Chapter 11. Intellectual Properties/Trademarks

11.3. Disclosures

Disclosures: A process of submitting an invention disclosure form for all potentially patentable or otherwise protectable discoveries or inventions.

It is important to disclose clearly everything about the invention. If in doubt as to whether to include an item of information, put it in.

The statutory provision that mandates the inclusion of all this information in the patent application is Section 112 of the patent laws, paragraph 1, which reads as follows:

"The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out the invention."

It is the responsibility of the individual faculty/staff member to file a disclosure form with Corporate Services. Corporate Services will then take one of three actions (acceptance, provisional acceptance, or rejection), after receiving each disclosure. The inventor(s) will be notified of initial action within (approximately) sixty days after Corporate Services receives the disclosure.

Provisional acceptance of a disclosure may be made when the disclosure has significant interest from industry and/or is generating significant research support. Provisional acceptance will also be made of disclosures which, in the judgement of the committee, are potentially patentable or otherwise protectable, but do not yet have sufficient documentation and/or development and, cannot be expected to within the time frame of a patent search. Such acceptance will also apply to disclosures that, in the judgement of the committee, do not clearly indicate the scientific/technological base of the disclosure and/or its economic significance. A status of provisional acceptance shall apply for a maximum of one year, at which time the disclosure will be either accepted or rejected.

Rejection of the disclosures will be made in those cases where Corporate Services and/or the committee determines the University will have insufficient interest from industry, in developing the disclosure to a patent stage, or the disclosure is not patentable. Upon this decision, the disclosure is returned to the inventor, thus allowing the inventor to apply for a license on their own.

A faculty/staff member who has made a potentially patentable discovery or invention, should do the following:

1. Complete an Invention Disclosure form available from Intellectual Properties' Web site or by contacting Corporate Services by calling 7-2228.



2. When the form is completed, sign the form and have it witnessed by a technically competent person within the field that understands the technology.



3. Send the original copy to Corporate Services.

Corporate Services will acknowledge receipt of the disclosure and inform the faculty/staff member when a review will take place.

The faculty/staff member may be required to prepare additional material for proper review of the disclosure to occur.