What is an Invention Disclosure? How do I submit an Invention Disclosure?
When an inventor believes that they have made a discovery that qualifies as an invention, they need to reveal the information to the TTO by filling out a document known as an Invention Disclosure Form . This disclosure should list all sponsors of the research and should include all the information necessary to pursue protection and commercialization activities. It is critical that you complete every section of the disclosure in as much detail as possible or its processing can be delayed. You should also note the date of any upcoming publications or other public disclosure describing the invention. When you are finished you may e-mail an electronic copy of the disclosure to our office but we will need a signed copy mailed to our office before we can begin to process the disclosure. This document will be treated as confidential. The TTO will send acknowledgement that they received the IDF.
Why should I submit an Invention Disclosure?
An invention disclosure that culminates in a license will render dollars that will be returned to the researcher as royalty payments, funds for research, and further support of the University. Disclosure of an invention initiates the protection process. All researchers are responsible to disclose all intellectual property that could constitute inventions or copyrighted works to the TTO. This is executed through completion of an invention disclosure form. Invention Disclosure is critically important for all projects, especially where any portion of the funding comes from the federal government, private foundation, or commercial sponsor. Federal law requires prompt disclosure and the University, inventors, and involved companies could lose very significant rights if disclosures are not promptly made.
When should an invention disclosure form (IDF) be submitted?
Any faculty, staff, or student who believes he or she may have created an invention or has a novel idea is obligated to disclose the nature of invention and provide background information and literature to the University's Technology Transfer Office. An IDF should be submitted to the TTO once a researcher can concisely define the invention and have reduction to practice to substantiate the invention either through modeling or through experimentation. A disclosure form should always be submitted prior to public disclosure. To avoid overlooking inventions, researchers should err on the side of inclusion and decide in accordance with the TTO.
How do I know if I have an invention?
An invention is a new process or an improvement of an already known process (previously patented or not). An invention is "the discovery or creation of a new material (either a new manufactured product or a new composition of matter), a new process, a new use for an existing material, or any improvements of any of these." Computer software may also be classified as an "invention". Frequently, new tools or techniques are developed (for example: Aantibodies, vectors, plasmids, cell lines, mice and other materials used) to meet a particular research objective, but are overlooked once the objective is reached. These tools and techniques may constitute valuable inventions. This example illustrates that the scope of possible inventions can be very broad.
The United States patent law requires that an invention meet the following three criteria, in order to be eligible for patent protection:
Should I list visiting scientists, collaborators from other universities or collaborators from industry on my invention disclosure form?
All contributors to the ideas leading to a discovery should be mentioned in your disclosure, even if they are not university employees. The TTO will determine the rights of such persons and institutions. Often a shared relationship is set up between the University and the collaborating university with both institutions jointly responsible for patent costs and marketing efforts. Can a student contribute to an invention? Yes, a student may even be the sole contributor or inventor. The policy for ownership of an invention developed with or by a student is the same as for any other member of the university.
Does submitting an Invention Disclosure to the TTO secure patent protection?
Submitting an invention disclosure does not directly result in any form of protection. The IDF initiates the protection process, however, full protection will not occur until a patent is issued by the USPTO. Typically, this process takes three years. You will be kept well informed of the process and should the TTO decide to not seek patent protection for your technology, you will be given the opportunity to pursue protection on your own.
What constitutes public disclosure?
Public disclosure is interpreted by courts as an intention to donate the invention to public domain, therefore, no invention should ever be publically disclosued until adequaltly protected. Public disclosure includes journal publications, website publications, and presentations at conferences, posters, dissertation/master thesis, or abstract publication. More generally when the intellectual property is made publicly available and accessible to those skilled in the art to which the invention relates. When you pubically disclsore any part of your invention, that disclosure (poster, website, public emails, publications, etc.) can be used as prior art against your own invention!
What is "prior art" and how do I find it?
Prior art refers to any public knowledge of any invention. Patents can only protect new ideas, therefore, any reference to an invention will prevent the patent from issuing, even if the source of the information is the inventor. Journal publications, foreign patents, issued U.S. patents and patent applications are all areas that can contain prior art. Since the inventor knows better than most what the invention entails, he or she should be familiar with much of the prior art regarding the invention space. Searches of the Internet, journal articles and patents are helpful examples of place to perform prior art searches. Researchers can search the patent office at www.uspto.gov.
What is the Bayh-Dole Act?
At the close of World War II, the US government evaluated how money spent on basic research was benefiting the general public. Following years of political debate, it was determined that while intellectual property is important to capture and develop, it was also apparent that the government is ill equipped to manage such IP from its broad diversity of funded programs. Ultimately, the Bayh-Dole Act (Public Law 96-517) was passed in 1980 to create a uniform patent policy for all organizations accepting federal money. The Bayh-Dole act allows universities and other non-profit institutions to have ownership rights to discoveries resulting from federally funded research provided certain obligations are met. The universities are required to protect and commercialize the discoveries, submitting progress reports to the funding agencies. The Bayh-Dole act is credited with stimulating interest in technology commercialization activities and generating increasing research, educational opportunities and economic development.