For Inventors: Frequently Asked Questions
- What is the benefit of disclosing an invention to OTT?
- If I invent something at the University, does it belong to the University?
- Why do I need to sign an IP Agreement?
- I already signed an IPA. Why do I need to sign an assignment?
- I am an inventor named on an invention disclosure, but I no longer work for the University of Rochester. Do I still need to sign an IP Agreement/Assignment?
- I created an invention on my own time. Do I need to report it to the Office of Technology Transfer?
- I developed a(n) invention/device/software program prior to coming to the University of Rochester. How do I retain ownership?
- I am continuing research on an invention I started at another University prior to coming to the University of Rochester. Do I need to notify your office?
- Who are inventors?
- I directed the post-doctoral fellows in my lab to conduct tests for the technology that I am disclosing. Do I need to list them as co-inventors?
- What is meant by “reduction to practice”?
- Do I need to reduce the invention to practice before disclosing to OTT?
- Once the invention is disclosed to OTT, what is the evaluation process?
- I’m not sure what to list for sponsored research and funding on the Invention Disclosure Form. What are you asking for?
- Does public disclosure interfere with patenting?
- Is a Grant Proposal considered public disclosure?
- How is my invention marketed or licensed?
- Why are Confidential Disclosure Agreements necessary?
- Who decides whether or not to file patent applications on disclosed inventions?
- Who prepares and prosecutes patent applications?
- How long does it take to obtain a patent? What is the cost of obtaining a patent?
- What is the process for patenting a new discovery?
- What kind of research is patentable?
- I was asked to provide references for a patent application. Do I need to provide the entire document for each reference, or just the citations?
- What is a Material Transfer Agreement? And why is it necessary?
- Whom do I contact when I want to transfer research material?
- What is signature authority?
Questions and Answers
- What is the benefit of disclosing an invention to OTT?
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Disclosing your invention to OTT is an important part of protecting the rights to your discovery. One of the most important benefits may be the commercialization of your technology through OTT’s efforts in patent and licensing of the discovery. Other benefits through OTT’s marketing efforts include new contacts with industry or industry sponsored research in your laboratory.
- If I invent something at the University, does it belong to the University?
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All inventions or discoveries shall be deemed of proprietary interest to the University of Rochester if the inventor was employed or otherwise financially supported by the University or if he or she used University facilities, materials, or time to conceive and develop the discovery or invention.
- Why do I need to sign an IP Agreement?
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The Intellectual Property Agreement (IPA) describes a formal understanding that an employee who uses University resources to make a discovery is obligated to disclose the particulars of that discovery, along with granting ownership rights in that discovery to the University. An IPA is simply a written and signed version of the University’s Policy on Intellectual Property and Technology Transfer which binds all employees. The IPA does not require you to relinquish rights in any invention that was privately invented. Therefore, even if you have signed an IPA, the University will not claim ownership in anything invented without the use of University resources. Please follow this link to view the entire Intellectual Property Policy.
- I already signed an IPA. Why do I need to sign an assignment?
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The IPA formalizes the understanding between the University and the employee that any discoveries made while using University resources belong to the University. An assignment is a much more specific document, reaffirming the University’s ownership in this particular matter. The United States Patent Office requires an assignment before it will take any action on a patent filed by the University or its attorneys. All inventors named on a patent application will be required to submit a signed assignment with each new patent application.
- I am an inventor named on an invention disclosure, but I no longer work for the University of Rochester. Do I still need to sign an IP Agreement/Assignment?
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If the invention was created while you were employed at the University of Rochester, we will need a signed IPA and/or Assignment. We can modify the language in the agreement for you to reflect that the agreement is for a specific invention that was created while you worked here.
- I created an invention on my own time. Do I need to report it to the Office of Technology Transfer?
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An employee must disclose and assign to the University any invention that was created using University resources. This topic is covered in our Policy for Intellectual Property and Technology Transfer covered elsewhere on this web site.
If you did not use University resources (funding, equipment, or salary support) while creating the invention, then the University does not have any ownership interest in it. Be aware, however, that the Office of Technology Transfer will not be able to expend its resources to assess these inventions, to secure intellectual property protection on these inventions, or to attempt to market these inventions. To do so would jeopardize the University's non-profit status.
The only way for the Office of Technology Transfer could work on these inventions to assess their patentability and marketability would be if the inventor assigned ownership of them to the University. You are not obligated to do this. It would be an attractive alternative to you only if you don't have the time, interest, or resources to pursue the commercialization of the invention yourself. If this is something you are interested in pursuing, please let the Technology Transfer Office know and we will assist you in determining if this is the best course of action for both parties.
