Disclosing to the OTM
The Invention Disclosure Form is a key step in starting the process that could potentially lead to commercialization of your technology. Completion of the form assists the OTM in two important ways:
- First, it serves as a written, dated record of your invention.
- Second, it provides the OTM with basic information which helps to evaluate, subsequently protect and potentially commercialize the intellectual property associated with your invention.
Please complete the form as thoroughly as possible. If you do not know an answer, if you have any questions, or would like assistance completing the form, please contact the OTM by:
- Phone: 312.996.7018
- or email: OTM@uic.edu
For any disclosures regarding app development and deployment, please use the Moblie Software App Disclosure form.
The following files are all in MS Word doc format
*This form is to be used for a special COM initiative.
Discovery is the first step in the process!
First, investigators should adequately plan for the possibility of the creation of intellectual property during the course of research using the guidelines below:
Keep good laboratory records
- Use permanently bound notebooks
- Make legible and complete entries
- Update in ink.
- Record the date and initials/names of the contributor on each page including sketches, photos or other additions.
- Use a new page for new experiments.
- Use a diagonal line to mark out blank portions of pages.
- If you make an error in the entry, draw a single line through with an initial and date. Don't erase or completely cross it out.
- Record all observations, even if the significance is not known.
- Record any thoughts on future experiments that should be done.
- Other data from equipment should be entered when possible and with handwritten initials and date.
- Electronic/computer files, diskettes, and similar data may be useful, but do not carry as much proof as the lab record because they may be easier to alter.
- Have the records "witnessed" with signature and date by someone who can understand the science or content. Do not use coworkers, supervisors, or other collaborators in the research. An objective witness is best.
Understand the terms and provisions of your sponsored research.
- Usually, sponsors have the option to license inventions created under the research contract within the time limit of a few months.
Submit a Report of Research Discovery to the OTM
Once a discovery has been made, investigators should complete and submit to OTM a Report of Research Discovery form. Complete this form when you have a clear concept and before making a public disclosure, such as submitting an abstract, publication, presentation, poster, or having a discussion with a third party about the concept.
- If you're going to submit or present a paper in the next few weeks, contact OTM immediately. If the invention has commercialization potential, a provisional patent application can be filed in a short period of time. If a patent application is not filed, foreign rights will be lost.
- If you make a public disclosure that allows someone "skilled in the art" to conclude what the invention could be used for, it may prevent us from gaining an issued patent.
- Invention disclosure is not a guarantee of an issued patent, but only our right to file for one.
- To understand the importance of disclosing your invention, visit our section on patents.
Keep the following guidelines in mind while filling out the form
- Provide as much detailed information about the technology as possible, citing all relevant sponsorship and publication information. This enables the OTM and its outside patent counsel to determine if the technology is patentable as well as identify possible opportunities for commercialization of the technology.
- When identifying inventors, use the broadest spectrum possible; OTM, assisted by outside patent counsel, will work to determine legal inventorship.
Return the original, signed Report of Research Discovery along with any supporting documentation to:
Office of Technology Management
University of Illinois at Chicago (MC 682)
1853 West Polk Street, Suite 446
Chicago, Illinois 60612
You can also fax us the disclosure at 312.996.1995 or email it to us at OTMsubmissions@uic.edu
What happens after reporting your discovery to the OTM?
Together, the designated OTM technology manager, inventor(s), and in some cases, third party reviewers operating under confidentiality evaluate three basic criteria to determine whether to commercialize the invention:
- Technical Merit
Involves a prior art search, inventor(s) comments related to the prior art, and thoroughness of the disclosure.
A prior art search reveals the breadth of claims possible. Narrow claims may not be of sufficient interest to attract the resources needed to move the invention to market.
- Commercial Potential
When OTM makes a commitment to commercialize the invention, it commits staff resources and funds to the process. However, OTM does not have the resources to reach the market alone. It requires an appropriate licensee with the capability and interest to move the invention.