WHEN/WHAT do I disclose? Whenever you have developed something through your research that you think is truly remarkable or innovative—whether an invention or tangible materials such as cell lines—you should disclose it to the OTD. Don't worry about whether or not you have an "invention"—we will help you figure that out. HOW do I disclose? Disclosures of inventions and tangible materials can occur in the following ways:
- Fill out the Invention Disclosure form and submit it to the OTD. or
- Call the OTD and schedule a meeting with a case manager, who will work with you to fill out the Invention Disclosure form.
TANGIBLE MATERIALS DISCLOSURES:
- Fill out the Tangible Material(s) form and submit it to the OTD. or
- Call the OTD and schedule a meeting with a case manager, who will work with you to fill out the Tangible Material(s) form.
We look forward to hearing from and working with you!
Frequently Asked Questions Regarding Disclosure
Why does the OTD need my work and home addresses? We need your work address to contact you and your home address to mail royalty checks to you. Please keep us updated if either address changes.
Why is contract/grant information important to the OTD? Under federal law, the Institute is required to report inventions created through government-sponsored research to the federal government. If the Institute decides not to take title to such an invention (that is, decides not to keep it), then the federal government has rights to it. If the government doesn't wish to retain these rights, the ownership of the invention may be reassigned to the inventors. Non-government research sponsors may also attach intellectual property clauses and obligations to such sponsorship, and the OTD must comply with them.
How detailed should the description of the invention be? The description should be as detailed as possible. All information provided to the OTD will be kept confidential. Without adequate information, the OTD cannot perform a complete evaluation of the invention's patenting and licensing potential. At the first meeting between the licensing associate and the inventor(s), the invention may be discussed in greater detail, if necessary.
If I publish a paper or make an oral disclosure before the OTD files a patent application, are the patent rights lost? The U.S. rights are not lost. The OTD has one year from the date of first publication (or public disclosure) in which to file a U.S. patent application. Foreign rights are lost, but the OTD does not file many foreign patent applications, since there is often a larger potential market in the U.S.
What is considered a public disclosure of an invention? A public disclosure is any form of communication that is readily available to the public (e.g., a journal paper, a conference presentation, a publication on the World Wide Web, even a dissertation indexed at the library) and that describes the basic ideas in enough detail that someone else would be able to make and use the invention(i.e., those ideas that are new). Showing or telling these ideas to others may also constitute disclosure, as does selling or offering for sale a prototype of the invention.