- I developed a(n) invention/device/software program prior to coming to the University of Rochester. How do I retain ownership?
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Just as with an invention developed on your own time, if you did not use University of Rochester resources the University has no ownership interests or claims to your invention. Please consult the University Policy on Intellectual Property and Technology Transfer for clarification.
If, for some reason, you would like the Office of Technology Transfer to evaluate and/or market your invention, it may be possible for you to assign your intellectual property rights to the University, but you are under no obligation to do so. This may be an attractive option if you don't have the time, interest, or resources to pursue the commercialization of the invention yourself. If this is something you are interested in pursuing, please let the Office of Technology Transfer know and we will assist you in determining if this is the best course of action for both parties.
- I am continuing research on an invention I started at another University prior to coming to the University of Rochester. Do I need to notify your office?
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In a word, yes. Since the inventive work began at another institution, that institution most likely has ownership rights. Our Office of Technology Transfer will need to learn what was disclosed to your previous institution, what steps have already been taken to protect intellectual property rights, and to determine the best course of action moving forward. Any improvements to the invention or new discoveries made using University of Rochester resources will fall under our policies, so it is important to work out the details with your previous institution as early in the process as possible.
- Who are inventors?
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Inventors are those who conceived the invention and/or contributed intellectually to its reduction to practice. See our “Authorship vs. Inventorship” page for more information.
- I directed the post-doctoral fellows in my lab to conduct tests for the technology that I am disclosing. Do I need to list them as co-inventors?
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The U.S. Patent and Trademark Office bases its definition of inventorship on case law and considers the threshhold in determining inventorship to be contributing to the conception of the invention. As such, determining when to apply the designation “inventor” can be challenging and best left to an attorney trained in the area of Patent Law. To acknowledge this fact, we have recently changed our Invention Disclosure Form to ask for potential “Contributors,” rather than “Inventors.” Please list the names of all individuals who assisted with the research or work that led to the discovery. At the appropriate time—should the University pursue patent protection on your discovery—the attorney preparing the application can review with you the roles each contributor played and decide who actually contributed to the conception of the resulting invention.
- What is meant by “reduction to practice”?
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“Reduction to practice” in the context of invention disclosure and reporting is considered to be the point at which a concept is embodied in an invention with recognizable utility.
- Do I need to reduce the invention to practice before disclosing to OTT?
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It is advised that inventions disclosed to OTT have a novel idea and some data to demonstrate its proof of concept. Reduction to practice is helpful, but not required.
- Once the invention is disclosed to OTT, what is the evaluation process?
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An invention disclosed to OTT is reviewed by OTT professional staff to determine its patentability and commercial viability. The appropriate OTT staff will be in consultation with the inventor(s). Within 1 month, a decision will be made whether or not to file a patent application to protect the invention. However, if a publication is imminent, the process of reviewing, drafting, and filing a patent application may be accelerated in order to preserve patent rights.
- I’m not sure what to list for sponsored research and funding on the Invention Disclosure Form. What are you asking for?
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The Invention Disclosure Form asks the question about extramural funding because the University is obligated to report to the government any inventions discovered while using federal research funds (e.g., research grants from the National Institutes of Health). We also record those inventions that utilize research funds obtained from non-federal sources (e.g., the American Cancer Society).
Additionally, we need to know if the research resulting in the invention being disclosed involved the use of tangible research material so we can ensure that appropriate agreements are in place that provide for the use of the material and for any results that arise from the use of the material. The use of such material often comes with obligations and OTT will require that information before taking steps to protect the intellectual proerty arising from your discovery.
- Does public disclosure interfere with patenting?
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To protect the patentability rights to your invention, it is important that you contact OTT as early as possible prior to public disclosure. Public disclosure includes but is not limited to Journal Articles, Publication on the Web, Conference Abstracts, Oral Presentations, or Poster Presentations. Foreign patent rights are lost immediately upon public disclosure. In the United States, you have one year from the date of the public disclosure to file a patent application.
- Is a Grant Proposal considered public disclosure?
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Yes. Grant proposals which are approved for funding are one form of public disclosure.
- How is my invention marketed or licensed?
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Once OTT receives an invention disclosure and after consultation with the inventor, non-confidential material is prepared for distribution to selected or pertinent industries with research or commercial interest in the same, or similar, field. Technical details of an invention may be disclosed to interested parties under a confidential disclosure agreement (CDA). Based on further evaluation of the invention by interested companies (which often involves direct communication with the inventor(s)) a potential licensee may be identified and negotiations for a license would begin.
