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Office of Technology Transfer
 
 

Frequently Asked Questions

FAQ's Regarding Invention Disclosure, Reporting and Commercialization 

1.    What is an invention disclosure?
2.    When do I need to submit an invention disclosure?  
3.    How do I know if my discovery is patentable?
4.    How is inventorship determined?  
5.    When can I expect to a phone call/meeting after I submit an invention disclosure?  
6.    What is the process for assessing an invention disclosure?  
7.    What is the timeline for: the patent process, the marketing, process, the licensing process, and the commercialization process?
8.    What is the role of the inventor(s) in: the patenting process, the marketing process, the licensing process, and the commercialization process?
9.    What is the Rice University Policy Regarding Ownership of IP?
10.  What is the Bayh Dole Act and how does this govern my invention disclosure?  
11.  What happens when an invention is publicly disclosed?  
12.  What constitutes a public disclosure?  
13.  What is prior art?  
14.  What is the royalty sharing policy?  
15.  How does the university benefit from technology transfer?  How do the inventors benefit?
16.  How are Assignments, Declarations and Power of Attorney Forms used in the Technology Transfer process?  
17.  Why must an up-to-date Conflict of Interest be signed by inventors?  

1.    What is an invention disclosure?

Written notice of the invention is forwarded to the OTT and begins the formal process.  Disclosure is made by completing the Rice Invention Disclosure Form (available on the Rice University OTT page), and by including any supporting documentation with that form.  The invention disclosure can be submitted electronically to techtran@rice.edu

The Invention Disclosure is a confidential document and should fully document your invention so that all options for commercialization may be evaluated and pursued.  It is imperative that the entire document be completed and that the correct sponsor information be included on the disclosure. Failure to do so may severely hamper patenting and commercialization of the invention.

 

2.    When do I need to submit an invention disclosure?

An invention disclosure should be submitted before publicly presenting or publishing the details of an invention or putting the invention into use. Therefore, it is recommended that inventors disclose early so that proper action may be taken to protect the invention and its commercial value.  It is important to understand that by making a public disclosure prior to filing a patent application the inventor may severely limit the ability of Rice OTT to obtain patent protection, particularly in foreign jurisdictions, and may reduce, or even negate the commercial value of an invention.

 

 3.    How do I know if my discovery is patentable?

In order to be considered patentable an invention must meet several requirements.  These requirements are that the invention be:

  • New (also known as the Novelty requirement):The invention must not be duplicative of "prior art" (inventions). Prior art may be an offer for sale, the use of the invention,or a publication or patent.  A prior art search is done to determine whether there are issued patents, published articles or other published information capturing major features of the invention in question.
  • Useful: The subject matter of the invention must have a useful purpose and be operative.  An invention that is inoperative is not considered to be a useful invention.  The utility of the invention must be disclosed in the patent application.
  • Non-obvious:  An invention must not be obvious to a person having ordinary skill in the art to which the invention pertains.

 

 4.    How is inventorship determined?

U.S. Patent law defines an inventor as an individual who contributes to at least one patent claim. If inventors are intentionally named to a patent erroneously or are omitted, the patent can be invalidated. Only those persons who made an inventive contribution to the claimed invention may be listed as inventors.

It is important to understand that during prosecution of the patent by the patent office, the claims may need to be revised by patent counsel.  Therefore, the original inventors listed on the invention disclosure may change, depending upon which claims are allowed and who actually contributed to those allowed claims.The final indication of inventorship is determined when the patent issues. Since only those claims allowed will be reflected in the patent, only those individuals who counsel has determined contributed to the claims allowed by the patent office will be considered inventors.

Inventorship is not the same as authorship.  An inventor,as stated above, is someone who contributes to the conception of the invention. For example if someone merely demonstrated that the invention actually works or carries out tests that reduced the invention to practice, without making an inventive contribution to the conception of the discovery,then he or she is not an inventor. However this individual may be included as an author on a research paper resulting from the work, along with all the other people who may have contributed in a similar manner to the work.

