Table of Contents
Please use the contact section in the governing policy.
Federal regulations, nonfederal agency regulations and the terms and conditions of the award govern many of the steps in this process. See also the flowchart of the process below.
Determine that there is a 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 Technology Commercialization.
If unsure whether the Intellectual Property is reportable, call Technology Commercialization (Tech Comm) and discuss the research. In addition, contact Tech Comm if:
- there is an idea for a new product or service that fills an unmet or underserved market need,
- a working prototype exists of the idea,
- there are plans to or a dissemination of research results in a grant proposal, publication, poster presentation, dissertation has occurred, or even a casual conversation, (please note - to best protect the invention, contact Tech Comm prior to any submission of publication or grant proposal)
- if there is commercial interest in the discovery,
- if a company has been in contact to find out more about the research, or
- if considering starting a company with your idea.
- for software:
- if the software relates to already patented software within Tech Comm
- if there are questions of whether commercial licensing (and potential patenting) vs. open-source licensing is the appropriate route of dissemination
Note: if software is distributed under a commonly adopted open-source license (see University Guidance on Releasing Open Source, it is the faculty's responsibility to document all UMN policy conditions for open-source release have been met, including obtaining and safekeeping written evidence of all contributors' consents to the distribution.
Report the intellectual property to the University
The University's confidential Intellectual Property Disclosure Form (PDF) 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 Tech Comm or its web site.
- Deadlines: This form must be completed as soon as reportable intellectual property has been identified,, 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 Tech Comm ([email protected]). A Tech Comm staff member will contact the submitter promptly after receiving the form.
- If there are questions: Contact a Technology Portfolio Manager and they will help answer those questions.
The intellectual property is reported to the sponsor
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, Tech Comm will submit to the federal sponsor a detailed disclosure of the invention. Staff members in Tech Comm 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(PI) 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 the PI 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.
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 the 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 the appropriate SPA grant administrator.
Deadline: Promptly upon notification of acceptance.