Invention Disclosure Guide

The Technology Transfer Office is a service department of the University established for the purpose of protecting both patentable and unpatentable technology developed by personnel of the University, and assisting such technology to the marketplace.

At the time of their employment, all employees become subject to the University's Patent Policy requiring the assignment to the University of inventions which emerge from any research, development or other activity sponsored by the University or are developed with the use of University funds, equipment, facilities or other personnel of the University.

It is impossible to give a precise definition of what constitutes a patentable invention, since the answer depends upon many factors and, in the last analysis, is a unique decision made by the U.S. Patent and Trademark Office. In general, under the Patent Policy employees should disclose ideas they may have for any new apparatus, systems, methods or processes, and compositions of matter to the Director of Technology Transfer. It is one of the functions of the Office of Technology Transfer, with the assistance of Patent Counsel, to determine whether or not a disclosure appears to embody patentable subject matter.

II. EVIDENCE OF CONCEPTION

"Conception" of an idea relates to the time of an invention's formulation and must be provable by legally sufficient evidence. "Legally sufficient evidence" requires objective proof of the date of conception and its subsequent development. Carefully maintained laboratory notebooks and a timely and well written invention disclosure are, therefore, very important. An appropriate Invention Disclosure form is attached as Appendix A and instructions for preparing such a disclosure follow.

III. HOW TO PREPARE AN INVENTION DISCLOSURE

It is important not only to prepare an Invention Disclosure, but also to prepare it at the earliest possible date. The Inventor should not wait for the final or ideal form of the idea to be developed, but should complete an Invention Disclosure Form as soon as he has the first hazy outline of his invention. Addenda can be added as details are worked out. To secure the fullest protection possible for new ideas, laboratory records concerning such developments should be dated and signed, and kept in an orderly manner.

An Invention Disclosure Form is available to download. The instructions for completing the form follow:

The Invention Disclosure should be written as soon as possible after you believe that you have made an invention.

The Invention Disclosure should be as complete as it can be at the time when it is written. Remember - it can be updated - and probably will be as your research progresses.

The first sketches or drawings and the first written description of each part of the invention, no matter how crude, are important legal records, particularly when they are signed, dated and witnessed at the time when they are made.

If before preparing the Invention Disclosure the subject matter of your invention has or will be publicly disclosed or commercialized, the date of first public disclosure, use, or sale must be mentioned in the Invention Disclosure so that the patent attorney will be on notice to prepare and file your patent application within the required statutory period as provided by the patent laws. It is also important to keep the Technology Transfer Office continually apprised of such activities. Therefore, we request that copies of manuscripts, abstracts, etc. related to previously disclosed or soon to be disclosed inventions be provided prior to journal or conference submission, if possible. Your cooperation in this respect is greatly appreciated!

IV. TRANSMITTAL

The completed Invention Disclosure should be transmitted directly to the Office of Technology Transfer, with a copy to your Chairperson or Supervisor.

V. ACKNOWLEDGEMENT

The Office of Technology Transfer will acknowledge receipt of your Invention Disclosure by letter assigning a file number and it is requested that all subsequent correspondence reference the assigned file number.

If you have any questions, do not hesitate to contact: