Q: When should an inventor disclose an invention to IURTC?
A: To preserve patent protection in the United States and foreign markets, IURTC must submit a patent application before the invention is publicly disclosed. This includes prior to a poster or oral presentation at a conference, before an abstract is placed online, before a manuscript is published, and prior to public talks or private conversations outside the university. If a patent application is not submitted prior to these events, we could lose the ability to protect the intellectual property rights to this invention – others can then use the invention for their own commercial gain.
Other times, it’s helpful if an inventor will email (iurtc@indiana.edu) or call (317-274-5905) IURTC if she thinks she has something of interest. We can then discuss the timeline needed for evaluation and patent protection, and when it would be appropriate to submit a disclosure. This provides the benefit of not feeling rushed prior to an event like those listed above. My colleagues and I can then give an inventor more information about strengthening the disclosure.
Sometimes an invention cannot be protected by a patent, but still holds promise for commercial markets. This includes software and other copyrightable materials. IURTC personnel want to capitalize on the momentum established by the inventor and her work – you are always welcome to reach out to us.
Q: What goes into making a strong invention disclosure?
A: Inventors can strengthen their disclosures by providing the following information:
- A general description of what is currently known in the field. Understanding the current gold standard allows us to assess the path and potential obstacles in commercial acceptance of new technologies. What are the drawbacks of the status quo? How were the current solutions adopted?
- How the discovery improves upon what is currently known or used.
- Companies or industrial sectors that could be interested in commercializing the invention. Inventor knowledge of contacts at these companies is a boon to our efforts in identifying the right commercial partner and assessing the competition.
- The current stage of development. Is it in vitro, in vivo, has a prototype been built, etc.? Commercial partners are often interested after a certain point of development. Also, knowing the stage of development is essential in planning patent applications.
- The types of funding the inventor has received to develop the invention. This can include funds from university, state, federal or industry sources. Funding comes with contractual obligations. In pursuing commercialization of an invention, we need to at least notify the sponsor, and potentially present the sponsor with the first offer of the technology.
- If the inventor utilized materials from outside the university to create the invention. Shared materials often come with material transfer agreements with contractual obligations that must be honored.
Additionally, inventors are welcome to provide presentations, manuscripts and grant applications that describe the invention or any pertaining data.
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Katherine Moynihan is a technology manager for the Indiana University Research and Technology Corp. IURTC helps researchers across all campuses in the IU system bring promising research and innovations to market. Moynihan specializes in inventions within the life sciences and software industries. You can contact Katherine at kmoyniha@iu.edu, 317-278-1948.
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