For Inventors

The typical process of Research to Commercialization usually involves the following: 

  • Perform Research and Develop Innovation: Inventors
  • Submit Invention Disclosure: Inventors
  • Assessment and Decisions on Filing Patent Application: IP Committee
  • Filing Provisional Patent Application and Non-Provisional Patent Application: DIPP
  • Identifying Potential Licensees: Inventors and Office of Technology Development
  • Negotiation and Licensing for Commercialization: DIPP, Office of Technology Development, and Legal Affairs

 

Guidelines and Protocol to Process Invention Disclosures and Patent Applications

The IP committee reviews (1) reports regarding invention disclosures to ascertain whether provisional patent applications should be filed on the disclosures, (2) reports relating to conversion of provisional patent applications into full (non-provisional) patent applications, and (3) other issues related to patent portfolio management and licensing. The IP Committee shall receive a technical/marketing assessment report for all invention disclosures as well as a commercialization assessment report (where applicable) for provisional patent applications for potential conversion to full applications, along with recommendations from subcommittees as customized for the specific areas. 
 

IP Processing Protocol

The IP processing protocol is outlined below.

  1. Invention Disclosures are filed online through the Office of Research website.
     
  2. All invention disclosures are preliminarily reviewed by the Assistant General Counsel for Patents and Intellectual Property and the Manager, Patents and Licensing Administration for completeness of the information. This group solicits any additional information, and then assigns to an IP Technical Review Subcommittee depending on the technical area of the invention.  Pending provisional patent applications are assigned to an IP Technical Review Subcommittee depending on the technical area of the provisional patent application.  The IP Technical Review Subcommittee should include:
    • Assistant General Counsel for Patents and Intellectual Property
    • Manager, Patents and Licensing Administration
    • Dean Designated Faculty representative from the respective College/School
    • Additional ad hoc Faculty representative(s) to cover specific technical area(s) as assigned by the Vice Provost for Research
       
  3. The IP Technical Review Subcommittee shall provide a technical/marketing assessment report for an invention disclosure, and a commercialization assessment report for a provisional patent application for potential conversion to a full patent application, along with its recommendation for consideration to the IP Committee, and recommendations for other issues relating to patent portfolio management and licensing. The IP Technical Review Subcommittee may call the inventor(s) for a brief presentation to the IP Committee for review and assessment, and may also engage the services of independent consultants as appropriate.
     
  4. The IP Technical Review Subcommittee shall be assigned within one week of the completion of the invention disclosure, and within six months of the filing date of the provisional patent application.
     
  5. The IP Technical Review Subcommittee shall meet within two weeks of the assignment and submit its technical/marketing assessment report or commercialization assessment report, and recommendation within three weeks of the assignment.
     
  6. The IP Committee shall meet every month to review and discuss status of the invention disclosures, provisional patent applications, full patent applications, and any related patent portfolio management and licensing issues.


Other Provisions

  1. Timelines for the IP Technical Review Subcommittee may be relaxed or extended depending upon the availability of members and complexity of the issues involved.
     
  2. In the event that the IP Committee determines not to proceed with the filing of a provisional application or a full patent application, inventors shall be notified by the Manager, Patents and Licensing Administration in writing promptly but not more than 15 days from the date of the IP Committee’s decision.