Frequently Asked Questions about Intellectual Property at NAU

This document provides an informal explanation of some of the issues concerning intellectual property (IP) created at NAU by faculty, staff, students, and others utilizing university resources.  This document does not cover all issues of IP ownership nor all related processes.  Please refer to Arizona Board of Regents (ABOR or “the Board”) Policy 6-908, Intellectual Property, for the complete, formal policies that govern the ownership and management of intellectual property at NAU.  Definitions of terms used within this FAQ can be found at the back of the Board policy document.  

What is Intellectual Property?
For the purpose of understanding university policy, Intellectual Property (IP) refers to creationsof the mind (such as methods, compositions of matter, processes, inventions, literary and creative works, symbols, names, images and designs) that are eligible for legal protection under U.S. copyright, patent and trademark law and under state trade secret laws.  The definition of IP under ABOR policy includes supporting technology or know-how associated with legally-recognized intellectual property as well as “tangible research property such as research tools, prototypes and records used or produced in the course of university research projects”.
Who owns IP created at NAU?
Generally speaking, the Board claims ownership of all IP created by (a) NAU employees in the course and scope of their university employment, and (b) NAU employees and others who create IP through the significant use of Board or university Resources.  While there are some copyrightable works in which the Board does not claim an ownership interest—i.e., “Scholarly works” and “Student created works”—the ownership of these works may still vest in the Board because of applicable State or Federal law.  In such cases, upon written request by the creator(s) of such copyrightable works, the IP Official will assign ownership rights to the creator(s) subject to retention of a paid-up, royalty-free,  non-exclusive license to use the works for non-commercial purposes and agreement by the creator(s) not to use the Board’s or university’s name in any commercial context involving the works.
Who owns IP created under a sponsored project?

Intellectual property created by NAU employees, students and others as a result of work supported by a sponsored project (grant or contract) is owned by the Board unless the sponsored project agreement specifically grants ownership to the Sponsor or another party. 

 The Principal Investigator is responsible for notifying all persons involved in a sponsored project—on advance of the creation of any IP—that the sponsored project agreement grants IP rights to the university, to the sponsor, or to another party, whichever applies.

Who owns instructional materials developed by Faculty?

U.S. Copyright Law states:

“In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.”

 Under Board IP policy, however, the Board recognizes that it is not necessarily in the best interests of the University's academic mission for the Board to own the intellectual property in all such works.  For that reason, IP Policy provides for the release (to the individual creator/author) of the copyright to Scholarly works, subject in all cases to (i) Sponsors’ contractual rights and (ii) the Board’s retention of a non-exclusive, paid-up license to use the intellectual property in the University’s educational, research and public service mission.

 When an employee wishes to obtain ownership rights to Scholarly works, the employee must submit a request in writing (i.e., e-mail) to the Campus IP Official, who shallconfirm in writing expeditiously (not later than thirty [30] days after such request), the employee’s rights in the Scholarly work.  If the Campus IP Official does not respond within thirty [30] days, the rights shall be deemed to have vested in the employee upon creation of the Scholarly work.

What about IP created by Students?

Ownership of IP created by NAU students can be a complex issue!  However, generally speaking, the Board does not claim an ownership interest in “Student-created works”.  Dissertations and theses are considered “Student-created works”.  However, the following types of IP are not considered “Student-created works”

  • Works created by a student within the course and scope of employment as an employee of the university;
  • Works created with significant use of Board or university resources; and,
  • Works created by the student under a sponsored project if the agreement that governs the project provides either party to the agreement (the university or sponsor) IP ownership rights.

Students and faculty are strongly encouraged to contact the NAU IP Official for a formal ownership determination in any case where ownership of student-created IP is an issue.

How does the university’s IP policy apply to IP created by unpaid (non-employee) Visiting Scholars, Emeritus or Adjunct employees, or Volunteers?
The Board claims ownership of IP created with the Significant use of Board or university resources, regardless of who creates it.
How does the university’s ownership of IP created by its employees benefit NAU employees?
Intellectual property developed by NAU employees and owned by the Board imposes no development costs on the employee.  The university covers the cost of obtaining legal protection, which can be substantial.  Furthermore, if the university licenses the IP to a third party and receives revenue from that third party under the license, the creator(s) of the IP will receive 50% of the Net Income generated under the license.
What should I do if I (think I) have created intellectual property?