 

 5.    When can I expect to a phone call/meeting after I submit an invention disclosure?              

You will be contacted within a week by the OTT after you have submitted a disclosure.  A telephone conversation or a meeting to discuss the details of the invention will be scheduled at that time.

 

 6.    What is the process for assessing an invention disclosure?

The OTT will conduct an initial screening of the invention disclosure, conduct patent searches (as applicable) and analyze the market to determine the competitiveness of the disclosed technology and its commercialization potential.  The OTT may contact the inventors during this process to discuss details of the invention and potential IP strategies. Once a patenting decision has been reached, the licensing officer will communicate the decision to the inventors. The evaluation can take between 4-6weeks to perform.

 

 7.     What is the timeline for: the patent process, the marketing, process, the licensing   process, and the commercialization process?

The patent process will commence after the OTT has reviewed the invention disclosure and conducted the necessary research that would recommend patent protection.   It is important to understand that the timeline for patent prosecution at the United States Patent and Trademark Office can vary considerably, from a few months to many years, depending on the complexity of the patent, the field of invention, and the number of amendments or responses that must be filed or considered. The inventor will be a valuable resource in the patent protection process and can expect to be contacted by the OTT officer and patent counsel to discuss details of the prosecution strategy.

The commercialization process, as expected, can also vary and is dependent upon many factors, including the stage of the invention development, the ability to find a suitable licensee, and market readiness or commercial potential of the invention.  In some circumstances an invention that may be strong technically and market ready, will attract no potential licensees if they have settled upon another standard or technology.

Once an invention is licensed, it may take several years to seethe first commercial product.  This is largely dependent up on the field of the invention, with those made in life sciences having the longest timeline (5-10 years).  Other fields have a shorter time to market. The OTT officer will keep you informed of commercialization progress made by licensees of your invention.

 

8.         What is the role of the inventor(s) in: the patenting process, the marketing process, the licensing process, and the commercialization process?

Inventors are involved in the patenting process, making valuable contributions in explaining and refining detailed elements of the invention.  This information is crucial in developing the prosecution strategy for the patent application. 

Inventors are often actively involved in the marketing phase of the commercialization process, assisting in the identification of candidate companies that may have the interest, expertise,resources and distribution networks to successfully bring the technology to market. 

The Rice University Office of Technology Transfer may, from time to time, consult with the inventor regarding the licensing process,although this is not frequently required.  After the technology is licensed the licensee may benefit from consultation with the inventor so that the commercialization of the technology is successful.

 

 9.    What is the Rice University Policy Regarding Ownership of IP?

All patentable inventions conceived or first reduced to practice in the conduct of University research by full time, part time or visiting faculty, postdoctoral researchers, staff and/or students of Rice (defined in these policies as University researchers) shall belong to Rice University. For the purpose of this patent policy, University research includes all scholarly research conducted in the course of the inventor(s) University employment including performance of research sponsored by the University or an external agency/corporation or with University facilities or resources.

Although not explicitly described elsewhere in this document,inventions (and other intellectual property) developed by any Rice employee during the course of non-research activities of the University shall also belong to Rice University.

Rice University shall have sole right to determine the disposition of such inventions. In making such a determination the University will act in a manner, which in the judgment of the University, is in the best interests of the University, its inventors, its research sponsors and the public.

 10.  What is the Bayh Dole Act and how does this govern my invention disclosure?

The U.S. Bayh-Dole Act of 1980 allows universities and other non-profit institutions to have ownership rights to discoveries resulting from federally funded research, provided certain obligations are met. These obligations include making efforts to protect (when appropriate) and commercialize the discoveries,providing attribution to the appropriate federal funding agency in all filed patent applications, submitting progress reports to the funding agency, giving preference to small businesses that demonstrate sufficient capability, and sharing any resulting revenues with the inventors. The Bayh-Dole Act is credited with stimulating interest in technology transfer activities and generating increasing research, technology commercialization,educational opportunities and economic development.

