After Invention Disclosure
The first steps after disclosure are procedural.
- A file is set up
- Disclosures are reviewed to determine whether there are sponsor's rights. If so, appropriate notifications are made.
- Publication dates are checked to determine if accelerated patent work is necessary.
- The TCO evaluates the legal protectability and commercial appeal of the invention.
If it appears that a technology can be legally protected and commercialized, the Office seeks legal protection and a commercial partner using expert patent counsel outside the University. Such counsel is paid either by the University or by a private company if one has expressed firm interest in the inventions with an evaluation of their merit. This evaluation may cover the probable patentability of the invention (or other form of legal protection) and may include an estimate of its commercial potential. This review process will normally take ten weeks.
If the inventor receives no response within ten weeks of submission, he or she may petition the TCO in writing to demand an official determination on the submitted invention. The TCO must thereafter respond in writing to the inventor within 30 days.
Next, the University has an obligation to decide whether commercialization appears appropriate for each submitted invention and to communicate this decision to the inventor. The University normally decides to do one of the following:
- (a) commercialize the invention
- (b) conduct further research
- (c) waive University rights
In the event the University decides to commercialize the invention, it may secure patent (or other) protection and actively promote the invention to potential industrial partners. If the invention concept has appeal, but is incomplete in some aspect, the University may delay further action on patenting or commercializing until subsequent research has better defined the technology.
If the invention is evaluated as having insufficient protectability or inadequate commercial application, or if the University does not have a legal claim to it, the University may waive its rights back to the sponsor or to the inventor where no sponsor's rights exist.
