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?
Who owns instructional materials developed by Faculty?
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.
What about IP created by Students?
“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  days after such request), the employee’s rights in the Scholarly
work. If the Campus IP Official does not respond within thirty  days,
the rights shall be deemed to have vested in the employee upon creation of the
How does the university’s IP policy apply to IP created by unpaid (non-employee) Visiting Scholars, Emeritus or Adjunct employees, or Volunteers?
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
- 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.
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?
What is a patent?
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:
to any discussions with or actions involving any third party (i.e.,
anyone not employed by NAU, including collaborators at other
to any presentation (at NAU or beyond) or publication (including
web-based) of the IP;
required by any sponsored research agreement or material transfer
agreement applicable to such IP; and,
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 firstname.lastname@example.org.
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?
How are patents obtained and how long does it take?
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
What is a provisional patent?
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:
applications are filed with patent offices (U.S. and regional or national
applications are “examined”,
- the university
(through its patent counsel) responds to the patent examiners concerns and
objections to the claims, and
- 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!
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?