- Why are Confidential Disclosure Agreements necessary?
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A Confidential Disclosure Agreement (CDA) is a legal document for the protection of proprietary information. Such a document is necessary before any transfer of proprietary information is made from one party (university investigator) to another (corporate scientist). Without this agreement, the individual or company to whom the information is disclosed is free to use and transmit this information to others. It is important to contact OTT before disclosing any confidential information to another party outside of the University.
- Who decides whether or not to file patent applications on disclosed inventions?
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The Office of Technology Transfer’s professional staff. Frequently, the Intellectual Property Advisory Committee (IPAC) will be consulted. The decision to file for intellectual property protection is based on the scope of the invention, its patentability, and commercial viability.
- Who prepares and prosecutes patent applications?
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OTT staff work with patent attorneys from at least 12 different private law firms from various states. These attorneys are carefully selected based on their legal and technical expertise.
- How long does it take to obtain a patent? What is the cost of obtaining a patent?
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The entire process may take from two to six years (or occasionally more). The cost of a U.S. patent typically ranges from $15,000 to $40,000. Foreign patents costs are approximately $10,000 to $15,000 per country. Maintenance costs add several thousand dollars per patent.
- What is the process for patenting a new discovery?
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Click here to see the details of our process.
- What kind of research is patentable?
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Inventions eligible for a U.S. patent must be novel, useful, and non-obvious.
Novel The invention must be noticeably different from publicly available inventions. This does not mean that all aspects of an invention must be novel. For example, new uses of known processes, matter, or materials are patentable. Incremental improvements on known processes may also be patentable. To be considered novel, an invention must be the inventor’s original work. In addition, the inventor must file a patent application within certain time constraints if the invention has been publicly revealed.
Useful The invention must demonstrate some application or utility or be an improvement over existing products and/or techniques.
Non-obvious A patentable invention must be “non-obvious” to someone of “ordinary skill in the art.” This does not include recognized experts in the field. It only means the invention is somewhat surprising to one with “ordinary skill”, yet this someone is knowledgeable enough in the field to understand the utility of the invention. This requirement is difficult to judge, for it is hard to predict with certainty what the patent examiner will find obvious or non-obvious. An invention can be “non-obvious” if it is a combination of old elements in a new way to produce a new and unexpected result. Similarly, an invention can be considered “non-obvious” if others have attempted to achieve the invention but failed. Some situations require affidavits from experts stating the invention is not obvious to one skilled in the art.
- I was asked to provide references for a patent application. Do I need to provide the entire document for each reference, or just the citations?
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Part of the filing process of any patent is to provide the Patent Examiner a copy of all references that aided in the discovery of the invention. The attorneys drafting the patent application will compile a list of needed documents and we ask the inventors to provide either hard copies or PDF files on a CD that they can be forwarded on to the Patent Examiner. Any reference that the inventors can provide is helpful, as law firms typically charge $35 - $50, or more for each reference that they need to obtain on their own.
- What is a Material Transfer Agreement? And why is it necessary?
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A Material Transfer Agreement (MTA) is a legal document for the protection of tangible research materials that are created by University investigators and are useful to others for research or for commercial development. It is important to contact the Office of Research and Project Administration prior to receiving or sending out any research materials.
- Whom do I contact when I want to transfer research material?
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A copy of a standard Material Transfer Agreement form can be downloaded from the ORPA web site.
- What is signature authority?
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OTT has signature authority on behalf of the University for license agreements, material transfer agreements, industrial contracts, and other agreements that pertain to intellectual property. University faculty and other inventors are not authorized to sign agreements that obligate the University to assign or license intellectual property rights to another entity. The management of University intellectual property is complex because there are often many conflicting interests. We work at the interface of science, business, and law within the multiple contexts of University, industry, and government. We know that the key to our success is our ability to work well with our diverse constituencies—inventors, departments, schools, industry, the U.S. Government, and the University.
Disclosure Forms
Invention Disclosure Form
A document that embodies the date of conception of, a complete description of, and all potential contributors to an invention being disclosed to the University of Rochester.
Copyright Disclosure Form
A document that embodies the date of creation of, a complete description of, and all potential contributors to a copyrightable work being disclosed to the University of Rochester.
Software Copyright Disclosure Form
A document that embodies the date of creation of, a complete description of, and all potential contributors to a copyrightable computer soft-ware program being dis-closed to the University of Rochester.