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Author / Inventor:
An Inventor is a person who conceives an invention. One can be an Author without being an Inventor--to be considered an Inventor requires the exercise of more than ordinary skill in an invention's creation or reduction to practice.
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Collaborative Research:
Involves research performed in conjunction with more than one organization. The equipment and legal costs, including patent prosecution, are usually shared by the collaborating organizations. Similarly, such parties also share the benefit of government or other funding as well as any royalties that may arise from licenses.
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Commercial Organization:
Has two elements that nonprofit organizations don't include: (1) stockholders and (2) profit-making. Technology is often licensed by a nonprofit to a Commercial Organization in exchange for tangible consideration, including royalties resulting from the company's right to use the technology in product manufacturing and marketing.
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Commercial Relations:
Means collaborative research, consulting and licensing activities between CSHL employees and graduate students and for-profit companies. Setting up procedures and defining the scope of Commercial Relations is the purpose of the Commercial Relations Committee.
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Commercial Relations Committee (CRC):
Is a committee of the CSHL Board of Trustees which generates and monitors CSHL's Commercial Relations Policy
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Confidentiality:
Is the promise made by a CSHL Scientist to an organization not to disclose its proprietary or secret information to any third party without prior authorization from that organization. CSHL Scientists are required to maintain the Confidentiality of proprietary information disclosed to them under a license or collaborative research agreement with a commercial organization. There may be exceptions to this rule (e.g., if the proprietary information becomes part of the public domain--see also Publication).
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Conflicts of Interest:
Are defined in the Commercial Relations Policy as situations in which an employee may have or may appear to have the opportunity to influence the Laboratory's decisions or to use the resources or proprietary information of the Laboratory in ways that could lead to gain or advantage--at the expense of the Laboratory--to such employee, his or her family, and/or any organization in which the employee or family member(s) have a significant financial interest (any of at least $10,000, 5% of the entity's interests, or 5% of the person and family's combined net assets, excluding residences and personal belongings). The Lab's Conflicts of Interest Disclosure Form is used to report potential conflicts. For a more complete understanding of what constitute Conflicts of Interest at CSHL, refer to the Commercial Relations Policy.
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Consulting:
Is the provision of advice to a for-profit or not-for-profit organization other than CSHL. The Commercial Relations Policy includes specific guidelines for engaging in and charges key members of the CSHL Board of Trustees and Administration with approval of such activities on a case-by-case basis.
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Continuation Application:
Is a type of patent application that may be filed to have an invention that was disclosed in a previous application survive as a new application with existing or new claims. This is largely a legal strategy used when the U.S. Patent & Trademark Office (USPTO) has rejected the claims in a previous application, eventually causing its abandonment. A Continuation Application--unlike a Continuation-In-Part Application (CIP)--may contain no new matter (i.e., no information not in the previous application).
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Continuation-In-Part Application (CIP):
Is a type of patent application that, like a Continuation Application, may be filed to have an invention disclosed in a previous Application survive as a new, separate application when the U.S. Patent & Trademark Office (USPTO) has rejected the claims in a previous application, eventually causing its abandonment. But, a Continuation-in-Part Application either contains new matter (i.e., information not in the previous Application) or deletes matter that appears in the previous application.
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Copyright:
A type of protection afforded intellectual property which covers the way in which ideas are expressed. Copyright is not concerned with the factual content of that expression. For example, if one author writes a book about our Laboratory, another writes a poem that includes substantially all the same facts, and a third person creates a CD-Rom that imparts those same facts, it is unlikely that the three people have violated each other's Copyright unless they've consistently used identical language to express those facts. A work's Copyright differs from an invention's patent in many respects, but two vital reasons are: (1) Copyright does not require reduction to practice, a vital element of a patent; and (2) obtaining a Copyright is automatic upon communication (although registering it with the U.S. Copyright Office is recommended)--the creation's author(s) need not provide proof of any kind. Therefore, unlike a patent, a Copyright stands until successfully challenged (or its expiration).
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Disclosure of Consulting Activities:
Required in writing according to the Commercial Relations Policy for all CSHL Scientists. The Disclosure must include terms of compensation and service, including duration of the Consulting Agreement. To facilitate reporting, we have developed an Outside Consulting Activities Log form that should be used to log day to day Consulting activities. The form should be submitted to the OTT semiannually (by January 31 and July 31 of every year).
