Who is eligible to disclose an invention to TCO and to use TCO's services?
Any employee or student of the University of South Carolina may disclose an invention to TCO.
What type of subject matter can be patented?
Patentable subject matter includes processes, machines, compositions of matter, articles, some computer programs, and methods (including methods of making compositions, methods of making articles, methods of using devices or compounds, etc.)
Can I patent a naturally occurring substance?
Generally, no. A natural substance that has never before been isolated or known may be patentable in some instances, but only in its isolated form (since the isolated form had never been known before). A variation of a naturally occurring substance may be patentable if an inventor is able to demonstrate substantial non-obvious modifications that offer advantages of using the variant.
What is the definition of an inventor on a patent and who determines this?
Under U.S. law, an inventor is a person who takes part in the conception of the ideas in the patent claims of a patent application. Thus, inventorship of a patent application may change as the patent claims are changed during prosecution of the application. An employer or person who only furnishes money to build or practice an invention is not an inventor. Inventorship is a legal issue and may require an intricate legal determination by the patent attorney prosecuting the application.
What if I created the invention with someone from another institution or company?
If you created the invention under a sponsored research or consulting agreement with a company, we will need to review that contract to determine ownership and other rights associated with the contract and to determine the appropriate next steps. Should the technology be jointly owned with another academic institution, we will usually enter into an inter-institutional agreement that provides for one of the institutions to take the lead in protecting and licensing the invention, sharing of expenses associated with the patenting process and allocating any licensing revenues. If the technology is jointly owned with another company, we will work with the company to determine the appropriate patenting and licensing strategy.
Who is responsible for patenting?
We contract with outside patent counsel for IP protection, thus assuring access to patent specialists in diverse technology areas. Inventors work with the patent counsel in drafting the patent applications and responses to patent offices.
Who decides if a patent application will be filed for my invention?
Our team will work with the inventor(s) to consider relevant factors in making recommendations about filing patent applications. Based on a recommendations from our licensing specialists, we will ultimately make the final decision as to whether to file a patent application or seek another form of protection.
Does your office file patent applications in countries other than the United States?
Our patent counsel will explore filing in foreign countries if there is a significant market or licensee in that country.
What are the costs of patenting an invention, and who is responsibly for paying?
Filing a regular U.S. patent application may cost between $10,000 and $20,000. To obtain an issued patent may require an additional $10,000 to $15,000 for patent prosecution. Filing and obtaining issued patents in other countries may cost $20,000 or more per country. Also, once a patent is issued in the U.S or in foreign countries, certain maintenance fees are required to keep the patent alive. USC covers all the costs of patenting an invention.
If I publish a paper or make a presentation on my technology at a meeting, will my invention still be patentable?
Publishing, presenting, or otherwise publicly disclosing your invention may negatively affect the patents rights immediately, and all U.S. patent rights are lost one year after a public disclosure. Most foreign countries have no grace period; that is, publication (or any form of public disclosure) of your invention immediately bars you from obtaining foreign patent rights. Therefore, it is best to file a patent application a public presentation. TCO can work with you to have a provisional patent application quickly so that you may make your presentation while preserving patent rights.
Am I required to sign a confidentiality agreement to learn about USC technologies?
There are different degrees of public information available for each technology. For some, we can provide you with published papers and patents that describe the concepts involved in great detail. For others, the only non-confidential information we may have is a brief description of the technology available through our technology portal. Our business development manager will be able to speak most freely with you if you've signed a confidentiality agreement with us.
Are USC technologies ready for the market?
USC inventions cover a broad spectrum ranging from conceptual design to patented working prototypes. Some of the technologies we have available for licensing may be ready for commercial use today, but most require that the licensing company bear the responsibility of bringing them to market.
How much does it cost to license a technology from TCO?
We look at a number of factors when negotiating a license, but the main consideration is the value that the technology offers. TCO works with licensees to develop terms that are fair to all parties. Our goal is to rapidly commercialize the technology for the benefit of you and the university and in the public interest. Our licenses include a variety of creative terms tailored to fit your particular circumstances.
Licensing a USC technology typically involves three expenses: a license fee, patent reimbursement costs and royalties. The license fee and the patent reimbursement costs are upfront fees, while royalties are due when a product is commercialized and sold. Because each technology has a different market value, the exact dollar amounts of these costs are negotiated with TCO.
What does TCO look for when selecting a company to license its technology?
We want licensees who have the resources, technical expertise, and management skills required to quickly build a sustainable commercial success out of new technology.
My company would like to sponsor research on campus. How do we make this arrangement?
Industry-sponsored research at USC typically involves a research agreement between the university and the sponsoring company, which defines the scope of the project. It also defines the licensing rights of the company to any intellectual property that may emerge from the sponsored research.
Will TCO assist in the formation of my company?
We will work with you to file the administrative paperwork and connect you to resources to entrepreneurial resources within our economic ecosystem.
Are inventors involved in the licensing process?
The inventors are involved in the licensing process. We will work with you and your team to ensure the best possible terms to set your company up for success.
What happens after my startup is formed and the license agreement is signed?
The Office of Economic Engagement, in concert with numerous organizations designed to help you succeed, will work with you to support your entrepreneurial venture and provide valuable resources from classes to networking opportunities.
As a faculty/staff member, will I be able to start my own company and continue my position at USC?
Yes. However, the university will not release you from your university commitments, teaching and/or research duties, simply because you start a company. Remember, running a company requires considerable effort and time and establishing a company takes even more time and effort. Being involved in a startup also presents unique conflicts which must be disclosed and managed by the inventors and the university. We will discuss these issues in detail with you when you are considering a startup.
If you have particular question or concern that is not addressed in our FAQs, connect with us directly via our online contact form or by phone or e-mail.