Offer of Rights Central
In the event that the University of Virginia Patent Foundation decides not to go forward with intellectual property protection for an invention, we may offer the patent rights to that technology to the inventors in case the inventors wish to pursue patent protection and commercialization on their own. We refer to this process as the "offer of patent rights."
We have assembled the below information to assist our inventors in deciding whether to accept our offer of patent rights to a technology. If you received an offer of patent rights letter from the Patent Foundation directing you to this page, you are eligible to obtain the patent rights to a technology; please review the below information carefully, and feel free to contact us at any time to discuss your specific situation. If you have not received an offer of patent rights letter from the Patent Foundation, although you are welcome to review the below information, you are not currently eligible to obtain the patent rights to any technologies maintained by the Patent Foundation.
- How do I obtain the rights to a technology?
- If a provisional patent application has been filed and the technology was federally funded
To obtain the patent rights to a technology from the Patent Foundation, when a provisional patent application has been filed and the invention was federally funded, you will need to agree to the terms described on the Patent Foundation’s form for federally funded provisional patent application technologies, a sample of which can be found here. You will need to request an official, prepared copy of this form and complete, sign and submit it to the Patent Foundation by the date indicated in your offer of patent rights letter. To request an official copy of this form, contact the Patent Foundation at or 434.924.2175. - If a provisional patent application has been filed and the technology was not federally funded
To obtain the patent rights to a technology from the Patent Foundation, when a provisional patent application has been filed and the invention was not federally funded, you will need to agree to the terms described on the Patent Foundation’s assignment form for non-federally funded provisional patent application technologies, a sample of which can be found here. You will need to request an official, prepared copy of this form and complete, sign and submit it to the Patent Foundation by the date indicated in your offer of patent rights letter. To request an official copy of this form, contact the Patent Foundation at or 434.924.2175. - If a U.S. or international (PCT) patent application has been filed
To obtain the patent rights to a technology from the Patent Foundation, when a patent application has been filed, you will need to agree to the terms described on the Patent Foundation’s assignment form for patent application technologies, a sample of which can be found here. You will need to request an official, prepared copy of this form and complete, sign and submit it to the Patent Foundation by the date indicated in your offer of patent rights letter. To request an official copy of this form, contact the Patent Foundation at or 434.924.2175. - If a U.S. patent has been issued
To obtain the patent rights to a technology from the Patent Foundation, when a U.S. patent has issued, you will need to agree to the terms described on the Patent Foundation’s assignment form for issued patent technologies, a sample of which can be found here. You will need to request an official, prepared copy of this form and complete, sign and submit it to the Patent Foundation by the date indicated in your offer of patent rights letter. To request an official copy of this form, contact the Patent Foundation at or 434.924.2175.
- If a provisional patent application has been filed and the technology was federally funded
- What does obtaining the patent rights to a technology allow me to do?
- Pursue further patent protection
Depending upon what stage of intellectual property protection the Patent Foundation has already acquired for your technology, obtaining the patent rights will enable you to file for further protection or maintain existing patent protection. In fact, this step is typically a condition of the offer of patent rights. If, for example, you accept the rights to a provisional patent application that has been filed on your technology, you will need to file a full U.S. or international patent application as a condition of the agreement. Please keep in mind that once you obtain the rights to a technology you will be responsible for enforcing those rights — monitoring your patent(s) and, if necessary, suing infringers of your patent(s). - Commercialize the technology
Once you obtain the patent rights to a technology, you can attempt commercialize that patented technology by licensing the patent rights to a company willing to further develop the technology and take it to the marketplace. It is important to note, though, that the Patent Foundation is likely to have already identified and exhausted several marketing leads in the appropriate industries before offering you the patent rights to the technology.
- Pursue further patent protection
- What are the costs associated with patenting and commercializing a technology on my own?
- Patent fees
Depending upon what stage of the patent process your technology is in, you could end up paying several thousands of dollars in patent filing, maintenance and other fees. For a summary of patent fees required by the U.S. Patent and Trademark Office, select the current fee schedule at www.uspto.gov/web/offices/ac/qs/ope/fees.htm. - Patent attorney fees
Patent attorneys typically charge $250-$600 per hour depending upon the attorney’s firm and level of experience. Patent agents who are permitted to write and file patent applications may charge less per hour than patent attorneys. Your patent attorney or patent agent can provide you with a cost estimate based on your specific patent rights and the scope of protection you seek. - Cost of enforcing patent protection (if applicable)
While, once you have obtained the rights to a technology, patent protection does grant you the right to exclude others from making, selling, offering to sell, using and importing your invention, you will be responsible for enforcing those rights. If you become aware of any unauthorized use of your patented invention, you may have to sue to stop this unauthorized use. Patent suits can cost up to millions of dollars in legal fees, although it may be possible to find an attorney willing to take on a patent suit on a contingency basis. - Time and resources needed to commercialize a technology
A substantial investment of time and money will likely be needed to successfully commercialize your technology, particularly if you decide to found a start-up company on the technology. To speak with a licensing professional about the commercialization process, or to be put in touch with a University researcher who has gone through this process, please contact the Patent Foundation at or 434.924.2175.
