Frequently Asked Questions

Who is PSRF?

PSRF stands for the Penn State Research Foundation. The Corporation was formed in 1934 "for the purpose of fostering the advancing scientific research, and, as incident to this general purpose, for the purpose of creating, purchasing, holding, and selling patent rights for inventions and designs, with the right to issue licenses for the exercise of rights relative to said inventions and designs, and to receive payment therefore, and to use and apply all moneys thus or otherwise received solely for the fostering and advancement of such scientific research." For more information, please visit: http://www.research.psu.edu/patents/penn-state-research-foundation

What is the role of the Office of Technology Management (OTM)?

OTM is responsible for managing, protecting, and licensing the intellectual property of faculty, graduate students, and staff at all Penn State locations on behalf of PSRF.

What is the advantage of participating in this auction? 

This auction offers participants with more favorable terms and a lower price point than normally offered by PSRF. 

What is a patent? 

A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention.

What is a license? 

A license may be granted by a party ("licensor") to another party ("licensee") as an element of an agreement between those parties. A shorthand definition of a license is "an authorization (by the licensor) to use the licensed material (by the licensee)."

What is an Exclusive license? 

A license limited to a specific scope or field, such as context, market, territory, or time. 'Exclusive' does not mean 'one and only' license granted, but only that the licensor agrees not to grant other licenses that have the same rights within the scope or field covered by the exclusive license.  It may refer to a geographical area, technological application, method of production, or production of a specific product.

What is a Non-Exclusive license?  

A license in which the same rights to an intellectual property granted to several licensees within the same scope or field, consecutively or simultaneously. See also exclusive license.

What is Due-Diligence and who is responsible for it in this auction? 

Due-Diligence is a term used for a number of concepts involving either an investigation of a business or person prior to signing a contract, or an act with a certain standard of care.  It can be a legal obligation, but the term will more commonly apply to voluntary investigations.  In this auction, it is the obligation of the bidder to perform their own due-diligence and should not place no value on information provided by PSRF.

What does “Freedom to Operate” mean?  

"Freedom to operate", abbreviated "FTO", is usually used to mean determining whether a particular action, such as testing or commercialising a product, can be done without infringing valid intellectual property rights of others.

What are Patent Maintenance Fees and who is responsible for them in this auction? 

These are fees that are paid to maintain a granted patent in force.

  • To view the USPTO maintenance fee due dates or pay the maintenance fee: http://portal.uspto.gov/external/portal/pair
  • Select “Patent Number” tab and then type the Patent Number in the box and select “search”.  Once in Bibliographic Data screen, select “Fees” tab.  A box will appear and you will be required to enter both the Application Serial Number and Patent Number.  Once entered, select the “View Payment Windows” tab to view payment deadlines or select the “Retrieve Fees to Pay” tab to pay a maintenance fee.
  • To view the USPTO Fee Schedule go to:  http://www.uspto.gov/web/offices/ac/qs/ope/fee100512.htm 
  • Note:  It is the Licensee’s responsibility to pay the maintenance fees prior to the deadline date (without going into the surcharge period).  If the Licensee decides not to pay the fee, the Licensee must notify Penn State’s Office of Technology Management at least two weeks (2) prior to the deadline date (without going into surcharge period) so that Office may decide if the fee will be paid.  The License will automatically terminate if Licensee does not pay the fee.

What is Bundling? 

By suggesting certain patents be “bundled” together, OTM has made no attempt at assessing freedom to operate.   We are merely suggesting the patents are similar in scope and may have relevance to one another.

What happens once you win an auction? 

Your participation in the auction binds you to the terms and conditions of the auction The Office of Technology Management will invoice you upon winning the bid.

Will my companies name ever appear to others on the auction? 

No.  Each auction participate will be given a unique ID# so your identity will remain secure.

What does Penn State’s Office of Technology Management do with contact information they capture during the creation of an account? 

Penn State’s Office of Technology Management only uses the contact information collected in order to administer the auction.  No information collected will be distributed to other parts of the university or to any entity outside of the university.

How is the license agreement executed? 

When the auction is completed, Penn State’s Office of Technology Management will forward their standard license agreement designed specifically for this auction and have it executed by the winner of the bid and the Penn State Research Foundation.

What rights does PSRF retain to the patent? 

Per Paragraph 2.2 of the license agreement, “PSRF reserves the rights for itself and the UNIVERSITY to practice under the PATENT RIGHTS for their own research and educational purposes.”

Does PSRF warrant their ownership of the patent? 

The only thing that PSRF warrants is that they own the patents.  In most cases they own them outright.  If they are co-owned, that will be indicated.

How can I obtain the entire patent prosecution history? 

The entire patent prosecution history can be obtained electronically thru the USPTO website: http://portal.uspto.gov/external/portal/pair/.   A hard copy can be obtained for a fee at Reedfax: http://www.reedfax.com/

If the patent was the result of Federally Funded Research, what rights does the US government retain? 

Per Paragraph 2.3 of the license agreement -  “LICENSEE agrees that LICENSED PRODUCTs leased or sold in the United States will be manufactured substantially in the United States. Certain PATENT RIGHTS resulted from federally-supported research, and their assignment is governed by the applicable provisions of the Federal funding agreements, including the 35 USC Chapter 18 (the “Bayh-Dole Act”), 37 CFR Part 401.”

If the patent was created under Federal funds, may I manufacture products based on the patent outside of the US? 

Per Paragraph 2.3 of the license agreement - “LICENSEE agrees that LICENSED PRODUCTs leased or sold in the United States will be manufactured substantially in the United States. Certain PATENT RIGHTS resulted from federally-supported research, and their assignment is governed by the applicable provisions of the Federal funding agreements, including the 35 USC Chapter 18 (the “Bayh-Dole Act”), 37 CFR Part 401.”

Can I assign the license to another company? 

Yes, as long as the party agrees to the Terms and Conditions of the agreement.  See Article II of the license agreement. 

Will PSU consider an assignment of the patent? 

If Federally Funded, the Federal Government must approve the assignment.  This can be a long process.  OTM is willing to pursue assignment if the winner of the auction requests it.

Will the exclusive license include sublicensing? 

Yes.  Per Paragraph 2.1 of the license agreement – “Subject to any preexisting rights, if any, of the Government of the United States created by the use of Government funding and subject to the payment of the License Issue Fee in Paragraph 3.1, PSRF hereby grants to LICENSEE an exclusive right and license in the TERRITORY for the FIELD, with right to sublicense, to PATENT RIGHTS and to the extent not prohibited by other patents, to make, have made, use, lease, and sell LICENSED PRODUCTs for the term set forth herein, unless this License Agreement shall be earlier terminated according to the terms and conditions contained herein.”

Will the exclusive license include enforcement rights? 

Yes.  Per Article 6 of the license agreement.

What is the payment process if I win? 

OTM will prepare the license agreement and invoice the winner immediately upon the completion of the auction.  Per Paragraph 2.1, the license agreement will not go into effect until payment has been received.

Can I contact the inventor(s) for more information? 

Yes, but understand the inventors are not obligated to respond.  It is appropriate to enter into a consulting agreement with the inventory if it so desired.

Are the terms of the license negotiable? 

No.  In an effort to reduce administrative costs and make this auction possible, OTM has developed a standard License Agreement and Terms & Conditions with very favorable terms.

Who will defend the patent if it is challenged? 

Please refer to Article 6 of the license agreement.