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© 2016 Yumiko Hamano Yumiko Hamano Partner ET Cube International Invention Disclosure: Form, Reporting Mechanism, Receipt and Processing

Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

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Page 1: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

© 2016 Yumiko Hamano

Yumiko Hamano

Partner

ET Cube International

Invention Disclosure: Form, Reporting Mechanism, Receipt and Processing

Page 2: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Invention Disclosure

• Institutional IP Policy set out a clause on “obligation of disclosure of

inventions”

• Need an appropriate invention reporting mechanism

• On-line user friendly form

• On-line submission + hard copy with original signatures

• Submission to TTO

© 2017 Yumiko Hamano

Page 3: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Imminent Publication

Will any of the inventors be publicly disclosing this invention within the next 3 months?

Yes

No

If yes, please provide date and form of publication

© 2017 Yumiko Hamano

Page 4: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Title of Invention

Title of Invention:

© 2017 Yumiko Hamano

Page 5: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

All Inventors

Name, First Name: Employer: Laboratory: Function/ Position: Citizenship: Private address: Work tel. Private tel. Email: Estimated intellectual contribution to the invention in % (Total 100%):

© 2017 Yumiko Hamano

Page 6: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

What problem does this invention solve?

Do not describe the invention but instead focus on the problem found with existing technology, processes or services, or a recognized problem not adequately solved by existing technologies, processes or services.

© 2017 Yumiko Hamano

Invention

Page 7: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Stage of Development

What is the stage of development of the invention?

idea / concept

early stage

proof of concept

prototype

industry interest / use

© 2017 Yumiko Hamano

Page 8: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Summary of Invention

Describe the invention in detail:

© 2017 Yumiko Hamano

Consider the commercial applications of the technology and how they might be applied to a product, process or service. Importantly, please describe what aspects of the inventions have been proven experimentally and what is shown by the data. Also describe what materials or prototypes have been created in relation to the invention. Attach any technical documents of Invention including (submitted or draft) manuscripts, posters, theses and grant applications.

Page 9: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

What date(s) did you create the invention?

© 2017 Yumiko Hamano

The date is when the inventor(s) devised the essential concepts of the invention but without necessarily having proved that it would work or having built a prototype.

Date of Invention

Page 10: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

In whose laboratory notebook(s) is the experimental data for this invention recorded? Reference numbers?

© 2017 Yumiko Hamano

Laboratory Record

Page 11: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Competitive Advantage

Competitive Advantage:

Describe the competitor technologies, processes or services which attempt to address the above described problem. What is the closest existing or known technology – please provide links to the related companies’ products or service webpages. What are the advantages and benefits of your invention over these competitor approaches – have you experimentally compared your invention to the “gold standard” competitor technology or process?

© 2017 Yumiko Hamano

Page 12: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Application

To what can this invention be applied? (Technical applications)

© 2017 Yumiko Hamano

Page 13: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Future Research

What further research will be conducted over the next 12 months to demonstrate proof of concept or further validate the invention?

© 2017 Yumiko Hamano

Page 14: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Public Disclosures

Provide details of any public disclosures of this invention by contributors including publications, theses, posters, presentations, abstracts, submitted manuscripts and patents. Please also attach copies or transcripts of these disclosures.

© 2017 Yumiko Hamano

Page 15: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Public Disclosures

Provide details of previous disclosures of this invention Date: Type of disclosure: Aspects of the invention disclosed: Details or reference of the Journal/Conference/Seminar/Thesis: Provide details of any upcoming disclosures of this invention Date: Type of disclosure: Aspects of the invention disclosed: Details or reference of the Journal/Conference/Seminar/Thesis: Provide details of any public disclosures that are closely related to this invention Date: Type of disclosure: Aspects of the invention disclosed: Details or reference of the Journal/Conference/Seminar/Thesis :

© 2017 Yumiko Hamano

Page 16: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Sources of Funding

Was the invention developed using any research grants/contract funds?

Yes

No

If Yes, provide details:

Grant Ref:

Title:

Sponsor:

Collaborators:

Start and End Dates:

© 2017 Yumiko Hamano

Please attach any relevant contract.

Page 17: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Obligations to sponsors

Are you aware of any obligations to any sponsors e.g. disclosure of inventions/IP, final project reports, or commercial grant of rights (option/licenses)?

