INVENTION DISCLOSURE FORM - Wichita State University

INVENTION DISCLOSURE FORM
Thank you for submitting your technology to the Office of Research Administration. This form will initiate the
commercialization and patent process for your invention, so accuracy is essential. Please realize this is a legally
important document and will remain confidential unless disclosure is required by state or federal law.
If you email this form, you must send in a hard copy with all signatures for the disclosure to be processed. This
form, your lab notes and any other records pertaining to your invention should be witnessed by someone familiar
with your disclosure. All lab notes and records are to stay in your possession.
This form is intended for patentable inventions only. Patentable inventions are those which: 1) have novel,
unique uses unknown to others; 2) have non-obvious results to others who work within the same industry; and
3) have a usefulness which is easily demonstrated.
It is important that you complete the form as fully as possible. The information on this form will be used to
evaluate the commercial potential of your technology and to determine whether or not a patent should be
pursued. The cost of obtaining a U.S. Patent can easily reach $25,000 and worldwide patents can exceed
$250,000.
For more information on WSU Intellectual Property Policy please visit our website at
www.wichita.edu/technologytransfer
I.
INVENTOR INFORMATION
Please list all those individuals who contributed materially to the novel and non-obvious portions of the invention.
Include a brief description of the contribution as well as citation to written documentation and date of the contribution.
Name/Title
1.
Campus Address
Phone Extension
2.
3.
4.
5.
Contributions to the Invention/Written Documentation
1.
2.
3.
4.
5.
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Email
A. Relationship of Inventors to WSU
WSU employees’ inventions are the property of WSU, with the revenues of those inventions to be negotiated between
the two parties. Other inventors involved outside of the University need to be identified for further negotiation.
a) While contributing to this invention, were all inventors listed employees of Wichita State University?
Yes
No
i) If No, name the Inventor(s) who were not employees and explain his/her affiliation with the team of Inventors :
b) Were University resources used by all Inventors involved in the contribution to this invention?
i) If No, name the Inventor(s) who did not use University resources and explain :
Yes
No
c) Was any portion of the invention conducted at another institution or company outside the University?
i) Explain :
Yes
No
B. Inventors’ Personal Interest in the Invention
If an invention is deemed viable for commercial advancement, inventors may wish to start a business. However, the
University will continue to own a portion of the rights of the invention, and will continue to support the invention’s
progress. Therefore, the inventors can at some point choose to pay to license the University’s portion of the invention
rights, or have the rights released to them. For details on University procedures in each case, talk to a University
Intellectual Property Contract Manager.
a) Are the inventors interested in participating in a startup company that licenses the invention from the University?
Yes
No
b) Do the inventors wish to have the invention’s licensing rights released to them under the University’s standard
terms and conditions?
Yes
No
II. INVENTION
A. Invention Title: Use a brief, technical, descriptive title, but omit any confidential information.
B. Abstract: This should also be non-confidential information. This may be posted publicly online. Include results and
data, but omit details such as materials and methods.
C. Key Words: These will be used for online searches, so compile a list of words that will help others find your
invention and search against Prior Art.
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D. Invention Category:
Diagnostic/Test
Product: Device
Product: Therapeutic
Service
Drug
Product: Method
Research: Reagent
Other
E. Confidential Description of the Invention: (attach documents if necessary)
This information is confidential. It should give the complete details of the invention, including scientific methods. In
most cases, inventors will want to attach written documents. If you have any market information to provide as well,
please do so.
F. Evidence for Patent:
Answer these questions to the best of your ability. Express whether or not the invention meets each of the criteria.
1) Novelty / Prior Art: Was the invention previously known or used by others? How does the invention improve upon
what already exists?
2) Non- obviousness: If someone of ordinary skill in the same field of technology related to the invention will find this
invention’s solution to be obvious, chances are the invention will not be patentable. The solution has to be unique and
discerning from others. Is your idea non-obvious and why do you believe it to be non-obvious?
3) Ease of Use/Utility: How is this invention useful? Who will it benefit? Is it (easily) reproducible?
G. Stage of Development:
Check the level of development at which you feel the invention is to this point. Below, add any comments you feel are
necessary, i.e. is there a computer simulation? Has clinical testing started? If your invention has clinical or human
health implications, please indicate which diseases or conditions you believe can be affected.
Concept Only
Preliminary Data
Intermediate Data
Complete Proof of Concept
Prototype Available
Comments:
H. Invention History:
Do your best to give dates of development and if the date has been documented, i.e. in a lab notebook. Attach a copy if
possible.
Initial Conception Date:
Proof of Concept Date:
Prototype Date:
Clinical Trial Date (if applicable):
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I. Further Development Plans:
Based on your answer to the previous question, what are the next steps to complete the invention? What have you
personally done to meet those needs, and what support do you feel you need?
a)
b)
c)
d)
Additional testing/development needs:
Your activities in meeting these needs:
Time needed to complete this work:
Research support needed to complete this work:
J. Materials Used:
This section is to verify once again if there are others who should have some, if even small, claim in the invention’s
patent sources. Also, this will help us identify others with knowledge of the invention via the MTA.
a) Were materials from a secondary source, i.e. other than your laboratory, used in the research or development of
your invention?