- Patent fees
- Is there anything else I will be responsible for?
- Ongoing Reporting
If your invention was federally funded, your funding source will likely require that you report on patenting and commercialization milestones using the online system known as iEdison. Please feel free to contact the Patent Foundation with any questions about reporting at or 434.924.2175.
- Ongoing Reporting
- Are there any limitations once I own the patent rights to a technology?
- If I have U.Va. co-inventors
If you co-invented a technology with other U.Va. inventors, and the Patent Foundation has offered you the patent rights to the technology through a formal offer of patent rights letter, the offer of patent rights letter has also been sent to each of your co-inventors. If any one of you accepts the offer of patent rights, all of the inventors on your technology will collectively own the patent rights to the invention, and you will retain all future proceeds. Therefore, we recommend you discuss this offer with your co-inventors and come to an agreement on how any costs and potential profits related to the technology would be shared should the offer be accepted. - If I have co-inventors from other institutions
If one or more of your co-inventors was working for another institution at the time of invention, the Patent Foundation may co-own the patent rights with that institution. In that event, the Patent Foundation is only able to offer you the patent rights concerning our share of the invention. To determine whether this might be the case with your technology, please contact the Patent Foundation at or 434.924.2175. - Related to my source of funding
Your funding source may have certain requirements that need to be met as a condition of the original grant or award. For example, federal funding sources typically require that you agree to be bound by the conditions of the offer of rights as well as at least those conditions applying to small business firms under the federal Bayh-Dole Act. We recommend you review any patent and commercialization guidelines put forth by your awarding agency or institution or contact the Patent Foundation at or 434.924.2175 to discuss. - Regarding the patent rights to my future inventions
As long as you are a U.Va. employee, you will remain subject to the requirements of the U.Va. Patent Policy and the federal Bayh-Dole Act. These documents require you to disclose any future inventions you make using U.Va. resources to the Patent Foundation, even if those inventions are related to this invention. - Regarding the University's right to practice
As a condition of the offer of patent rights, should you choose to accept the offer, U.Va. and the Patent Foundation will retain a non-exclusive, fully paid-up right to practice under the patent rights for education, research, patient care and treatment, and other internal purposes. In order to avoid constraints on your or your co-inventors’ (if applicable) future academic research, this same right regarding education and research will be extended to any not-for-profit institution that employs or has employed you or any co-inventor who incorporates the invention into his or her research program during such employment. - Regarding the commercialization of future inventions
As a condition of the offer of patent rights, you will need to agree not to use or allow the use of the patent rights to block the Patent Foundation or any of our licensees from commercializing any future technologies invented by yourself or others at U.Va. - Regarding others' "dominant" patent rights
There may be patents that block, "dominate" or overlap the patent rights to your technology and thus prevent you from commercializing your technology without the permission of the other patents' owners. For example, if you invent and hold the patent rights to The Car, but someone else holds the patent rights to The Wheel, you would need to reach an agreement with the owners of the patent rights to The Wheel in order to make, sell, offer to sell, use or import The Car (which does not work without The Wheel). - Regarding licensees that had been approached by the Patent Foundation
As a condition of the offer of patent rights, you will need to agree to notify the Patent Foundation and pay us a reasonable royalty if you license or otherwise transfer the patent rights to a company that had previously declined a license from the Patent Foundation. - Regarding conflict of interest statutes
The commonwealth of Virginia has conflict of interest statutes that may come into play under certain circumstances. To help identify and manage any potential conflicts, we ask that you disclose to the Patent Foundation any and all (i) companies that you are aware of which now have or previously had an interest in licensing or otherwise acquiring any of the patent rights; (ii) start-up companies that you have founded, are in the process of founding or plan to found; and (iii) companies in which you and/or your immediate relatives own or have the right to acquire equity (other than via an individual retirement account) that either exceeds 3 percent of the company’s total equity or exceeds a value of $10,000. Also as a condition of the offer of rights, you will need to agree not to license or assign patent rights to any entity meeting any of the above criteria, unless the Patent Foundation has first consented to such license or assignment in writing. We recommend you contact David J. Hudson, Ph.D., associate vice president for research at U.Va., at 434.924.7026 or with any questions about conflicts of interest, or you may contact the Patent Foundation at or 434.924.2175.
- If I have U.Va. co-inventors
- What happens if I choose not to obtain the patent rights to a technology?
If you have received a formal offer of patent rights letter from the Patent Foundation and are not interested in obtaining the patent rights to your technology, simply take no action. If you do not submit the appropriate assignment form to the Patent Foundation by the date indicated in your offer letter, any patent protection for the technology will ultimately expire, and the invention will be free to be used by the public. Although the patent rights to your technology will cease to exist, there is always some possibility that your invention will come into use without patents. In addition, the Patent Foundation will continue to maintain a file on your technology should any future opportunities present themselves. - Who can I contact if I have any more questions?
Interim Executive Director Miette H. Michie and any member of the Patent Foundation’s licensing staff would be happy to assist you with any questions or concerns you may have regarding the patent rights to your technology. Please call us at 434.924.2175, or visit the Staff Directory for individual staff member contact information.