NDA or CDA or MTA
A Confidentiality or Non-Disclosure Agreement (CDA or NDA) allows a party to discuss its confidential or proprietary information, such as unpublished data or research results, with another party that is interested in receiving the information. The agreement binds the receiving party to keep the information confidential and not disclose it to third parties. Without such an agreement, the recipient of the disclosed information could use or distribute proprietary information for any purpose, or the discussion would be considered public disclosure and could impact patentability.

In some instances, the company will need access to a sample of your technology for testing. This is done under a Materials Transfer Agreement (MTA), which included appropriate provisions to protect associated rights. It is always best to have a confidentiality agreement signed before in depth discussions take place. However, venture capitalists generally will not sign NDAs. This can be easily managed and is typically not a concern. Our staff and community can help coach you.

USC IP Policy:
It’s a goal of the University of Southern California is to encourage creative activity and the prompt and open dissemination of ideas and inventions by recognizing and rewarding individual members of the USC community. This among many other reasons is why USC has established a strong IP policy that all USC innovators must adhere to. For more information read the USC IP Policy.

IP and Sponsored research
[JOE / Samantha]

Conflict of Interest Policy:
Unfortunately, there are many situations in the university environment which can be perceived as a conflict of interest. Many conflicts that are disclosed can be managed. For example, when a faculty member has a financial interest in a company which funds his or her research, or worse yet, clinical trials, and which many involve students working on thesis projects, the situation must be disclosed. The challenges and real problems start when a potential, actual, or something that can be perceived as conflict is not disclosed. For more information, please review the COI Policy.

Patent

To obtain patent protection, an invention must be novel, useful and unobvious to someone skilled in the art. Patentable inventions include new processes, products, apparatus, compositions of matter, living organisms and/or improvements to existing technology in those categories. A United States patent grants the patent assignee the exclusive right to exclude others from making, using, or selling the patented invention in the United States for the life of the patent, or 20 years from the date of applying. However, it does not give you the absolute right to practice your invention (there can be other patents for which you may need permission in order to practice freely). There are three types of patent: Utility patent (standard patent type), design patent, and plant patent.

Under U.S. Patent Law, an inventor must contribute something new, useful and non-obvious to at least one claim of the patent. Making contributions to a technical paper or testing the invention are not by themselves sufficient to be considered contributing to the claims.
Having the correct inventors named on the patent is very important. If the inventors listed on the patent are incorrect, or if a rightful inventor is not named, the patent can be invalidated.
The USC Libraries has several subscription databases, notably SciFinder Scholar, that allow for easy patent searching. We have also explored and compiled a number of patent print and electronic books, as well as links to free resources, for you in this guide. Check it out.

Copyrights

Copyrights protect original works of authorship, such as software, writings, musical works, sound recordings, and other works of art. Copyright protection prevents others from duplicating, preparing derivative works, distributing, or publicly performing copyrighted pieces, such as songs, without the owner’s permission. Copyright protection is longer than patent protection, currently 70 years from the author’s death.

In the academic tradition, copyrights in textbooks vest with the faculty author. Copyrights in faculty works such as a computer program that optimizes a telephone network, for example, would belong to the University, if the works were developed using more than incidental use of university resources or developed under a university Sponsored Research Program. Copyrights will automatically apply as soon as the work is fixed in a tangible form. Registration is not required. However, the copyright must be registered with the U.S. Copyright Office before enforcement actions can be taken.

Trademarks

Trademarks are handled by USC Trademarks and Licensing Services. For further information, please visit http://www.usc.edu/bus-affairs/trademarks/

Royalty Distribution

The net licensing income is shared among the school, department, university and inventors, with the inventors getting a third.
(Net revenues = after expenses and 15%)

Percentages for faculty starting after April 2001
33% to the Inventors
33% the University
16% Inventors’ School
16% to Inventors’ Department

There are many factors that contribute to how much an inventor will make in royalties from a particular patent including patent expenses, patent coverage, overall market size, and product cycles, to name a few. If you have specific questions about your invention, contact the our licensing team.

MTA

[Joe]