Intellectual property FAQs

Arizona Board of Regents Policy 6-908 governs intellectual property developed 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 still lie with the board due to applicable state or federal law.

In such cases, upon written request by the creator(s) of such copyrightable works, NAU Innovations 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 or university’s name in any commercial context involving the works.

Intellectual property created by NAU employees 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.

Congressional interest in facilitating US technological innovation led to the passage of P.L. 96-517, Amendments to the Patent and Trademark Act, commonly referred to as the “Bayh-Dole Act” after its two main sponsors, former Senators Robert Dole and Birch Bayh.

Under this 1980 law, as amended, title to inventions made with government support may be provided to the contractor if that contractor is a small business, a university, or other non-profit institution. The legislation is intended to use patent ownership as an incentive for private sector development and commercialization of federally-funded research and development.

As a response to congressional efforts to create a unified government patent policy pertaining to inventions made with federal support, the Bayh-Dole Act promotes cooperative activities among academia, small business, and industry, leading to new products and processes for the marketplace.

By providing universities with intellectual property ownership with which to pursue and structure collaborative ventures, the legislation is intended to encourage the two sectors to work together to generate new goods, processes, and services for the marketplace. Such joint work allows for shared costs, shared risks, shared facilities, and shared expertise.

Universities have reporting duties and the government keeps certain rights, but NAU may generate revenue from licensing technologies developed from federal funding.

Arizona Board of Regents Policy 6-908 part B governs revenue sharing by granting creators a minimum of 25 percent of net income. This is implemented by the NAU Intellectual Property Policy, which states in Exhibit A that NAU will grant creators 50 percent of any net income from their intellectual property.

The inventors will determine inventorship percentages based upon contributions. If there is not an agreement then each named inventor will get an equal share of net income. NAU Innovations cannot be involved in such a determination. If there is an appeal of inventorship percentage, it will be determined by NAU’s Intellectual Property Committee.

Ownership of IP created by NAU students can be a complex issue. However, the board does not claim an ownership interest in student-created works (nor does any state or federal law result in ownership of such works to the university, as is the case with employee-created scholarly works). Dissertations and theses are considered “student-created works.” However, these publications may include intellectual property owned by ABOR. 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
• 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 NAU Innovations for a formal ownership determination in any case where ownership of student-created IP is an issue.

A senior capstone project is considered a “student-created” work and is therefore owned by the student. NAU may not assign rights for a project on behalf of the student.

We have several options to simplify the process. You may:

1. Use the Invention Disclosure form available online on the NAU Inventor Portal.
2. Set up a meeting with NAU Innovations to discuss the idea.
3. Email NAU Innovations with any related information you have on the idea, including grant proposals, presentations, manuscripts, and any written descriptions.

As a guideline, the general criteria that define intellectual property include:

• novelty (it is previously unknown), non-obviousness (not a simple improvement that could be made by someone trained in the area)
• utility (the invention must be useful in a practical sense)
• enablement (you must be able to describe it in sufficient detail so that someone skilled in the field can use it for the stated purpose).

A quick look into the US Patent and Trademark Office or the European Patent Office may help you to see how your invention compares to current patents.

No problem. When you disclose your invention to NAU Innovations, please list the inventor at the other institution. We will then contact their technology transfer office and establish an intellectual property agreement with them.

In accordance with US patent laws and NAU intellectual property policy, an inventor is an NAU employee who has made an intellectual contribution to the conception of the innovative idea. It is important to recognize that not every individual working on a project will be an inventor. Those listed as authors on a publication are not automatically inventors. Additionally, students working under direction and guidance are not inventors unless they have intellectually contributed to the conception of the idea. Determining correct inventorship is critical as a patent may be otherwise invalidated. 

Yes, students may be inventors if they have intellectually contributed to the conception of the novel idea and the related project has employed significant use of board or university resources. However, intellectual property created through senior capstone projects or other student-created works are not applicable, as the board takes no ownership in those works.

This does occur on occasion. In such cases of a dispute, we will look to the claims of the patent application which specifically describe each novel aspect of the invention. The candidate inventors will review the claims of the patent application and initial the claims to which they have made an intellectual contribution. Only those who have contributed to at least one claim are considered inventors. If necessary, we may conduct inventor interviews with an attorney to resolve any conflicts.

It is important to understand that inventorship may change over the course of patent prosecution as claims may be removed, which may relate to an individual’s specific intellectual contribution.

The invention disclosure system is designed and implemented to provide a beneficial platform for NAU’s researchers to legally protect significant research innovations, with the goal of translating great ideas and inventions into practical results. Part of the NAU Innovations mission is to translate these results into commercial applications as products and services for the greater good. It is also designed as a support system to protect the value of an inventor’s ideas, to add to their scholarly activities, and encourage continued innovation in a positive and proactive environment.

Please submit an invention disclosure when you believe that you have created intellectual property. Submit an invention disclosure before submitting your idea for publication or presentation in a forum such as a seminar. Submitting a disclosure before manuscript submission or seminar presentation will allow NAU Innovations to review the disclosure and file a provisional patent application to maximize the probability of legal protection for your invention.

If you have any questions regarding the appropriateness and timing of filing an invention disclosure or what constitutes intellectual property, please do not hesitate to contact NAU Innovations.

Your submitted disclosure will undergo initial screening. After screening, your disclosure will become active and a new invention case file will be created. Once your invention disclosure has been accepted, an NAU Innovations will contact you to arrange a meeting. The purpose of the meeting is to discuss further details of your invention, to discuss any additional related ideas or additions, and to discuss any activities that may have been performed relating to your invention (other inventors, collaborators, publications, seminars, etc.).

After this meeting, your invention will be evaluated to determine its merit as intellectual property and the level of interest that NAU may have in commercializing the invention. You may be asked to continue further development of the invention at this time in order to add to its value and increase the probability of legal protection.

If your invention moves forward after this assessment period, it means that NAU has chosen to invest significant time and resources into protecting your invention as intellectual property, and appropriate action will take place to protect (patent or copyright) the invention. Once your invention has been protected, a process of identifying potential commercial licensees will begin.