Inventions/Disclosing Your Inventions
What is an Invention?
An invention is a development that is a new, useful, and unobvious process, machine, algorithm, manufacture, or composition of matter, or any new and useful improvement thereof that has been "reduced to practice."
Who is an Inventor?
An inventor is anyone who actually conceives an invention and/or has contributed to conception of an invention with another inventor. All inventors need not make equal contributions. Inventorship is a legal determination made by a patent attorney and is not the same as authorship on a scientific paper. For US patent law purposes, an inventor must have contributed to at least one claim of the patentable invention to be considered an inventor.
What is an Invention Disclosure?
An invention disclosure (also known as a record of invention) is a formal communication by faculty and graduate students to the Office of Technology Commercialization (OTC) of any invention they have developed at UCR under which (a) the invention is conceived or developed with the use of gift, grant, or contract funds administered by the University, or; (b) the invention is conceived or developed with the use of University facilities or other resources, not including the use of university facilities such as an office desktop computer or; (c) the invention is conceived or developed in the course of the faculty member's university activities, or; (d) the conception or development of the invention incurs University obligations to a third party.
Concerns regarding publications and Invention Disclosures?
Due to restrictions on patenting, if an invention disclosure is made to the OTC after it has been publicly disseminated in an enabling way, (such as fully described in a seminar or a printed publication), then patent rights outside of the United States are generally not available. Under the new laws implemented by the American Invents Act in the United States, a publication before the filing of a provisional application could jeopardize the patent rights in the United States. Therefore early disclosure is highly recommended. The optimal time to disclose is after the invention has been conceived and initial data is available, but before it has been publicly disclosed. A public disclosure may be a presentation, paper, abstract, or online disclosure.
What happens after I make an Invention Disclosure to OTC?
After a disclosure is received by OTC, federal and other sponsors of the research that lead to the invention are notified (as is required by law or contract), and the disclosure is assigned to a member of the licensing staff. The licensing officer assigned the invention disclosure becomes the primary contact person for the inventor and manages the processes of: (a) determining the invention's ownership, third party rights and obligations, (b) evaluating the invention's commercial and patent/copyright potential, (c) assessing licensing prospects, and (d) prosecuting patents.
The OTC will conduct analysis of the patentability and license ability of the invention. The licensing officer responsible for the invention will try to find a good way to commercialize the invention for the benefit of the public while generating university income for education and research. After discussing the invention with the inventor(s), the licensing officer will typically contact prospective licensees with a non-confidential description of the invention. A prospective licensee that is interested in learning more about the invention may then sign a confidentiality agreement prepared by the OTC in order to speak with the inventor(s) in confidence and review confidential information about the invention, such as a scientific manuscript, drawings, working prototype, etc.
Will my invention be patented?
After a patentability analysis by OTC, the licensing officer in charge of the Invention Disclosure has the discretion to file a provisional patent application that is good for one year. The costs of filing a provisional patent application are typically covered by OTC.
However, in order to best manage the costs and risks inherent in patent applications, the OTC typically will not file a non-provisional patent application until it has first found a committed licensee, and then it will file the non-provisional patent application at the licensee's expense. In this way, OTC minimizes its financial exposure, conserves campus funds for research, and patents those inventions with true commercial potential as demonstrated by actual market demand. In addition, this strategy allows the licensee to participate in drafting the patent application so that the patent claims better support the licensee's specific business needs.
In some circumstances, the OTC will file an "at risk" patent application (i.e. no licensee to pay patent costs). Such filings are usually rare due to the substantial amount of money and risk that OTC must incur to file such "at risk' patent applications. OTC will make an "at-risk" filing if from its business analysis of the invention, OTC is lead to believe there is an excellent probability that a future license will result.
How much does filing a patent application cost?
The cost of filing a provisional application is in the range of $1500-$2500 dollars, while the cost of filing a non-provisional application can be in the range of $15,000-$50,000 dollars for US patent rights alone. Meanwhile, a foreign equivalent can cost, over its lifetime, up to $200,000 or more (possibly as much as $500,000). Therefore, while OTC may be able to absorb the costs of filing provisional applications, absorbing the costs of filing an "at risk" non-provisional application would be an extremely tenuous position financially for OTC to maintain - even for a small percentage of non-provisional applications at best.
Where can I find the Invention Disclosure Form and who do I file it with at OTC?
Please find the UCR Invention Disclosure Form on our forms webpage.
Please send the fully completed Invention Disclosure Form to Judy Swineford at (firstname.lastname@example.org).