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Patent FAQ

What is an invention?
When and how do I disclose?
Where can I get a disclosure form?
Does disclosing to the OTM protect my invention?
Can I disclose & publish?
How far in advance of publication do I need to disclose?
Who owns the invention?
How does the OTM decide what to patent?
What if the OTM doesn’t pursue patenting?
If a technology is licensed, what is my share of the revenues generated?
How does the OTM handle software?
After I disclose, how involved am I in the process?
What other services does the OTM provide?

An invention can be “anything under the sun” made by man, as long as it is new and useful. Inventions may include many types of discoveries and technological innovations, such as processes, methods, machines, articles of manufacture, devices, chemicals, and compositions of matter.

Almost all research conducted on this campus can lead to inventions that may be patentable. A few examples are:

• Engineering: laboratory instruments, machinery, semiconductors & chips, manufacturing techniques, process improvements, nanotechnology, circuits, sensors, lighting, filtration, and micro-devices.
• Agriculture: grain and food processing, germplasm and plant varieties, equipment and devices, transgenics.
• Biotechnology: new genes and their function, promoters, genetic markers, gene transfer methods, expression vectors, and microorganisms.
• Chemistry: new compounds, new drugs, drug targets, drug design, separation methods, coatings, additives, superconductors, metals, polymers, and fuel cells.
• Software and Algorithms: methods and processes in computer programs, operating systems, networking, data mining and storage, security, and supercomputing.

An invention should be disclosed when something new or useful is conceived or developed. To disclose, fill out a disclosure form and submit it to the OTM. The purpose of the disclosure form is to provide a written, dated record of your invention disclosure and to provide information that will allow your technology to be evaluated in terms of its commercial potential. Disclosures must contain the inventor and unit head’s original signatures.

There are two different disclosure forms––one for software and copyrighted works and one for patentable technologies. Only one form needs to be completed.

No, not by itself! The only way to protect a new invention is by filing a patent application with the United States Patent and Trademark Office. Disclosing to the OTM only provides documentation in support of a patent filing if there are questions about when an invention was first conceived.

Yes. Disclosing to the OTM does not preclude publication, and will not alter your publication timetable. The OTM will not stop or delay individual publication plans. However, publication or any other public disclosure of your innovation (including conference presentations) before filing a patent application limits the number of countries in which patent protection will be available. Note, disclosure to the OTM is confidential. It is not considered a public disclosure for patenting purposes.

It is best to disclose to the OTM at least 8-12 weeks before publication so that, if necessary, actions can be taken to preserve both U.S. and foreign rights. If that timetable cannot be met, please contact the office to discuss possible options.

The University has the right to own inventions created by University faculty, staff and anyone using University facilities and resources. The Bayh-Dole Act of 1980 determined that the University retains title to intellectual property created using Federal funding. With this ownership comes the responsibility for patenting and pursuing opportunities to bring innovations into the public arena.

For every disclosed technology, the office conducts a process of business analysis that determines when pursuing patent protection is appropriate. This analysis focuses on the business case for the technology and includes research into potential markets, the strength and scope of intellectual property protection, and the technology’s stage of development.

If the OTM decides not to pursue patenting and commercialization of an invention, it will release the University’s ownership rights back to the inventor. If the invention was created using Federal funding, release to the inventor requires the approval of the Federal agency.

The inventor receives 40%, the inventor’s department receives 20%, and the Office of the Vice Chancellor for Research receives 40% of the revenues (after expenses). If there is more than one inventor, the revenues are shared between them with a split they determine. If there is more than one affiliated department, that portion of the revenues is also share.

In general, the University owns copyrightable works, including software, unless the copyrightable work is a “traditional academic work” (e.g. manuscript, thesis, textbook, or course content). University-owned software and copyrightable works are reviewed for commercial potential in the same way that patentable inventions are reviewed. For more information, see the related brochure Transferring University Software and Copyrighted Works.

The inventor’s active involvement is important in all stages of the commercialization process to enhance the chance of successful technology transfer. The inventor provides information and feedback during the evaluation and when patenting is pursued. For commercialization, the inventor’s role could include meeting with potential licensees, helping formulate a marketing strategy, and supporting implementation of the technology with the licensing company.

The OTM can help negotiate many types of agreements involving the transfer of University inventions and technologies to others. Examples include outgoing material transfers, confidentiality, evaluation and testing agreements.