Invention Disclosure
Wright State University inventors/authors who have intellectual property for commercialization, copyrighting (e.g. software, video, music, questionnaire), or a research tool, or for patenting consideration, must contact the Office of Technology Transfer (techtransfer@wright.edu). The Office of Technology Transfer will provide the appropriate form(s) and information on the process. Forms must be completely filled out, including funding information, a detailed description of the invention, and listing of all inventors/authors with their signatures, before it can be reviewed.
Please contact the Office of Technology Transfer with any questions.
Disclosure Frequently Asked Questions
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Why does OTT need to know the funding information?
Most sponsored research projects have intellectual property related obligations, and it is important for the University to comply with these obligations. For example, the University is required to report to the federal government any invention created using federal funding, whether or not the University receives the funding directly or indirectly. In these cases, if the University decides not to retain title to the invention, the federal government may take title to the invention or decide to relinquish title to the inventors.
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How much detail do the inventors need to provide to describe the invention?
The description of the invention needs to be as detailed as possible. Without adequate information, the office cannot complete its evaluation of the invention’s patentability and licensing potential.
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If I publish a paper or presented my invention at a conference before OTT files a patent application, can my invention still be patented?
Possibly: a public disclosure precludes all foreign patent application filings.
Because of changes implemented by the America Invents Act, a public disclosure may preclude filing a meaningful patent application covering your invention in the United States as well. The America Invents Act created a first to file patent system in the United States so if somebody files a patent application covering the same invention before we do, we have no recourse.
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What is a public disclosure?
A disclosure is considered public if it is made available to the general public and not made under a nondisclosure agreement. For example, a journal article, a presentation at a conference, a thesis shelved in a library, a published abstract, and a federally funded grant award are all examples of a public disclosure.
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Why does OTT need my home phone and address?
We need to have a way of contacting you if we need to send you a royalty check. Your home address is also needed when we file a patent application. Please remember to update us when your home phone number or address changes.
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Who pays for the cost of patenting? And how much does it cost?
Wright State University pays the patent cost until it can find a licensee to generate income to reimburse for these expenses. It typically costs $25,000 to $35,000 to file and prosecute a U.S. patent application. This includes the official fees paid to the U.S. Patent and Trademark Office and the fees for the patent attorneys’ time (majority). Please note that there is no guarantee that a patent application will be allowed even though we applied for one.
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Who should be listed as an inventor? Does inventorship order matter?
Authorship in a scientific publication and inventorship in a patent application is very different. Inventorship is defined by law and it depends on what is covered in the claims. As such, inventorship may change as patent claims change while the patent application is undergoing examination by the U.S. Patent and Trademark Office. To be an inventor, s/he must contribute to the conception of the invention. The law does not recognize a person as an inventor if such person merely follows somebody’s instructions or simply provide funding, materials, or other resources.
The particular order in which the inventors’ name appear in a patent or patent application is of no consequence insofar as the legal rights of the joint inventors. It also has no bearing regarding the amount of contribution to the creation of the invention. For the purpose of filling out a Patent Disclosure Form, name any person who has made a creative contribution to the invention. If necessary, outside patent counsel will be used to determine inventorship.
