intellectual property. Finally, in the case of intellectual property which is going to be commercialized, the invention disclosure functions as an agreement among the inventors of how they will divide the revenues received from University license agreements.
When do I need to submit an invention disclosure?
As soon as possible. In the case of a potentially patentable invention, an invention disclosure should be submitted as soon as data is available, and well in advance of any public disclosure (manuscript submission, conference presentation, or other public display of the invention) to allow OTTL to seek maximum patent protection. Also, federal grants require Universities to disclose federally funded inventions within two months, and most other sponsored research agreements require prompt reporting of inventions.
In the case of a copyrightable work or other intellectual property, an invention disclosure should be submitted when you’re considering transferring the work to a third party, or beginning related conversations.
What is a public disclosure?
A public disclosure is any non-confidential communication about the details of your invention to a third party - such as a manuscript submission, poster presentation, conference talk, or even a non-confidential conversation - and it can jeopardize your ability to seek foreign patent protection. OTTL can help prepare confidentiality agreements to avoid public disclosure. Inventions should always be reported to OTTL well in advance of a public disclosure.
Can I publish the results of my research before I file an invention disclosure?
As an academic institution, the University’s primary aim is the publication of research and, per the University’s Intellectual Property Policy, “the right of employees to publish the results of research remains inviolate, subject only to the terms of a grant or [sponsored project agreement] funding the work.”. That being said, patent law prevents inventors from filing patent applications in most foreign jurisdictions if an invention was publicly disclosed before a patent application was filed. Therefore, OTTL, and the University’s Intellectual Property Policy, encourages inventors to submit an invention disclosure as early as possible before submitting a manuscript for publication.
Should I list contributors from another institution on my invention disclosure?
Each person who made a contribution to the conception and reduction to practice of an idea should be listed as an inventor. If a researcher from another institution made an inventive contribution, OTTL will work with that institution to determine how the institutions can partner to protect and license that invention. Be warned that the failure to properly credit inventors can be grounds to invalidate a patent.
What is an intellectual property (IP) license?
An IP license is a legal right to use or exploit any piece of IP - a patented invention, copyrighted work (protocol, intervention manual, teaching tool), software, tangible research property, confidential information, or related know-how. Any time a piece of IP is transferred from an owner to a user, a license and certain rights and obligations are impliedly granted, and best practice is to have those rights and obligations spelled out clearly. OTTL can help with that.
OTTL’s mission is to maximize the impact of Boston College’s researchers, which means that most transfers to other academic institutions or nonprofit organizations are done without cost (except to reimburse any costs actually incurred by Boston College in preparing the IP for license). In these cases, the license serves to protect the integrity of the IP and its creators, for example by requiring that the IP be used according to certain established practices and protocols, or imposing an obligation to give credit to Boston College in any publications relating to the IP. Transfers to industrial partners or commercial entities are generally done with cost, to credit the market value of the technology. Revenue received under these licenses is shared according to a formula determined by the University Intellectual Property Policy. Ask OTTL for more details.
What kinds of agreements is OTTL responsible for?
OTTL can support members of the University with any agreement related to the transfer, disclosure, or licensing of intellectual property or intellectual property ownership rights, which may include:
- Non-disclosure or confidentiality agreements
- Material Transfer Agreements
- Open Source Agreements
- Data Use Agreements
- Depository Agreements (materials depository)
- Joint Invention Agreements
- Option Agreements
- License Agreements (nonprofit, industry, or startup)
- Consulting Agreements (to consider conformity with Boston College Policies)
- Sponsored Research Agreements (intellectual property terms)
- Collaboration Agreements
- Consortium Membership Agreements
Can I transfer or license my tangible research property?
Transfer and licensing of tangible research property is encouraged, consistent with the University’s mission of disseminating the results of its research. In the case of a transfer to a commercial company, an MTA is always required to prevent the company from using your intellectual property in a product for sale without proper compensation to you and your lab. In the case of a transfer to an academic or other non-profit partner, an MTA is always necessary for human-derived, genetically modified, or hazardous materials. Otherwise, you should think carefully about whether an MTA can protect your interests.
If your answer to any of these questions is “yes,” consider contacting OTTL to prepare an MTA.
- Is the recipient a for-profit entity?
- Is the material human-derived, genetically modified, or hazardous
- Does the material require special protocols or handling?
- Do I want anything in exchange for the materials (other than shipping costs)?
- Is any component of the material proprietary and do I want it kept confidential?
- Am I preparing my own publication relating to the material?
- Could the results of recipient’s research be commercialized?
- Is any component of the material potentially patentable?
- Is any component of the material owned by a third party?
- Is the material currently licensed?
Can I deposit my tangible research property with a depository?
OTTL encourages the depositing of materials with third party providers, such as Addgene, for ease of distribution. OTTL can review and execute any related deposit agreements.
Can I distribute my software under an open source license?
Boston College encourages the free transfer of software to the academic community under open source license agreements, so long as the developed software is not encumbered by a sponsored research agreement or other restrictions. Authors who have incorporated third-party code into their own work should be particularly careful that an open source license does not run afoul of the conditions they agreed to when they obtained the code. OTTL can help with that and can also help authors consider which open source model might be most consistent with their goals.
What is know-how licensing?