It is important to know that Rice University is required to report all invention disclosures that were made using federal funds within 60 days of receipt of the disclosure.  This notification is made to the sponsoring agency, and it is critical that information provided on the invention disclosure be accurate and thorough.  This information is essential not only in the initial reporting requirements but will be rolled forward and reflected upon all patenting documents and activities.  Failure to comply with these requirements may result in the government exercising its rights to march in (take control of the intellectual property); therefore diligence and accuracy in reporting sponsorship should not be taken lightly.

The government sponsorship declaration that is required to appear on all patents is:

"This Invention was made with government support under (grant/contract) awarded by (Agency).  The government has certain rights in this invention ".

The Principal Investigator must indicate all funding under which an invention was developed at the time that disclosure of that invention is made to the Rice Office of Technology Transfer.   This includes grants from other institutions or entities, the government, and/or industrial sponsors.  She/he is required to acknowledge the completeness and accuracy of the funding information provided in the invention disclosure with her/his signature.  Multiple granting agencies, as well as funding from joint research with collaborating institutions or entities, must be indicated as well.  Finally, it is important to know that at the time of conversion of a provisional patent application to a utility filing, all additional funding relevant to an invention disclosure through new grants, or by virtue of additional inventors contributing to an invention must also be disclosed to the Rice University Office of Technology Transfer.

 

 11.  What happens when an invention is publicly disclosed?

This sets the clock ticking for filing a patent in the U.S.where you have a one-year grace period after the public disclosure in which to file a patent.   In Europe, a public disclosure is an absolute bar (prohibition) to patentability. Japan gives a six-month grace period for filing a patent if the public disclosure was a presentation at a scientific meeting.

 

 12.  What constitutes a public disclosure?

"Public disclosure" is not confined to publications in books and technical journals. Poster sessions, slides, lectures, seminars which are open to the public, letters, even conversations can count as a bar to patentability--depending on the country.

In particular:

a.     Any written or oral disclosure, even to a single person, counts as a "public disclosure" in most countries--unless the information was conveyed under the terms of a confidentiality agreement. Disclosures to other employees of the inventors' employer(s) are not considered to be "public disclosures."

b.     In the U.S., the "public disclosure" must be in writing. However, do note that slides at meetings and poster sessions are considered "publications"--as is private correspondence, advertisements, etc.

c.      An "offer for sale" counts as a bar to patenting (after the one year "grace period") in the U.S. Showing your product at a trade show may very well count as such.

Simply announcing that you have made an invention is not a"public disclosure" of the invention. In order to act as a patent bar, the disclosure must be "enabling"--that is, it must teach someone "of ordinary skill in the art" how to actually duplicate the invention.

An offer for sale, even if it does not teach someone how to make the invention, is a bar to patentability (after the grace period) in the U.S., but is not a bar in Europe if it does not "enable".

If you want to discuss your invention with others outside of Rice University you should have the person (or company) sign a confidentiality agreement, agreeing to keep your invention in confidence, before you have the discussion. These agreements are available from the Rice University Office of Technology Transfer.

If you accidentally have made a public disclosure as stated above, you have a one-year grace period after the publication in which to file the patent application in the U.S.

In Europe, a public disclosure is an absolute bar to patentability.

Japan gives a six-month grace period for filing a patent if the public disclosure was a presentation at a scientific meeting.

If you have any questions about the patentability of your invention, please discuss the specifics of the situation with the Rice University Office of Technology Transfer.  The "public disclosure" that worries you may not have been enabling, or there may be some residual valuable, patentable information that you did not disclose.

 

 13.  What is prior art?

According to the United States Patent and Trademark Office prior art includes, but is not limited to, previously patented inventions in the U.S.  For example, a prior art search may also reveal other publicly disclosed inventions that are now in the public domain.  A prior art search should be conducted to determine if your invention has been publicly disclosed, in any form, and thus is not patentable.

