When should I disclose an invention to OTC?
Complete and submit an Technology Disclosure Form for any discovery you believe is new, useful, and non-obvious to one “skilled in the art”; that is, knowledgeable of the publically available information that would enable the practice of your invention.
Who is considered an inventor?
Inventorship has a strict legal meaning under US law. Only persons who have independent, conceptual contributions to an invention (and/or its reduction to practice) are legal inventors. So, for instance, one who is carrying out the instructions of another is not considered an inventor. Note also that the authors of a published paper may not be the same as the inventors. An invention must be patented in the name of exactly all its legal inventors, that is, without including any unqualified person nor excluding any qualified person. Incorrect determination of inventors is a basis for invalidating a patent.
Invention disclosures often report work in which more than one person has participated. In such cases, legal principles are used to determine which of such co-workers qualify as legal co-inventors. The most important consideration in determining inventorship is initial conception of the invention. The courts have ruled that unless a person contributes to the conception of the invention, that person did not make an inventive contribution, and is not an inventor. Conception has been defined as “the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice”. An invention is complete and operative “if the inventor is able to make a disclosure which would enable a person of ordinary skill in the art to construct the apparatus without extensive research or experimentation”. This is called “enablement”. In practice, the conceptual contributions which make up an invention typically consist of several inventive steps, possibly contributed by different persons.
In the patent application, each claim represents one of the essential conceptual elements which make up the invention. The legal test of inventorship is whether a co-worker has made an original, conceptual contribution to at least one of the claims of the patent.
For practical purposes in making an invention disclosure, include those who seem to qualify as inventors based on the foregoing information and an understanding that the final determination will be made in consultation with patent counsel if a patent application is filed.
How should I protect my invention?
Prior to filing a patent application
- Keep thorough and accurate notebooks. Having accurate records of daily experiments which lead to your discovery will be invaluable should you ever need to prove your inventorship. Having witnesses regularly date and sign your notebooks makes them even more credible.
- Never discuss the details of your discoveries with anyone outside of the university. A good rule of thumb is to share what your discovery will do, but not how it does it.
- Execute a Non-Disclosure Agreement if you need to discuss enabling details of your work with individuals outside the university. Having a discussion without this agreement in place can destroy your ability to seek foreign patent protection, and limits the time you have to file for a U.S. patent to 12 months. Contact us if you need help putting this agreement in place.
- Execute a Material Transfer Agreement (MTA) if you need to send or receive materials outside the university. This will clearly define your intellectual property rights regarding discoveries made with these materials. Again, contact us if you need help putting this agreement in place.
After a patent application is filed (but prior to its publication by the patent office)
If you need to disclose information about your invention to potential licensees, consider providing a copy of the patent application without the enabling claims included.