Yes
No
i) If Yes, specify the source:
b) Was the material covered by a Material Transfer Agreement (MTA)?
Yes
No
i) If Yes, specify with whom:
c) Is that MTA on file with the University Office of Research Administration?
Yes
No
d) Is software incorporated with your invention?
Yes
No
i) If Yes, is that software obtained from a Third Party source?
Yes
No
(1) If Yes, please specify that source:
K. Commercialization Ideas:
What do you see as commercial uses of your invention? What firms do you think may be interested in this technology,
and why? Do you have a relationship, formal or informal, with any of these companies?
L. Commercialization Issues:
What do you see as the greatest barrier to the commercialization of your invention? Are you aware of related
developments by other companies?
III.
PUBLIC DISCLOSURE
Disclosing, or releasing, an idea to the public, in any format, can harm your chances of gaining a patent,
depending on what details you release. You need to give very specific details, including dates, and attach any
examples and/or copies of forms if you have them.
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A. Prior Disclosures (Abstracts, papers, news stories, public conversation, etc. including dates disclosed):
B. Future/Planned Disclosures (List file names of attached copies):
C. Commercialization Efforts Disclosure (List company names & attach non-disclosure form copies):
D. Materials Transfer (List organizations to which invention materials have been transferred for further
development):
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IV.
SPONSORSHIP?
Sponsors may have rights to inventions through funded research. You should diligently disclose any and all
sponsors here, including direct contact information. Have you disclosed the invention directly to the sponsor? Also,
any other agreements related to this invention should be disclosed, so we can further investigate all parties who
need to be involved.
Yes
No
A. Government Agency Contract # / Grant # / Title
B. Other Sponsoring Entity
C. Sponsor Disclosure of Invention
D. Other Agreements Tied to the Invention (check those that apply)
Check Agreement Type
Other parties to agreement; description
Here
of agreement
License agreement
Non-Disclosure/Confidentiality Agreement
Collaboration Agreement
Research Agreement
Consortia Agreement or funding
Memorandum of Understanding
Consulting Agreement
Inter-Institutional Agreement
Material Transfer Agreement
Industrial Affiliate Program
Other
V.
CONFLICT OF INTEREST
Identify any financial, consulting, stock ownership, board membership, ownership or other relationship (whether
pending or otherwise) with any party that has any relevance to the development or marketing of this invention.
Organization
Nature of the Relationship
Conflict of Interest Form Filed?
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Date Began
CERTIFICATION
By signing below, each contributor certifies that he or she is a contributor, the others named herein are also
contributors and that to the best of your knowledge, there are no other contributors. If you change address, it is your
responsibility to notify the Office of Research Administration of your new address. If you cannot be contacted, any
patent applications may be abandoned and/or you will not receive any royalties.
* The first named Principal Investigator (PI) will be the principal contact person with the Office of Research Administration
* Name:
Title:
Home Address:
Campus Address:
Contribution Percentage:
WSU ID#:
Department:
Home Phone:
Campus Phone:
Country of Origin:
Contributor
Date
Department Head/Supervisor
College Dean
(sign & date)
(sign & date)
Name:
Title:
Home Address:
Campus Address:
Contribution Percentage:
WSU ID#:
Department:
Home Phone:
Campus Phone:
Country of Origin:
Contributor
Date
Department Head/Supervisor
College Dean
(sign & date)
(sign & date)
Name:
Title:
Home Address:
Campus Address:
Contribution Percentage:
WSU ID#:
Department:
Home Phone:
Campus Phone:
Country of Origin:
Contributor
Date
Department Head/Supervisor
College Dean
(sign & date)
(sign & date)
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Name:
Title:
Home Address:
Campus Address:
Contribution Percentage:
WSU ID#:
Department:
Home Phone:
Campus Phone:
Country of Origin:
Contributor
Date
Department Head/Supervisor
College Dean
(sign & date)
(sign & date)
Name:
Title:
Home Address:
Campus Address:
Contribution Percentage:
WSU ID#:
Department:
Home Phone:
Campus Phone:
Country of Origin:
Contributor
Date
Department Head/Supervisor
College Dean
(sign & date)
(sign & date)
VII.
RECEIVED BY:
Dr. John Tomblin,
Interim Associate Provost for Research
Date
Please note that final determination of who has legal claim to be listed as an inventor and the
contribution percentage of each contributor is ultimately decided by a patent attorney using the U.S.
Patent laws as put forth by U.S. code.
Completed forms should be returned to the Office of Research Administration, Attn: Becky Hundley Campus Box 7 or email
to [email protected]
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