I have an invention. What do I need to do?
The first step in protecting the discovery is to contact the Office of Innovation Management. The Office of Innovation Management will help submit a completed Intellectual Property Disclosure Form.
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What is an invention?
A patentable invention is a new, useful and non-obvious: Process, machine, composition of matter, article of manufacture, an algorithm or, any new and useful improvement to the above. If you think your idea may qualify, please call the Office of Innovation Management and we can help.
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Can oral presentations or public disclosure affect patent rights?
Yes. The following events may have the same effect as a publication in that they bar foreign rights and require any US patent to be filed within one year. Depending on the circumstances, the following may constitute public disclosure:
Any public disclosure such as an oral presentation or poster presentation, the invention was sold or offered for sale, the invention was used commercially, the invention was publicly displayed or used, or disclosed to colleagues in absence of a confidentiality agreement.
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What constitutes a publication?
Many factors determine whether a written description of the invention constitutes a publication under patent law. Depending on the circumstances, the following may constitute publication: a manuscript published in a journal or book, a thesis (after it is catalogued), a funded grant application which discloses the invention and is published, a published abstract which discloses the invention, a class handout which becomes publicly available or any description of the invention which is published on-line.
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How will a publication affect patent rights?
Unfortunately, if you publish your discovery before a patent application is filed; all foreign patent rights will be lost. However, you still have a one year grace period to file for US patent protection.
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What about publications?
Generally, a patent application should be filed before your manuscript is published. This can take the form of a provisional patent application which protects the technology for one year at minimum cost. And, it can usually be completed quickly so it can be prepared and filed even after you’ve submitted a manuscript for publication.
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How do I get copies of patents?
There are several ways to get complete copies of patents. You can either contact the United States Patent and Trademark Office or contact a commercial document supplier. Please note that you will need to know the exact patent numbers in order to obtain copies.
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Who signs the license agreement?
The President of the University signs the license agreement on behalf of the University.
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