Printed on: 05/21/2018. Please go to http://policy.umn.edu for the most current version of the Policy or related document.

ADMINISTRATIVE PROCEDURE

Reporting Inventions or Software to the University and Sponsors

Federal regulations, nonfederal agency regulations and the terms and conditions of the award govern many of the steps in this process.

  1. Determine that you need to report intellectual property (i.e. an invention or software)

    Intellectual property  includes inventions or software which may or may not be protectable by Patent, Copyright or Trademark.  Intellectual Property may include many different kinds of technologies and ideas spanning a wide range of research areas at the University. For example, IP can include, but is not limited to, software, plant varieties, medical devices, research tools, drugs, etc. Certain intellectual property must be reported to the Office for Technology Commercialization.

    If you are unsure whether you have reportable Intellectual Property, call the Office for Technology Commercialization (OTC) and discuss your research. In addition, you should contact OTC if:

    • you have an idea for a new product or service that fills an unmet or underserved market need,
    • you have a working prototype of your idea,
    • you are planning to or have already disseminated your research results in a grant proposal, publication, poster presentation, dissertation, or even a casual conversation, (please note - to best protect your invention, contact OTC prior to any submission of publication or grant proposal)
    • if there is commercial interest in your discovery,
    • if a company has contacted you to find more about your research, or
    • if you want to consider starting a company with your idea.
  2. Report the intellectual property to the University

    The University's confidential Intellectual Property Disclosure Form (IPDF) asks for such information as a description of the invention, software or other intellectual property, names and contact data for everyone involved in creating the intellectual property, and funding sources for the research that led to the intellectual property. This form is also used to inform department heads and deans that an invention has been disclosed and to fulfill the employee disclosure requirement under Federally-sponsored projects.

    • Obtain the form & fill it out: The Intellectual Property Disclosure form is available from OTC or its web site
    • Deadlines: This form must be completed as soon as you think you may have reportable intellectual property, whether during the project period or after the project has been closed, and at least three months before any public disclosure, if possible.
    • Submit the form: After completing the form, send it to OTC (umotc@umn.edu). An OTC staff member will contact you promptly after receiving the form.
    • If you have questions: Contact a Technology Portfolio Manager and they will help answer your questions.
  3. The intellectual property is reported to the sponsor

    Federal Sponsors
    This information is governed by 37 CFR 401 (Code of Federal Regulations). Note: If deadlines are missed, the University may have to forfeit title.

    After it has evaluated the internal Intellectual Property Disclosure Form, OTC will submit to the federal sponsor a detailed disclosure of the invention. Staff members in OTC as well as Sponsored Projects Administration are also responsible for submitting other reports.

    The Principal Investigator should disclose the invention on the Sponsored Projects Application forms, if this information is requested.

    For some agencies, primarily Public Health Service, each application for continuing support must include either a listing of all inventions made during the preceding budget period or a certification that no inventions were made during that period. Supply this information in the appropriate section of the application.

    The Principal Investigator should disclose the invention to Sponsored Projects Administration during closeout of the project

    SPA must file a report, usually within 90 days after expiration of the project period, listing all inventions at the end of a project or a certification that no inventions were made. SPA will contact you to obtain this information.

    Nonfederal Sponsors (i.e. Business & Industry, or Non-Profits, Associations)

    Nonfederal sponsors may not have specified deadlines or they may be negotiated at the time of award. Check the sponsor's guidelines, the Notice of Grant/Contract Award (NOGA), or the contract for information and reporting responsibilities.

  4. Fulfill other reporting obligations

    Publishing information about the invention

    Some sponsors require notification when any information is accepted for publication or if any sale or public use is planned by the University.

    Process: Read your award documents and the Notice of Grant Award sent by SPA to determine exactly what information must be disclosed and how it is to be disclosed. If necessary, contact your SPA grant administrator.

    Deadline: Promptly upon notification of acceptance.

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