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Disclosure of Inventions:
Required in writing until the one-year anniversary following the term of employment by CSHL, according to the Commercial Relations Policy for all CSHL Scientists. Disclosure of Inventions should include: (1) a written description, drawings, and claims of the invention; and (2) the agency(ies) and number(s) of any related grant(s). The Disclosure should be made on Exhibit C to the Policy, which is the Laboratory's standard Invention Disclosure Form. A similar Disclosure is also required as an abstract within a patent application.
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Divisional Applications:
A type of patent application that may be filed to continue an active, previously filed one with claims that apply to a different invention from that described in the previous application. It is most often filed after the USPTO has indicated that only some of the claims in the prior application are applicable to the first invention in question.
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Foreign Filing:
A manner of protecting an invention outside the United States by filing one or more patent applications in a country or countries' official equivalent of the U.S. Patent & Trademark Office (USPTO). Filing rules, fees and deadlines vary greatly from place to place. In fact, some countries consider the previous filing of an application in another country (even the U.S.) as prior publication and therefore deny its filing. Fortunately, many countries (but not all) belong to the Patent Cooperation Treaty (PCT), often enabling faster, more uniform and less restrictive initial filings through regional headquarters.
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Intellectual Property:
Property in any of a number of forms, including but not limited to creative endeavors that can be protected by patents and copyrights.
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Invention:
The conception of a method or design having the following three characteristics:
(1) novelty -- it must represent a departure from existing knowledge;
(2) unobviousness -- it cannot consist of what untrained observers recognize;
(3) utility -- it must have one or more practical, useful applications.
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License:
An agreement between the owner (the licensor) of an invention (usually a patent) and another entity (the licensee) granting usage rights to the latter for a specified term without passing title of ownership to that licensee. When the licensee is a for-profit company, an initiating fee and/or future royalties for the licensor are customarily stipulated in the License Agreement.
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Licensee:
A party who has been granted rights of usage for technology owned by another party (the licensor). The rights of the Licensee are restricted by the terms of the license agreement between the parties.
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Material Transfer Agreement (MTA):
A simple form of license agreement which provides for the transfer of materials and/or technologies from one organization (the licensor) to another, often to a not-for-profit organization (the licensee) without compensation to the licensor. When an MTA grants rights to a for-profit company, a fee is usually paid to the licensor, but royalties are seldom part of the agreement terms. A template is available as a download.
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Original Application:
A type of patent application that initiates the protection process for an invention. The Original Application is often filed in the U.S. Patent & Trademark Office (USPTO) as a Regular Application, but it can instead be filed as a provisional application.
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Patent Application:
A formal document submitted to the USPTO (or equivalent foreign governmental body) which seeks the granting of legal rights and protections for an invention. The Patent Application must include: (1) an abstract of the invention disclosure; (2) drawings; (3) a specification describing the invention; (4) a list of the individual claims outlining the subjects to be protected by the Patent; and (5) a signed oath or declaration certifying each applicant's legal entitlement to the protection of the subject invention. Most of the various types of Patent Applications can issue as Patents, which each signify the granting of legal rights.
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Patent Cooperation Treaty (PCT):
A treaty among many of the world's nations which is designed to eliminate much of the duplicate paperwork that would be needed if an applicant were to file a patent application in each country individually. The initial PCT patent application, as it is sometimes called, is not a replacement for seeking patent protection in the individual nations (a process known as entering National Stages), where in each case the PCT application is ultimately presented for issuance as a patent.
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Provisional Application:
A type of original patent application filed in the USPTO for the purpose of more briefly initiating the application process than that required in the presentation of a more formal, regular patent application. A Provisional Application expires twelve months from its filing date.
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Publication:
A concept crucial to an understanding of all forms of intellectual property, and particularly vital where inventions are concerned, since the process of seeking patent protection must begin before Publication. It is defined as the public disclosure of intellectual property, whether oral or written. (See also Confidentiality.)
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Royalties:
Are fees paid to an organization and other parties as a result of income produced from sales of products and/or services provided to a licensee according to the terms of a license agreement. At CSHL, authors/inventors usually share Royalties resulting from technologies they have developed here.
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U.S. Patent and Trademark Office (USPTO):
The organization within the U.S. Department of Commerce charged with implementing and maintaining intellectual property procedures.
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