NAU employees and others who have created IP in the course and scope of employment and/or with the significant use of Board or university resources are required to promptly disclose the creation of the IP.   Disclosure must occur:

    1. Prior to any discussions with or actions involving any third party (i.e., anyone not employed by NAU, including collaborators at other institutions); or
    2. Prior to any presentation (at NAU or beyond) or publication (including web-based) of the IP;
    3. As required by any sponsored research agreement or material transfer agreement applicable to such IP; and,
    4. Upon request by the IP Official or designee.

 At NAU, disclosure of IP is achieved online only, at nau.edu/nauinnovations.  Click on “Submit an invention disclosure” and follow the directions.  If you have any questions about how to submit an invention disclosure, contact NAU Innovations at 928.523.5311 or nauinnovations@nau.edu.

What is a patent?
A U.S. patent is a grant of legal right by the U.S. government.  A patent grants the right to the patent holder to exclude others from making, selling or using (also referred to as “practicing”) the patented invention. 
What can be patented?
Compositions of matter, processes, methods (including business methods), devices, objects, and, in some cases, computer programs can be patented.  New plant varieties can be patented, and designs can also be patented. 
Am I required to disclose IP if it’s not patentable?

The determination of whether or not IP is not patentable is ultimately made by the patent examiner and preliminarily by NAU Innovations; therefore, employees must disclose IP even if they do not believe it is patentable.  It’s important to keep in mind that the Board reserves for itself the right to determine:  (a) if the IP is eligible for legal protection (i.e., is it patentable), and (b) if the Board has an ownership interest in the intellectual property.  The creators of IP do not have authority under Board policy to make these determinations.  Therefore,

When in doubt, disclose!

While NAU employees and others who have created IP with the significant use of Board or university resources are required to promptly disclose the creation of any IP in which the Board may claim an ownership interest, in practice NAU does not require individuals to disclose works of authorship, such as scholarly articles, book chapters, on-line materials and the like, (unless the individual wishes to request assignment of ownership as described above). 

Remember:  IP does not have to be patentable in order for the Board to claim an ownership interest under ABOR IP Policy (see “What is IP?” above). 

How are patents obtained and how long does it take?

The University applies for patents through an outside patent attorney.  NAU Innovations staff work with the inventors to obtain detailed information about the invention, which is then forwarded to the patent attorney who will also interact with the inventors to fine-tune the information, format the information appropriately (i.e., write “claims”), determine whose contributions to the development of the claims rise to the level of “inventorship” (under U.S. Patent Law), and file the final application.  Generally speaking, the process is as follows:

  1. patent applications are filed with patent offices (U.S. and regional or national offices overseas),
  2. the applications are “examined”,
  3. the university (through its patent counsel) responds to the patent examiners concerns and objections to the claims, and
  4. once the patent examiner has no further objections,  the claims that have survived to this stage will be included in an issued patent.

The length of time it takes to get a patent depends upon a number of factors. The university makes decisions regarding when to file and what type of application to file (e.g., provisional. U.S. Utility and/or PCT) based on a number of factors, such as the stage of development of the invention (i.e., do the inventors need more time to perfect the invention), whether or not the invention will likely be commercialized in other countries, whether or not a licensee has been identified (and when), etc.  A patent application can be fast-tracked or we may need to take our time—it all depends on the nature of the invention.  It can take anywhere from 2 to 8 years!

What is a provisional patent?
There is no such thing as a provisional patent!  A provisional patent application is often filed by the University in order to protect intellectual property that has not been fully developed or to protect IP when a publication or presentation by one of the inventors is imminent.  A patent never results from these applications.  Instead, a provisional patent application establishes the “priority date”—the date considered the official date that the invention was filed.  In the U.S., the first person to file a patent application—all other things being equal—is eligible to receive the patent (not necessarily the first person to create the invention).  This makes the priority date important if inventors believe that another researcher working in the same area is close to making the same discovery.
Where can I find out more information about IP at NAU?

Visit nau.edu/nauinnovations or contact:

IP Official:  Lesley Cephas, Director, NAU Innovations, 928.523.8288 or lesley.cephas@nau.edu           

 Dr. Tim Vail, Associate, NAU Innovations, 928.523.5311 or timothy.vail@nau.edu