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Patents & Inventions

Ownership of Inventions

The University has the right to own inventions made by its faculty, staff, students, or others using University resources such as facilities, equipment or funds controlled by the University.

Determination of University ownership rights in an invention requires a thorough evaluation of the facts and circumstances. Following evaluation by the OTM, the inventor receives a written statement of the University's decisions regarding its ownership interest.

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See the General Rules, Article III, Section 5
See the Statutes, Article XII, Section 2
See the General Rules, Article III, Sections 7(c) and 7(d)

Invention Disclosure

An invention should be disclosed when something new and useful is conceived or developed, or when unusual, unexpected, or unobvious research results are achieved. Prompt disclosure is important to avoid possible loss of patent protection. If there are questions concerning the University's ownership interest in an invention, the invention should be disclosed.

The University uses a standard Invention Disclosure Form, available directly from the OTM or via its homepage. The information requested is to ensure the disclosures are complete, fully documented, and properly submitted. Before submission to the OTM, the form should be routed to, reviewed, and signed by the inventor's Unit Executive Officer.

There is an Invention Disclosure Form for potentially patentable inventions. A Software Disclosure Form is also available for computer programs that will be protected by copyright when patent protection is not available or not necessary to commercialize the software.

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See General Rules, Article III, Section 7(a) and 7(c)
Invention Disclosure Forms

Inventorship

Inventorship has a strict legal meaning under the U.S. patent law. Not all authors of a manuscript describing the invention qualify as inventors. Supervisors and people who worked to reduce the invention to practice do not necessarily qualify as inventors either. Only those who have made essential, independent, conceptual or reduction to practice contributions to the ultimate working invention are legal inventors.

Although preliminary determinations of inventorship are made during the invention disclosure process, legal inventorship cannot be officially determined until after the patent application is prepared and the scope of the invention (defined in the patent claims) is determined. Inventorship can change even during the evolution of the patent application process, as the scope of the claimed invention changes. The OTM retains outside patent counsel who make the final determination regarding inventorship.

In cases where individual contributions do not satisfy the stringent criteria of inventorship, recognition of an individual's valuable contributions to inventions may occur through a sharing arrangement. See Proceeds Distribution section.

Publications, Presentations & Patentability

To qualify for patent protection, patent law requires that an inventor promptly file a claim to the invention. According to the laws of most foreign countries, the inventor must recognize the value of the invention and "stake a claim" to it by filing for patent protection before the invention is made known to the public. Otherwise, the published invention is dedicated to the public and free for anyone to use and benefit from.

While the laws of most foreign countries preclude filing a patent application after a publication, the U.S. laws are more lenient. There is a one-year grace period after publication during which a U.S. patent application can be filed. For a publication to bar patenting, it must disclose enough information to "enable" someone with knowledge or skill in the subject matter to make and use the invention.

Publications under U.S. laws and most foreign laws include more than the traditional printing of manuscripts and books. Publications can include presentations, abstracts, conference proceedings, poster presentations, lecture notes, grant applications, dissertations, theses, handouts, non-confidential correspondence, e-mails, slides (in some situations), offers for sale, and information made available on the Internet.

Inventorship is a legal issue. It is not necessarily reflective of academic contributions.

Publications and other disclosures can prevent patenting.