VCU Intellectual Property Policy

The VCU Intellectual Property Policy is the relevant policy for IP at VCU. The VCU IP Policy defines Intellectual property as: Intellectual Property is any new and useful process, machine, composition of matter, article of manufacture, software, or any original work of Authorship subject to Copyright protection.

Inventions solve problems. If you have solved a problem during the course of your work, or your research has yielded a new way to solve a problem, you may have created an invention.

Generally speaking, VCU owns the inventions developed by employees, and non-employees who enjoy Significant Use of University Resources during the inventive process. In many cases, inventions developed by students are owned by students but there are exceptions. Sponsored research agreements and grant funding may also have different ownership conditions. The VCU IP Policy explains these nuances in detail, and more. As the policy makes clear, you are strongly encouraged to contact the VCU Office of Research and Innovation early and often with questions.
VCU shares with inventors the net revenues generated by your intellectual property. Net revenues are shared as follows:

The University is to pay semi-annually forty percent (40%) to the Contributor(s), or their heirs, successors, or assignees, ten percent (10%) to the Contributor’s department(s), and ten (10%) percent to the Contributor’s school(s) of the net revenues received by the University.

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Research and intellectual property

The technology transfer process moves scientific discoveries and the fruits of research from the laboratory to the public. This process serves the public by improving lives. Experience has demonstrated that the fastest and most effective way to transfer technology to the public is through commercialization. The commercialization process is costly and does take time, so it is generally effective to provide a time-limited monopoly for intellectual property so that there sufficient time and incentive to allow for commercialization. In recognition of this need for a limited monopoly, the United States Constitution (Art. I, Sec. 8) in the “patent and copyright clause” grants that:

"Congress shall have power … to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."

The United States Patent and Trademark Office (USPTO), an agency of the Department of Commerce, is responsible for managing patents and trademarks in the US. Patents (for useful inventions, designs, and plants) and trademarks (names used in commerce) are two types of intellectual property protection; copyrights are a third type and are managed by the US Copyright Office.

You play the determining role in technology transfer by recognizing the potential of your work to improve the lives of the public, the commercial potential of your work, and by participating in the process of protecting it. The VCU TechTransfer and Ventures is your partner who provides educational, business, and marketing resources to help your invention reach the public. The participation of inventors is absolutely crucial to the technology transfer process because no one knows the invention or problem area as well as the inventor; inventions without enthusiastic inventors are far less valuable to potential licensees.

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When to contact VCU TechTransfer and Ventures

The earlier you engage and develop a relationship with the VCU TechTransfer and Ventures, the greater the value the VCUTechTransfer and Ventures can provide to you.  With a good working relationship, we can more quickly serve you and we can help you to develop working relationships with groups that may be interested in licensing your IP.  Your relationship with the VCU TechTransfer and Ventures enhances the value of your IP!

The invention disclosure is an early step in the technology transfer process, but it is not the only step.  If your invention is a good candidate for patent protection, your assistance will be needed during the patent prosecution process.  Your assistance will also be needed to accurately market the invention to potential licensees.

At minimum, you must contact the VCU TechTransfer and Ventures before:

• submitting your work for publication review (manuscript, abstract, poster)
• presenting at seminars and conferences (abstracts, poster presentations, short talks, etc.)
• discussing your work with collaborators from other universities
• discussing your work with industry partners and collaborators

The VCU TechTransfer and Ventures needs to take appropriate steps to protect your inventions before they are publicly disclosed, or patent rights may be lost. Without proper patent protection, no industry partner will be interested in your discovery or invest the resources needed to bring it to market the commercial value of your intellectual property is significantly diminished and it will be unlikely for it to reach the public.

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Laboratory notebooks and intellectual property

A lab notebook is an integral part of a professional research program and provides legal evidence of the conception and development of an invention. VCU owns the notebooks generated by VCU members. A good laboratory notebook may also help a patent attorney determine inventorship of the invention in the event that inventorship becomes disputed.

A good laboratory notebook is witnessed, permanently bound, page-numbered, and written in permanent ink. Electronic records (Electronic Laboratory Notebooks, ELNs) must comply with specific regulatory requirements to qualify as good laboratory notebooks. Do not assume that an electronic product, even if marketed as an ELN, is qualified as a good laboratory notebook.

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Preparing the invention disclosure

You can find an invention disclosure form here.

• Always submit a disclosure before submitting a scientific paper or an abstract to a publisher. If you are working under a submission deadline, you must let us know so that we can plan accordingly.
• Complete this disclosure thoroughly and in detail.
• This disclosure requires signatures of all inventor(s) and the appropriate administrative personnel.
• It is helpful to include the latest draft of any publications or presentations related to the disclosure.
• We will review the disclosure in its entirety and make a preliminary decision about ownership and the invention’s commercial value and patentability.

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Technology assessment

Following receipt of an invention disclosure and other required, the disclosure is assigned to a licensing associate. Your licensing associate is your point of contact in the VCU TechTransfer and Ventures. They will review the disclosure and as part of the process may meet with you to solicit more detailed information about the invention.

The patentability and the commercial potential of your invention are considered in the disclosure review. The patentability assessment will estimate the probability of getting a patent to issue and what the likely patent claims could be.

Broader patent claims are more desirable and are more valuable. The commercial potential assessment helps determine the size of the market for the invention, the market need for new technologies, the regulatory, how accepting the market is to new technologies, and the development state of the technology (Technology Readiness Level, TRL). Altogether, this analysis estimates the possible value of a patent and the potential commercial market for products based on the invention.

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Marketing your invention

After filing a provisional application, the licensing associate begins to market the technology to potential licensees. We have several resources at our disposal to locate likely licensees, however input from the inventors is always welcomed for successful commercialization of the invention.

A non-confidential summary is sent to companies that are likely to be interested. If a company expresses interest, it will be asked to sign a confidentiality agreement (to protect patent rights) prior to receiving confidential information during detailed discussions. If the company continues to be interested, an option or license agreement with the company is negotiated.

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Licensing your invention

The two major factors determining the licensing decision are: (1) what kind of licensing is most likely to lead to rapid commercialization; and (2) what kind of licensing is in the public interest. It is standard for VCU to transfer intellectual property through royalty-bearing licenses, rather than patent title assignment. By maintaining control of its patents, the university allows commercial use and reserves the rights for educational, research, and other internal purposes.

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Commercializing your invention

After an option or license agreement is executed, VCU TechTransfer and Ventures will continue to work with the company to ensure that company is diligently commercializing the discovery and is paying all monies due to the University. VCU TechTransfer and Ventures requires that licensees be active in their efforts to commercialize licensed technologies. Any revenues received from licensing are shared according to the VCU Intellectual Property Policy as follows:

• 40 percent to the inventor(s)
• 40 percent to the VCU Intellectual Property Foundation (VCU-IPF), the foundation that maintains university IP
• 10 percent to the inventor’s department
• 10 percent to the inventor’s school

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Hold for further development or return to inventors

Some inventions disclosed to VCU TechTransfer and Ventures are not yet ready for marketing. These inventions will be held by our office and we will ask that the inventors keep us informed of progress in developing the invention. Once further developed, we may then initiate a marketing effort.

In cases where there is insufficient commercial interest or cases where the projected market size is insufficient to justify the expenses of commercialization, VCU TechTransfer and Ventures may return the invention to its inventors. If the invention came about using federal funding, a form must be completed and submitted to the funding agency by the inventor(s) in order to have the invention released by the government. Generally, this return is made at such time that the inventors would have enough time to file a patent on their own.

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