What is an invention disclosure and why should I submit one?

An Invention Disclosure is an official and legal document that establishes the description of the invention, the inventors, the date of invention and the assignment to the University. This document initiates the Intellectual Property Strategy and Licensing process of assessment and commercialization.

When should I complete an invention disclosure?

As soon as possible. This will reduce the risk of others filing first and inadvertent public disclosures.

What do I need to know about patents?

First, the University’s legal representative files a patent application with the United States Patent and Trademark Office (USPTO). Then, over a period of time the patent application is examined within the USPTO. If some or all of the claims included in the patent application are allowed, a patent issues. This process can take years.

How does the U.S. differ from Europe in terms of first to invent vs. first to file?

The United States uses the first to invent rule granting a patent to the first inventor who conceives and reduces the technology or invention to practice. Other countries use the first to file rule granting a patent and all rights to the first person who files a patent application for an invention. In addition, method claims are difficult to obtain in Europe.

If a patent is filed for my invention, who owns the patent rights?

Ownership of intellectual property including patents developed by employees or students of the University usually resides with the University, unless otherwise specified. All University employees and students are obligated to assign ownership of all discoveries or inventions to the University, as stated in the Faculty Manual, Student Handbook (Undergraduate and Graduate Bulletins) and Sponsored Policy C7. In addition, new employees sign an agreement to this effect upon employment. Under certain limited conditions, as determined by the Patent and Copyright Committee, ownership rights of a discovery or invention may be transferred to the inventors.

What is prior art?

Prior art is information which describes any part of your invention that has been made available to the public in any form before the priority date (the filing date) of your invention. If your invention has been publicly disclosed in prior art it is unlikely that patent protection can be obtained.

What is a public disclosure?

Public disclosure can include posters, seminars, slides and conversations with other persons. Of course, print materials including journals, books and web postings can also be considered public disclosures and compromise an inventor’s ability to obtain patent protection.

What is a provisional patent application?

A provisional patent application is an optional lower-cost first patent filing in the United States. Applicants are entitled to claim the benefit of a provisional application date in a corresponding non-provisional application filed not later than 12 months after the provisional is filed. A provisional application is less costly and generally faster to draft and file than a non-provisional application and it allows “patent pending” to be used in reference to your invention.

What is a non-provisional (utility) patent application?

The provisional application must be converted into a non-provisional application within one year to continue with the patent process. If the provisional application is not converted within a year, it will be abandoned and the priority date is lost. Once the non-provisional application is filed, and all the parts are present, your application will be forwarded to a patent examiner in the USPTO who will review your application. The non-provisional application examination process can take upwards of two years. Depending on the results of this process a patent will or will not be issued
Who pays for patent costs?
The costs of drafting, filing, prosecuting and maintaining patent applications are paid entirely by the University if the University takes title to the invention.

What are patent claims?

Patent claims represent the specific novel elements of your invention. Claims are most important since they are the legal definitions of the invention.

How are revenues distributed?

If licensing income is generated, royalties are usually divided between the inventor [33%], the inventor’s department [33%] and the University [33%]. Please see University policy for further information.