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Procedures for Reporting an Invention

A faculty or staff member who makes an invention, should discuss that discovery or invention with the Director of Technology Transfer, Mark Wdowik. At that time, the possibility of patenting will be considered. A student should first discuss an invention with his/her instructor, who will provide assistance in further discussion within the University. The Director of Technology Transfer is available to discuss possible inventions and to assist faculty, staff and students in the preparation of disclosures.

If the invention appears to be a matter that should be considered for patenting, the inventor(s) should prepare a disclosure (Report of Invention) using the Invention Report Form (download a Word 97 file).  The inventor should obtain signatures of his/her Department Chair, and a witness, and should transmit the report to the Director of Technology Transfer for consideration by the Faculty Patent Committee.

The Faculty Patent Committee will promptly review each written disclosure. The inventor or a representative shall be allowed to examine all written materials submitted to the Committee in connection with the disclosure and, upon request, make a written and oral presentation to the Committee concerning the merit of the invention, its commercial properties and the importance of filing a patent application. The Committee will decide on the disposition of the invention to secure the interests of the University, the inventor, the sponsor, if any, and the public. Its decision, which will be based on technical, business and legal considerations, may consist of, but is not limited to, any one or a combination of the following actions:

1. Submit the disclosure for review by a firm or agent knowledgeable with patent or invention management;
2. Make inquiries of potential licensees that may have an interest in the invention, including the financing of a patent application, where applicable;
3. Conduct a patent search concerning the patentability of the disclosure;
4. Apply for a patent with University resources (an option with limited application because of financial constraints);
5. Release University rights to the inventor subject to an agreement to protect the interests of the University, the sponsor, if any, and the public, including an obligation to pay to the University a percentage of future royalties or profits in cases where it is necessary to recognize the University's contribution;
6. Dedicate the invention to the public;
7. Waive further University interest in the invention. Normally, within twelve weeks of the receipt of the disclosure, the inventor will be notified in writing of the decision of the Committee on which action or actions it plans to take. If the inventor is not satisfied with the decision, he or she may request a meeting with the Faculty Patent Committee to reconsider the decision.

If, after a period of one year after the date of disclosure, the University has not filed a patent application for an invention in which it has rights, or has not chosen to license the invention, or not to dedicate it to the public, then upon the inventor's written request the invention, at the Committee's discretion, may be released in writing to the inventor, with the permission of the sponsor, if any. The inventor will be updated regularly on progress toward bringing the invention to the benefit of the public.

In those cases in which the University has obtained a patent without obligation to sponsors, if no arrangement has been made for commercial development within five years from the date of the issuance of the patent, the inventor(s) may request in writing an assignment of the University's patent rights. The Faculty Patent Committee will promptly either grant the request or advise the inventor of the University's plans for the development of the invention.