This Inventor's Guide is to help inventors understand the process of determining what warrants filing an invention disclosure, the different ways that an invention might be protected, and how OTM works to find licensees.
First, investigators plan for the possibility of creating intellectual property while conducting research using these guidelines.
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.
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.
2. Report of Research Discovery
Next, investigators complete and submit to OTM a Report of Research Discovery form (download the Word doc). Complete this form when you have a clear concept and before making a public disclosure, that is, 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.
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:
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.
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.
3. Patent Applications
are several ways to protect intellectual property. Patenting is the
most common, the most expensive, and may take from two to five years to
complete. However, other ways to protect IP include confidential
disclosure agreements, trademarks, copyrights, and trade secrets.
Should OTM choose to bring an invention to market, it begins by
retaining a patent attorney, typically from a firm specializing in the
technology area, to execute the patent application.
Read more on patents or visit the US Patent and Trademark Office.
4. License Execution
After intellectual property is protected, potential licensees are contacted by OTM and business terms are negotiated with interested parties. A license, exclusive or non-exclusive, is the agreement between the University and the licensee that describes the terms, conditions and requirements of both parties. The OTM negotiates and executes the license on behalf of the University. After licensing, the OTM will monitor licensee performance for the term of the license and distribute income according to policy.
A license is the technology transfer agreement granting some of the University’s rights as owner of an intellectual property to a company who has agreed to certain obligations and responsibilities to commercialize the intellectual property. Learn more.