APPENDIX TO POLICY

Types of Federal Reports and Responsibilities for Submission

Disclosure of the Invention

  • Process: The disclosure must be in the form of a written report that includes:
    • the award under which the invention was made
    • the inventor's name(s)
    • a description of the invention that is complete enough in technical detail to convey a clear understanding (to the extent known at the time of the disclosure) of the nature, purpose, operation, and the physical, chemical, biological or electrical characteristics of the invention.
    • information on whether any publication, on sale or public use of the invention and whether a manuscript describing the invention has been submitted for publication and, if so, whether it has been accepted for publication at the time of disclosure.
  • Deadline: The sponsor must be notified promptly or within two months after an invention is disclosed to the University and before any description of the invention is published.
  • Responsibilities: OTC files this report after the PI submits the internal Invention Disclosure Form.

Invention Progress Reports

  1. Electing to retain title
    • Process: OTC notifies the sponsor as part of its invention disclosure to the agency (see above).
    • Deadlines: The University has two years after its invention disclosure to the agency to notify the agency that it will or will not patent the invention. However, this deadline is shorter if information about the invention has been published and the one-year statute of limitations for filing the patent has been set in motion. In this case, the University must make their decision at least 60 days before the one-year deadline hits.
    • Responsibility: OTC files this report.
  2. Progress of the patent utilization
    • Process: Agencies may ask the University to submit progress reports on the progress of the licensing and commercialization of the patent.
    • Deadline: Deadlines vary according to agency.
    • Responsibilities: If these reports are required, OTC will file them.
  3. Result of patent application
    • Process: The agency must be notified if the patent is issued or if declined and the University's plans.
    • Deadlines: If the patent is issued, the government license is due 60 days after patent filing and a copy of the issued patent is due to the agency within 60 days after issuance. If it is declined and the University decides not to pursue the application, the agency must be notified not less than 30 days before the response period ends.
    • Responsibilities: If patent is issued, OTC submits a copy of the patent and government license to the agency. If it is not issued, OTC informs the agency of its plans.

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