© 2017 Yumiko Hamano

Page 18: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Collaborators

Details of external collaborators who have contributed to the invention:

Start Date / End Date:

Collaborator:

Affiliation:

Contribution of collaborator:

© 2017 Yumiko Hamano

Page 19: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Use of Information [if applicable]

Was any aspect of the Invention made possible, in whole or in part, by the use of Information obtained from individuals other than contributors listed above or from organizations other than the University? If so, provide:

Date:

Information provider:

Affiliation of provider:

Details of information provided:

© 2017 Yumiko Hamano

Page 20: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Use of Materials [Complete if applicable]

Was any aspect of the Invention made possible, in whole or in part, by the use of tangible materials obtained from individuals other than inventors listed above or from organizations other than the University? Date: Materials provider: Affiliation of provider Details of Material provided Was a Material Transfer Agreement (MTA) signed in respect of receipt of the materials? Yes No If yes, please provide a copy.

© 2017 Yumiko Hamano

Page 21: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Materials

In the course of creating the invention have you developed any materials that may be of commercial value? Please provide details. Such materials are often of a biological nature e.g. cell lines, antibodies, plasmids, disease models and assay but can include any non biological material or prototypes.

© 2017 Yumiko Hamano

Page 22: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Materials

Were any of materials received from external organizations used in the development of or incorporated into the materials described above? Please provide details.

© 2017 Yumiko Hamano

Page 23: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Use of Software [Complete if applicable]

Was any aspect of the Invention made possible, in whole or in part, by the use of Software obtained from individuals other than contributors listed above or from organizations other than the University?

Date:

Information provider:

Affiliation of provider:

Details of Software provided:

© 2017 Yumiko Hamano

Page 24: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Software

Has any software been developed? Yes No If yes, please list the authors of the software’s source and executable code. Name: Author’s contributions to the code: Department/ School/ Affiliations: Email/Contact No. Are the Author(s) Student(s)? Yes No

© 2017 Yumiko Hamano

Page 25: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

External Authors

Please provide further information in respect of the involvement of any external authors:

© 2017 Yumiko Hamano

Page 26: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Third party code in software

Name of third party code:

Web page to download code:

Web page location of third party license:

© 2017 Yumiko Hamano

Page 27: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Prior Art

Please provide details of literature and patent searches

(Please list publications that are closely related to your work. Please also list closely related patents and attach a list of the keywords used and results obtained).

Publication details:

Relevance to the invention:

© 2017 Yumiko Hamano

Page 28: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Market Information Please list companies you have contacted, those you think are active in the

area, or who want to develop a new product line. If possible please give contact information.

Company:

Contact details:

Scope of interest and/or relevance to invention:

© 2017 Yumiko Hamano

Page 29: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Declaration

• I have discussed this invention with the Faculty Director prior to the submission.

• I have discussed the content of this invention disclosure and obtained consent for its submission with all the inventors.

© 2017 Yumiko Hamano

Page 30: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Signatures

Signature of Inventor(s) All inventors must sign.

Print Full Name

Signature

Date

______________________________________________________________________________________________________________________

Print Full Name

Signature

Date

______________________________________________________________________________________________________________________

Print Full Name

Signature

Date

______________________________________________________________________________________________________________________

© 2017 Yumiko Hamano

Page 31: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Upon Receipt

TTO will:

• Record the date of receipt

• Check the form to ensure completeness of the submission

• Email all listed University contributors to the Invention to notify them of the disclosure and to ensure that they are satisfied with the content and accuracy of the submission

• Initiate a formal assessment of the disclosure

Assessment:

conducts patent searches

analyzes the market and competitive technologies to determine the invention's commercialization potential

The assessment process will determine the University’s strategy on whether to focus on licensing to an existing company or creating a new business.

© 2017 Yumiko Hamano

Page 32: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Exercise

• Title of Invention

• What problem does this invention solve?

• Competitive Advantage

• To what can this invention be applied?

© 2017 Yumiko Hamano

Page 33: Invention Disclosure: Form, Reporting Mechanism, Receipt ...€¦ · Invention Disclosure • Institutional IP Policy set out a clause on “obligation of disclosure of inventions”

Thank you for your attention

[email protected]

[email protected]

© 2017 Yumiko Hamano