Disclosing Your Invention
The Office of Innovation and Industry Engagement (IIE) is a service department of Michigan Technological University established for the purpose of protecting both patentable and unpatentable technology developed by personnel of the University, and assisting such technology to the marketplace. The first step of providing this service begins with the preparation and submission of an Invention Disclosure form.
At the time of their employment, all employees become subject to the University's Patent Policy. This policy requires that inventors disclose any inventions they create during the course of their employment or otherwise with the use of University funds, equipment, facilities, or other personnel of the University, and assign those inventions to the University.
Preparing your Invention Disclosure:
It is important to disclose your invention as soon as possible so that the inventors, the University, and the necessary legal counsel can begin to develop a commercialization and licensing strategy. Early disclosure and effective communication are also helpful in dealing with potential problems related to publications or other public disclosures which can seriously compromise or even eliminate the possibility of acquiring a patent. It is not necessary to wait for the final or ideal form of the idea to be developed, but rather a disclosure should be filed as soon as the inventors have the first outline of a conceived invention. Additional material can be added as details are worked out. In addition to the disclosure itself, inventors should keep excellent records of their activities in the lab, and these records should be dated, signed, and witnessed.
Specific information required to complete the invention disclosure form includes:
- Who are the inventors? The disclosure should be submitted with titles of all known or suspected inventors, whether they are at Michigan Tech or elsewhere. Inventorship is a legal determination that will be made more formally through the patent process but a good starting point is essential. Individuals who have tangibly contributed to the invention are inventors. Individuals acting on the instructions of inventors but not providing intellectual input to the invention are not likely inventors. Any questions about inventorship should be presented with the disclosure and should be resolved as early in the process as possible.
- Was the invention created under any funded project or contract of any form? Many research contracts contain intellectual property provisions that relate to how intellectual property is handled. The Federal Government has procedures for disclosing inventions created under Federally funded projects. If these procedures are not followed, Michigan Tech's ability to receive funds for Federal projects may be substantially compromised or eliminated.
- Are there any past publications on the subject covered in the disclosure, or are there any plans for publishing? The first date of public disclosure is very important from a patentability perspective. Most importantly, foreign patent protection cannot be obtained after any public disclosure and a U.S. patent must be filed within one year of public disclosure. Knowing dates of past or planned disclosures is very important in the patenting and licensing strategy for any technology. IIE recognizes that publishing is essential for most academic professionals and makes every effort not to inhibit the dissemination of knowledge as part of the technology protection strategy.
- Do you have any drawings? Diagrams and sketches of the proposed invention are very important to the documentation. These documents should be signed, dated, witnessed and attached to the invention disclosure whenever possible.
- Who are the potential customers? Information relating to potentially interested customers is very important. Studies have determined that as much as 50% of the licenses for university technologies are completed as a direct result of the professional relationships of the inventors.
As the majority of IIE's activity is related to patents, the following summary follows the flow for patentable technology. The process is similar for other technologies, such as copyrightable software, but is generally shorter as the investments are typically lower, and the markets are generally more clearly defined.
IIE staff, Michigan Tech's IP counsel, review the disclosure and communicate with the inventors to provide a preliminary determination of the need and potential for protecting the technology and the approximate market potential. If a patent seems appropriate and potentially achievable, and if the technology appears to have enough market potential to justify the expense of patenting, licensees are sought and patent filings are made. Licensees are commonly identified by the inventors themselves as they likely have experience in, or knowledge of the market they are seeking to enter. On average, 50% of technologies licensed by universities in the United States are licensed through direct contacts of the inventors.
After a licensee is identified with significant interest, IIE staff works with the Licensee and Michigan Tech's Intellectual Property Counsel to prepare, execute and enforce the terms of license agreements. IIE also disburses royalty payments received to inventors and their department per University Policies.
The above description presents a simplified description of a process that can become involved and time consuming. While active involvement of the inventors is generally an important component of a successful commercialization strategy, IIE provides significant support for the process so that inventors can participate where needed, but otherwise focus their efforts toward furthering their individual research and teaching goals.