Education About Technology Transfer

If you can answer "yes" to any of the following questions, please complete an Invention Disclosure Form and send it to the Office of Research, Innovation and Economic Development:

• Have I built or modified an instrument or device to fulfill a perceived need?   
• Have I discovered or developed a new technique for research or patient care that is not described in the scientific literature?   
• Have I discovered or developed a new chemical compound, drug, formulation, antibody, gene or protein sequence, or genetically engineered organism?   
• Have I made an "early stage" scientific discovery that I think may be significant?   
• Have I made an improvement on a product while testing it for a company?   

The determination of an inventor and co-inventor is a legal issue and not a matter of professional courtesy.  The inventor or inventors will have made intellectual contributions to the invention.  If a colleague or student contributed to the idea which is incorporated in the invention, then he/she has helped form the invention and must be included as a co-inventor.  If, on the other hand, the idea was contributed by one person and the other followed directions to make the invention, the legal inventor is the first person as the sole inventor.

Successful commercialization of an invention is generally manifested as periodic royalties from the sales generated by use of the invention from a corporation. Disbursement of periodic royalty payments will be based upon the following: 50% - Inventor; 50% the University.

All CPP employees (including students, postdoctoral fellows, clinicians, and faculty members) disclose inventions and discoveries if they were created under at least one of following conditions: utilizing more than incidental CPP facilities/resources, on CPP time, or relating to employment duties at CPP.

The CPP, owns rights to inventions created by employees where one of the following is true: the invention is related to CPP employment duties, the invention was made utilizing CPP facilities, or the invention was created on CPP time. If you invent something unrelated to your CPP employment on your free time and using your facilities, then CPP will not claim ownership to that invention.

CPP owns the rights to inventions created under federal grants issued to CPP. Additionally, the United States government also has certain rights to inventions created under federal grants. CPP owns the rights to inventions created under non-federal grants issued to CPP unless the granting organization specifically retains ownership of inventions via the grant agreement. Ownership of inventions created under a Sponsored Research Agreement, Lab Study Agreement, Clinical Study Agreement, or Material Transfer Agreement is dictated by the language in the Agreement. Therefore, it is critical to inform the Office of Sponsored Programs of these agreements when an invention is disclosed.

CPP owns the rights to inventions created under federal grants issued to CPP. CPP must inform the NIH (NSF, DoD, DoE) of your invention within two months of the invention's disclosure. Within one year of the invention's disclosure, CPP must inform the agency if it elects to retain title to the invention.

CPP will work with the entities that employ co-inventors to formulate a Joint Ownership Agreement whereby the entities agree to share or delegate costs, revenues, and commercialization opportunities for that invention.

To demonstrate your inventive role, follow these guidelines:

Keep detailed and accurate laboratory notebooks to document the dates of the conception and development of the patentable idea, including descriptions, drawings, photographs, and any other documentation that may be applicable.

Sign and date each entry and have at least one witness sign and date the entries. The witness should not have a participating role in the project and/or invention.

Sending a completed Intellectual Property Questionnaire to the CPP Office of Tech Transfer is the first step in disclosing the invention. The office will then analyze the invention and connect prior art (printed matter) related to the invention. You will likely be asked at some point during the disclosure process to provide feedback on such prior art, or answer questions about your invention. Your cooperation during this first evaluation process is critical to ensure that the office understands your invention completely

The questions that the CPP Office of Research, Innovation and Economic Development asks about new inventions are as follows:

Does CPP own the technology?

Do provisions of a Material Transfer Agreement or funding agreement (Sponsored Research Agreement, Clinical Study Agreement, etc.) govern or restrict our rights in this invention?

Does the invention meet the United States Patent and Trademark Office's criteria for a patentable invention?

Is CPP willing and able to enforce its patent rights that cover the invention?

Can we identify one or more commercial products?

Is the invention well-developed, or will it require significant development?

How big is the potential market?

What competitive advantages would this new product(s) have in the marketplace?

Are there significant limitations to the technology?

Depending upon the answers to these questions, the office may elect to patent and/or market the invention. Inventors will be notified of the intentions as soon as possible, usually within 30 days of receiving the completed Intellectual Property Questionnaire.

There are three devices to protect intellectual property: trade secret, copyright, and patent. Copyrights are appropriate for protecting software, videos, and other works. U.S. patents are federal grants to exclude others from making, using, or selling a particular invention in the United States in exchange for fully disclosing the invention in an issued patent.

The office should be informed of your invention before you submit your manuscript that describes the invention.  The office does not interfere with inventors' publishing plans.

Under some circumstances, CPP is willing to license an invention back to its inventor when the inventor agrees to reimburse CPP for its patenting costs (if any) and pay a graduated royalty to CPP of any resulting proceeds are expected.