If you have an idea for a technology that you think might be patentable or otherwise protectable, through copyright protection for example, contact any of the OTT staff members. The first step in disclosing an invention is filling out an invention disclosure form (Invention Disclosure Form
). We need this form to accurately track your invention. Federal law requires that the University notify a government agency of inventions made under federally supported research. For this reason, it is essential that we know whether your technology was developed under federal sponsorship.
The invention disclosure also performs another legal function. When completed and submitted to the OTT, it serves as an Assignment from the inventor(s) to the University. Formalizing this transfer of ownership means that the University can act as Power of Attorney in future patent prosecution-related activities. For further information about the ownership of intellectual property developed at the University, please see Chapter 5: 5400
, Employment Agreement Regarding Intellectual Property: Faculty-Staff Handbook.
In addition to assigning ownership of inventions created at the University to the University, the invention disclosure ensures that all co-inventors are identified and their complete contact information referenced. Identifying all of the co-inventors is necessary for validating the division of royalties between the inventors themselves. Though not every invention submitted to the OTT will be successfully commercialized, it is often the case the commercialization timeline can take several years. During this time, some of the team members invariably move on to other career paths. Tracking them down to determine how they collectively wish to split royalties on a project on which they collaborated years ago is an inefficient use of everyone’s time. For this reason, it makes sense for the research team to agree upon a royalty division among themselves while still employed or attending the University.
For details concerning the University’s policies regarding royalties, please see Chapter 5: 5300
, B-4, Royalties and Income, Faculty-Staff Handbook.
Return your completed disclosure form to OTT. In the majority of cases, we will file a provisional patent application with the information that you provide. A provisional patent application must meet all of the requirements of 35 U.S.C. § 112. In brief, it must provide a complete written description that enables one of skill in the art to practice the invention. A member of the OTT staff can help you determine the level of detail necessary.