“Know-how” is intellectual property which is not protected by patent or copyright, but which may be useful for the exploitation of another piece of IP. It could be details relating to experimental protocols, unpublished information, unfiled patents, source code, or research notes on software, for example. Know-how is often “licensed” to third parties under consulting arrangements or other collaborative partnerships, where an inventor or author can directly share their knowledge with a research partner. Otherwise, OTTL can license unpatented know-how together with a licensed patent, software, or tangible research property to a commercial partner, potentially bringing greater revenue return to the University.
Can I license my curriculum to a third party?
Per the University’s Intellectual Property Policy, “the University has a vital interest in how course materials, including recordings of course lectures, are disseminated. Even in those situations in which Substantial Resources are not used or when an individual faculty member or a department has developed a course or participated in its development, the University has a significant interest in protecting its right to determine the method and manner in which its educational programs and courses are offered to the public.” Accordingly, prior to making any course materials available to the general public or to a third party for the purpose of making the material available outside the University, faculty members should consult with OTTL for further conversations with the appropriate Dean and with the Provost.
Generally speaking, course materials made with the support of Office of Instructional Design or eTeaching Services may be University-owned and any potential transfer of these materials should be brought to OTTL for review.
How do I partner with Boston college to license intellectual property?
OTTL is committed to maximizing the potential impact of Boston College research through the licensing of its intellectual property and research results. Anyone with interest in the products of Boston College research can contact OTTL to initiate discussions relating to available intellectual property or for further conversation with inventors and authors.
What are the typical terms of an intellectual property license?
Boston College is a signatory to the “Nine Points to Consider in Licensing University Technology,” a document endorsed by the Association of University Technology Managers which lays out best practices for licensing University intellectual property. That document gives a good overview of the basic principles that we’ll bring to the table. Beyond that, interested licensees should be familiar with the constraints dictated by the Bayh-Dole Act, which impact the licensing of any intellectual property produced with federal funds.
Any intellectual property license will protect the rights for Boston College and other non-profit institutions to continue to conduct research with the licensed intellectual property.
Generally speaking, licenses with academic institutions and nonprofit organizations are done to maximize impact, and seek only to reimburse the University for any costs it might incur in preparing the materials for license. Boston College will otherwise seek a fair reward for any technology which is used in development or successfully introduced into a commercial product. Also, consistent with its mission to maximize impact, all commercial license agreements will include an obligation to diligently exploit the licensed intellectual property, often by the inclusion of milestone obligations and annual fees designed to prevent companies from using University intellectual property to merely create a defensive position.
Can we use the Boston College name and logo on our website?
Partners seeking to use the Boston College trademarks on their own materials, to advertise a collaboration with Boston College or otherwise, can do so consistent with the terms of their license agreement. The Boston College trademarks must not in any way be used as a direct or implied endorsement of a product or service, and cannot be used without a signed agreement. Any questions regarding the use of Boston College trademarks should be directed to OTTL.
How do I partner with Boston College to sponsor research?
Companies or organizations interested in partnering with Boston College research teams are encouraged to contact OTTL or the Office of Sponsored Programs for a confidentiality agreement, if one is needed for discussions, or otherwise to reach out to faculty directly.
How do I partner with Boston College to sponsor a design innovation course?
Companies or organizations interested in supporting the education of Boston College engineering students should contact OTTL to initiate discussions with the Schiller Institute for Integrated Science and Society.
What is a Boston College startup?
A Boston College startup is a company built on university-owned assets that arise from internally and externally-funded research projects and core operations, such as patents, copyrights, software, and technical information.
Why create a startup company?
Oftentimes, inventors themselves are the ones best positioned to translate research results into an actual commercializable product, as they know the most about how the technology works and have visions for its development. Students or postdoctoral researchers seeking to launch a startup based on their research are well-placed to make full use of the ready-made professional network that the Boston College staff and alumni network can provide. Faculty seeking to build a startup around their own work may have a harder time, as running a company full time necessarily conflicts with their academic commitments, but they can find a role as a scientific advisor or board member while managing potential conflicts of interest and find a trusted c-level executive from the Boston College student and postdoctoral community.
How can I obtain a license to Boston College intellectual property for my startup?
A license or other legal right is required to develop and commercialize a Boston College-owned technology outside of the lab. Once an invention has been disclosed to OTTL, the office can begin discussions with inventors or other entrepreneurs about potential licensing opportunities. Early entrepreneurs may consider taking an option to the technology, which can preserve the right to negotiate a license to the technology for a time when business plans and funding prospects might be more developed.
How much time can I spend working for the startup outside of the University?
For all Boston College members, academic and research responsibilities to the University must take precedence over extracurricular entrepreneurship. The faculty statutes grant faculty the right to engage in outside professional activities up to one day a week, although “for any work of a continuing or regular nature, annual approval by the Provost is required.”
Can I consult for a University startup?
The faculty statutes grant faculty the right to engage in outside professional activities (i.e., consulting) up to one day a week, although “for any work of a continuing or regular nature, annual approval by the Provost is required.” Faculty seeking to consult for a University startup must consider the potential conflict of interest issues posed by this consulting work, through conversations with the Office of the Vice Provost for Research.
What is a conflict of interest?
A “Conflict of Interest,” as defined by the University Conflict of Interest Policy, could be a Personal Conflict of Interest (involving a family member in research), a Business Interest (holding a board seat or other advisory position), or a Significant Financial Interest (receiving something of value from an entity whose interests are related to the faculty member’s Institutional Responsibilities). Conflicts of Interest often arise when an investigator enters into a formal relationship with a University licensee, and these issues should be carefully addressed with members of the Office of the Vice Provost for Research. OTTL can help.