Inventor FAQs

Technology transfer is the process of translating technologies out of the University and into the marketplace to generate a social and economic impact on the community. This process includes protecting the technology through intellectual property (IP) rights and licensing to third parties capable of transforming the inventions into new products that will benefit society. The Office of Technology Transfer (OTT) guides researchers and innovators through this process.

Intellectual property refers to creations of the mind that can be protected by law. Like any other type of property, intellectual property gives the creator and/or owner certain rights, e.g., the right to “exclude” others from using their property. Intellectual property has four main areas: patents, copyrights, trademarks, and trade secrets. Per the Boise State Intellectual Property Policy, IP created by Boise State employees belongs to the university, but the creators can still receive financial and non-financial benefits from the IP that they create.

Once you have an invention you believe has potential to be commercialized, contact OTT as soon as possible. Public disclosures, such as scientific presentations, publications, public use, or offers to sell, can negatively impact your ability to obtain patent rights. OTT can work with you to enable IP protection and allow you freedom to publish and present.

To disclose your work, you must submit an “Invention Disclosure Form,” to OTT. This form will highlight the main functions of your invention and its potential applications. OTT will respond within 2 business days confirming that your disclosure has been received and is being processed. Within 2 weeks, OTT will meet with you to discuss your newly disclosed innovation, and within 2 months, OTT will inform you of its decision on the next steps for your innovation.

Patenting your technology allows Boise State to protect it by being able to legally stop others from commercially using your invention. Having a patented technology adds value to your invention and could lead to potential licensing opportunities. The goal of protecting and commercializing your technology is to bring it into the marketplace, resulting in the further dissemination of your work and financial benefits.

A patent grants an exclusive right to an invention, meaning that Boise State can prevent or stop others from making, using, selling, importing, or distributing your technology without permission.

An inventor is any person who does the mental work of formulating an idea in their mind; in other words, they participate in the conception of at least one part of the invention.

A provisional patent application is a less expensive, simplified, and more flexible patent application. It provides the benefit of establishing an early effective filing date which does not affect the 20-year patent term. Compared to a non-provisional application, a provisional application will not be examined by the USPTO, will not be published, and does not need to have all the claims stated.

Provisional applications act as placeholders, allowing the inventor to continue to fully develop the technology until it is ready to be submitted as a non-provisional application.

A provisional patent application protects the invention for one year. The application will remain pending and unexamined until the applicant files a non-provisional application within that one year. If the applicant fails to do so, the invention will be unprotected after the one-year period ends.

It may take from 3-5+ years for the patent to be granted after filing the non-provisional application. The length can vary based on the area of the technology and patentability issues.

A granted patent will protect the invention for 20 years starting from the initial filing date of the non-provisional application.

After filing a patent application with the USPTO, a patent examiner will review the application and respond in what is called an “office action.” This written correspondence could be in the form of a restriction requirement (see below), a non-final office action, or a final office action. In this response, the patent examiner will explain why certain claims were rejected or allowed. It is common for the majority of the claims to be initially rejected. This is then followed by a response from the applicant to every objection and rejection.

A restriction requirement is a type of office action that rejects claims when they involve more than one invention. A patent can only be granted for ONE single invention. If the examiner believes that there are two or more inventions, the inventor will then have to make a decision and select one invention to proceed with examination. It is common for a patent application to have claims rejected for having more than one invention. Any rejected claims that were not selected can be later rejoined to this application or pursued on a separate application.

Oftentimes, two separate inventions are found when there is a method and a device within the same set of claims.

An assignment is the transfer of interest, rights, and title to a patent, from an assignor to an assignee. An inventor (assignor) may have a legal or contractual obligation to assign their rights to a certain institution such as a university or place of employment (assignee). You remain the inventor of the technology even if you transfer your ownership of it.

Under the terms of your employment agreement, Boise State University requires you, as the inventor, to transfer ownership of the patent application by signing an assignment document.

An inventor can only be an individual who participates in the conception of a subject matter claim of an invention. Anyone who has made additional contributions that do not involve the conception of the invention, such as participating in the creation of a prototype, gathering data, or supervising the project, is not considered an inventor.

An individual may be a joint inventor to the patent only if they contribute to the “conception” of at least one claim. Since inventorship is based on the conception of claims, as the prosecution proceeds and claims are amended or modified, inventorship may change.

Typically, the university commercializes intellectual property through one of two pathways.

• The first pathway is Industry Licensing. In this pathway, OTT will attempt to license the intellectual property to an existing entity (commercial or non-commercial partner) to further develop, productize, and sell/distribute a product or service based on the intellectual property created. OTT will market the IP and directly reach out to potential licensing partners to generate interest in the IP.
• The second pathway is Researcher-led Commercialization. In this pathway, someone on the research team who developed the intellectual property has entrepreneurial interest, and OTT licenses the intellectual property to a startup business (or non-profit) that the researcher creates. Within the researcher-led commercialization pathway, OTT can help with developing partnerships with existing business, identifying funding opportunities, navigating pitfalls such as conflict of interest, and connecting researchers with the business community.

OTT will actively market your technology for industry licensing opportunities and will request feedback from you on written marketing materials as well as insights you might have on specific companies that may be interested in your work. OTT may ask you to participate in discussions with a potential licensee to discuss the technical capabilities of your work.

After working with the OTT to protect your work, it is important to publish and present. This can generate commercial interest or potential research partnerships with commercial entities.

Yes, you are able to form a startup. Full-time faculty may engage in outside employment activities for one day per week during their contract period including working at a startup they are involved with. It is critical to update your Conflict of Interest/Commitment Disclosure form in InfoEd if you become involved in an external entity including a startup.

Boise State receives revenue from licensing agreements with external entities. This revenue is first used to pay back legal expenses associated with protecting the licensed intellectual property. 40% of the remaining revenue goes back to the inventor(s) of the intellectual property. The remaining 60% is used to further research and technology development efforts at Boise State.