Invention disclosure: #2 in the 8 steps of technology commercialization
An inventor’s first step in the commercialization process is to submit an invention disclosure. This is the beginning of a relationship between a researcher and OTC. By submitting an invention disclosure, the inventor enables OTC to offer assistance and support throughout the commercialization process if the university asserts its interest in the technology.
- How do I know if I should file an invention disclosure?
An invention disclosure should be completed and submitted for any inventions, discoveries, research tools, processes, know-how, or software that may solve a significant problem and/or have significant value. The invention does not have to be “market ready.”
Regents’ Rules, and often the research sponsor as well, require that an inventor of intellectual property disclose any invention subject to ownership by the university if he or she believes that there may be commercial potential.
- What is the purpose of an invention disclosure?
An invention disclosure is a confidential description of an invention submitted by the inventors to OTC to initiate the commercialization process. The invention disclosure addresses technical aspects of the technology, such as the science behind the invention, its advantages over prior art, its potential drawbacks, and its scope of use. In addition, the invention disclosure addresses legal matters (such as IP ownership and encumbrances). By submitting a disclosure, the inventor enables OTC to offer assistance and support throughout the commercialization process if the university asserts its interest in the technology.
- How do I submit a disclosure?
Invention disclosure forms and instructions are available in Word format in the “Forms for Inventors” section of this website. Inventors should save the appropriate Word document to their computer, complete it, and send to OTC in electronic form, followed by a hard copy with inventors’ signatures. Inventor forms are updated regularly—the newest version of each form will be found on the "Forms for Inventors" page.
It’s important to fill out the invention disclosure completely—especially inventor information, since the requested information is required by the U.S. Patent and Trademark Office. If you have questions about the invention disclosure form, contact OTC’s patent administrator.
- When is an invention ready to submit to OTC?
Submit an invention disclosure as soon as you determine your invention is potentially patentable or may have commercial value. Regents’ Rules, Rule 90101 require inventors to submit an invention disclosure “…before [it] is disclosed to any party outside the UT System, to the public generally, or for commercial purposes, and before publishing same.” If in doubt, contact a licensing specialist at OTC to discuss your invention.
In any case, submit an invention disclosure at least 60 days before publishing or presenting the invention. Inventions that are publicly disclosed before a patent application is filed may lose patent protection outside the United States.
- What is considered a public disclosure of an invention?
Anything that is readily available to the public (a journal paper, abstract, conference presentation, poster session, publication on the Internet, non-confidential research proposal, press release, even a dissertation indexed at the library) that describes the basic ideas in enough detail that someone of ordinary skill in the field would be able to make and use the invention.
Showing or telling these ideas to a person who is not an inventor of the technology and not bound by a non-disclosure agreement may also constitute disclosure, as does selling or offering for sale a prototype of the invention.
Note: If your invention is a result of industrial sponsored research or collaboration, the sponsored research agreement (SRA) may contain a contractual requirement giving the sponsor a certain period of time to review the publication prior to public release.
- If I publicly disclose an invention and have not yet submitted an invention disclosure, have we lost patent rights?
Yes and no. U.S. rights may not be lost if the public disclosure was within the last year; most foreign rights are lost upon first public disclosure or publication. In the United States, the U.S. Patent and Trademark Office allows one year from the date of first publication or public disclosure in which to file for a patent.
- Who should be listed in the invention disclosure as a contributor?
All contributors to the ideas leading to an invention should be listed in the disclosure—including the principal investigator, research assistants, students, staff, visiting scientists—whether or not they are not UT Austin employees.
- If the invention resulted from industry-sponsored research, do I still have to submit an invention disclosure to the university?
Yes. You must still submit an invention disclosure to OTC and make sure that it includes a complete listing of sponsors for that research. OTC will notify the sponsor in accordance with the sponsored research agreement (SRA) and conduct communications with the sponsor relevant to the sponsor asserting any rights in the invention.
In the case of inventions resulting from federal funding, the principal investigator or responsible manager must inform OTC of these arrangements in the invention disclosure; OTC handles government reporting with respect to patenting activities. If the university does not seek patent protection for the invention, then the sponsoring agency may choose to do so.
If the SRA gives a sponsor the right to license, this will generally preclude OTC from taking any independent actions with respect to licensing the invention unless the sponsor declines to assert an interest in the invention.
- Are there other reasons the university might not be able to take independent action on a disclosed invention?
Yes. Other third-party arrangements at times give third parties interests in patenting and/or licensing university inventions. Examples may include:
- Material transfer agreements
- Collaboration agreements
- Memoranda of understanding (MOUs)
- Joint study agreements
- Pre-existing license agreements
For this reason, it is important that the principal investigator or responsible manager include in the invention disclosure a complete listing of any third-party relationships.
If an invention was jointly developed with another research institution or a company, regardless of whether an agreement is in place with that other entity, the fact of joint ownership will affect how the invention is handled by OTC:
- On jointly owned inventions with other research institutions, if there is not already an agreement in place governing how the invention will be handled, OTC will typically enter into an “inter-institutional agreement” with the other institution that covers who will take the lead in prosecuting the patent and marketing the invention, how patent expenses will be handled and how commercialization proceeds will be shared between the institutions.
- On jointly owned inventions with commercial firms, the sponsored research agreement will generally govern the payment of patent costs and the rights of the sponsor to obtain a license to the technology. If there is no sponsored research agreement in place, then OTC will work with the co-owner to establish an arrangement with respect to patenting and marketing/licensing of the invention.
- Should I submit an invention disclosure for an invention that was jointly developed with another academic institution or a commercial firm?
Yes. In that case, UT will have a co-ownership interest. You should submit an invention disclosure with the signature of the UT principal investigator and all UT inventors. Obtaining signatures of non-UT inventors is strongly recommended, but not required for OTC to process the disclosure.
- If I have already completed the invention disclosure form from another research institution that is a co-owner of the invention, do I still need to complete an OTC invention disclosure?
Yes. There is rarely, if ever, a one-to-one correlation of information on invention disclosure forms from different institutions. However, in completing the UT Austin invention disclosure, it is acceptable to attach the completed form of the other institution and cross-reference it as appropriate.
- Do I need to complete an invention disclosure for software?
Yes. Regardless of the mechanism of distribution of the software (commercial, open source, or dual licensing), creators wishing to distribute software should submit a software disclosure form. Note that software disclosures are assessed from the point of view of copyright protection, not patent protection. Some software development will also contain patentable material; if this is the case, inventors should also complete, sign, and submit a physical sciences disclosure form. The two disclosure forms, software and physical sciences, should reference each other. OTC will discuss IP protection strategies with the principal investigator or responsible manager.
- What happens after an invention disclosure is submitted to OTC?
After receiving an invention disclosure, OTC will contact the inventor(s) and provide the UT Austin file number assigned to the invention disclosure. Based on the nature of its science, each invention is assigned to a licensing specialist according to industry sector.
- Why would OTC request that I provide more enabling data?
Patent law requires that the patent application include a technical specification that contains a “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 his invention.” A mere concept is not enough to fulfill the “enablement” requirement.
If the inventor does not have enough data to support enablement, the responsible manager will be notified, and the OTC review process will be temporarily suspended until the inventor has sufficient data. If the period of suspension is greater than 90 days, OTC will close its file on the invention. Closing the file does not preclude the inventor from later submitting a new disclosure when s/he has further enabling data.