 

 14.  What is the royalty sharing policy?

According to Rice University Policy royalty is distributed as follows :

i) 100% to the University until all its out-of-pocket expenses associated with the protection and exploitation of the patent or software have been reimbursed.  Such expenses include fees associated with patent filing and copyright registration and any other continuing costs associated with the licensing or other commercialization of the intellectual property.

ii) Thereafter, income received by the University is distributed as follows: 37.5 % to the inventor(s) or developer(s) (or their heirs)

In the absence of an agreement to the contrary, income will be split equally among the multiple inventors or developers. However, the inventors/developers may enter into an agreement among themselves that specifies a different distribution formula that takes into account the differential contributions of the individual inventors to the invention. This income distribution agreement should be submitted to the Vice Provost for Research at the time of filing of the invention disclosure to the University. In the absence of such an agreement, the University's policy will be equal income payments to all inventors/developers.

18.5 % for graduate education

14% to the organizational unit (the department and/or Center/Institute) listed as the sponsoring unit by the University researcher at the time of invention disclosure or software registration

30% to the University 

Under certain circumstances the above terms of income distribution may be replaced by other terms mutually agreed upon by the inventor(s), the organizational unit, the University, and the external sponsor or a potential business partner. However, any modification in the terms described above must be approved by the Vice Provost for Research and Graduate Studies.

 15.      How does the university benefit from technology transfer?  How do the inventors benefit?

The University and the inventor both benefit from technology transfer in similar ways.  Engaging in technology transfer allows inventions made at the university to be moved to the market for the public benefit.  This activity contributes to economic development and improves the quality of life by making available new technologies that address a need.  Engaging in technology transfer encourages collaboration within the university, between academic institutions, with sponsoring agencies and with industry creating a community of innovation.  Engaging in technology transfer also rewards the inventors and the university monetarily, recognizing their contributions.   Income realized from technology commercialization are utilized to encourage further research and innovation. 

 

 16.      How are Assignments, Declarations and Power of Attorney Forms used in the Technology Transfer process?

Certain forms are required to be signed by the inventor and these help guide the technology transfer process in a way that complies with legislation and university policy. 

The university is obligated, under federal legislation and by Rice University Intellectual Property Policy, to have written agreements with its faculty and technical staff requiring disclosure and assignment of inventions. Specifically, execution ofan Invention Assignment form is required prior to patent filing which obligates the inventor to cooperate in the filing of patent applications and assign ownership rights to the university or other entity, as appropriate.

The inventor is also required to complete a Power of Attorney form as it relates to their disclosure(s), indicating that Rice University has the authority to act on their behalf regarding inventions they have disclosed to the Office of Technology Transfer.  This Power of Attorney is a key document that allows instruction between patent counsel and the university to move forward.

The Declaration for Utility or Design Patent Application is a required USPTO form that identifies the patent application with the applicants, and must give the name,city, and either state or country of residence, country of citizenship, and mailing address of each inventor. It must state whether the inventor is a sole or joint inventor of the invention claimed. The declaration must be signed by all of the actual inventors. 

The Declaration also requires that the inventors assert that they are familiar with all items included within the Patent Application, and will disclose to the Patent Office any information they may have that will help the Patent Examiner determine the patentability of the invention. Anyone who contributed to anyone of the claims may be considered to be an inventor. Failure to complete this declaration accurately and completely will have a deleterious impact upon patentability of an invention.

 

 17.  Why must an up-to-date Conflict of Interest be signed by inventors?

Individuals involved, whether directly or indirectly, with the commercialization of Rice University intellectual property or the formation of companies utilizing Rice University intellectual property will be required to provide a written declaration to Rice University's Office of Technology Transfer of any potential conflict of interest for that particular opportunity. Apparent conflicts will be addressed in accordance with Rice University COI Policy.