You should provide information from lab notebooks, published and unpublished papers, presentation slides, presentation papers, presentation abstracts, presentation video or audio recordings, thesis papers, white papers, grant proposals, grant progress reports, sketches, test results, and any other information you have that directly or indirectly describes your invention. You will also need it to answer a series of WHAT, WHY, and HOW questions meant to ensure that important aspects of your invention are properly disclosed. WHAT do you call your invention? WHAT problem does your invention solve? WHY should someone use your invention? WHAT are existing solutions to this problem? Existing solutions are also referred to as the prior art. HOW is your invention better than the prior art? Also be ready to provide a detailed response to the last question – WHAT specific mechanical parts and design or process steps make your invention better?
Whether a creation is an invention under the Patent Law is a complex and highly technical question. To be an invention, a creation must be useful, novel, and non-obvious. In addition, the creation must be developed to a point where the invention disclosure could be used by one skilled in the art, i.e., the creator’s peer, to build and/or practice the creation. Intellectual Property and Technology Licensing (IPTL) along with outside patent counsel to Rensselaer are here to assist in determining whether a creation is an invention or other protectable form of intellectual property, e.g., trademark, copyright, trades secret.
Under The Rensselaer Intellectual Property Policy, Rensselaer faculty, students, and staff who create intellectual property (IP) at Rensselaer are obligated to disclose all IP, which has any possible commercial or other value that he or she has created at Rensselaer. Other reasons for disclosing potential IP include benefiting from Rensselaer’s generous revenue sharing policy where creators share up to 35% of the net revenue generated from the IP. Contractual terms of sponsors of the research from which the IP is generated often requires disclosure. If you are not sure whether your IP has any value, it is always better to contact Rensselaer’s Office of Intellectual Property Optimization (IPO) for assistance.
Rensselaer’s Intellectual Property and Technology Licensing (IPTL) office is the primary contact for the creator with regard to their disclosure of intellectual property (IP). IPTL is responsible for protecting, marketing, negotiating and licensing Rensselaer IP. Using IPTL’s invention disclosure portal, the creator must submit a complete disclosure form to IPTL before notifying outside parties, including sponsors. IPTL will then determine whether the technology is ripe for commercialization and/or protection. The decision to protect, develop, market and/or commercialize any Rensselaer Intellectual Property is at Rensselaer’s sole discretion unless a contract states otherwise. IPTL will provide a timely response to creators and may employ outside evaluators and other consultants to review the disclosure, as well as to assist in the licensing, commercialization and protection of the IP.
No, but The Rensselaer Intellectual Property Policy requires creators to submit a complete invention disclosure form to Intellectual Property and Technology Licensing (IPTL) before notifying outside parties, which includes publication of the work that describes the creation. Valuable intellectual property rights may be compromised if details to a creation are publicly disclosed before filing a patent application. IPTL, working with outside patent counsel to Rensselaer, can ensure that Rensselaer’s intellectual property rights are protected by filing a provisional patent application prior to your publication. While creators are encouraged to disclose their creations as early as possible and well in advance of any planned publications or other public disclosures, a provisional patent application can be prepared and filed with very little lead time, if necessary
If you are discussing your work with colleagues outside of Rensselaer, it is a best practice to do so under a nondisclosure agreement and/or inter institutional agreement that includes confidentiality provisions. If those agreements are not in place, your discussion will typically not be considered a public disclosure if there is an expectation of privacy. What does that mean? It means that if you disclose confidential information to a colleague outside of Rensselaer in a private conversation, it would not typically be considered a public disclosure. However, if you visit the outside colleague’s lab and have the same conversation in the presence of his students, post-docs, and/or laboratory assistants, the conversation may be deemed a public disclosure. If you are not sure, please contact the IPO before disclosing your creation to colleagues outside of Rensselaer.
Under The Rensselaer Intellectual Property Policy, creators must submit a complete disclosure form to Intellectual Property and Technology Licensing (IPTL) before notifying outside parties, including sponsors. From there, if required according to the terms of a sponsored research agreement (SRA), IPTL will provide a copy of the invention disclosure to the sponsor. After submitting the invention disclosure and consulting with the IPTL, a creator is typically permitted to also informally inform his or her sponsor of the creation.
Yes. Whether a creation is patentable is immaterial. If a creator develops a research tool or software or any other type of creation at Rensselaer that has any possible commercial or other value, he or she is obligated to disclose it to Intellectual Property and Technology Licensing (IPTL).