South Dakota State University Confidential Invention Disclosure SDSU-___________ (TTO use only leave blank) This form contains three pages. Please fill out all the items that apply to your invention accurately and return the document with original signature(s) to the Technology Transfer Office (TTO). If you need assistance with filling out this form, please contact TTO at 605-688-4756. 1. Non-Confidential Invention Title: (Please do not disclose confidential information in the title) 2. Inventor Information: (Please note information in this section will be used for all legal documents such as patent applications) Department Tel. Number % Share # Legal Name, Suffix (e.g. Ph.D.) Title (e.g. Professor) 1 2 3 4 5 3. Invention Stage and Dates: Date (mm/dd/year) Conception of invention Reduction to practice Written record exists? (Yes/No) Stage of Invention (e.g. Concept only, discussion with others, seeking funding, prototype, experimental data) 4. Appointments, Conflict of Interest (COI) and Funding: Please indicate all appointments/affiliations you may have had at the time of the invention (Please type X in all cells that apply). Inventor 1 Inventor 2 Inventor 3 Inventor 4 Inventor 5 Consulting Appointment Federal Agency Other (Please specify) COI* (Indicate Yes or No) * Please indicate “Yes” if you have a financial or other interest (as defined by the South Dakota Board of Regents Policy 4:35) in a business entity that is related to this invention in any way. 5. Funding Source: Please list all sources of funding for materials, equipment and/or salaries of all personnel involved in making the invention. Name of Department, Company, Agency etc. (e.g. DOE, NSF etc.) Grant or Account number Unrestricted University/Departmental Federal/other government agencies 1 Federal/other government agencies 2 Private/public foundation Commercial entity Others (Please Specify) 1 Title of the Proposal/Award South Dakota State University Confidential Invention Disclosure 6. Brief Summary of Invention: (This is used in preparation of marketing materials. Please append complete descriptions (e.g. papers) 7. What are advantages of your invention over the State-of-the-art? 8. Are there any limitations or deficiencies to the invention? If so, how could they be overcome? 9. What are the practical and commercial applications of your invention? 10. Please list any companies you feel are/should be interested in your discovery(specific contacts are most helpful) 11. Have the essential elements of the invention been disclosed to anyone outside the University, either orally or in writing? Yes No If Yes, please specify (e.g. date, name, circumstances). 12. Do you intend to publicly disclose the essential elements of the invention in the future, either orally or in writing? (e.g. publication, thesis/dissertation, seminar, poster, meeting abstract, web page) Yes No If Yes, please specify planned date of disclosure. 13. Did this invention utilize data or materials from any of the following? (Click on all that apply) MTA (Material Transfer Agreement) CRADA/SBIR/STTR 2 South Dakota State University Confidential Invention Disclosure The undersigned hereby declare(s) that they (he/she) are (is) the true and only originator(s) of the invention disclosed herein at the South Dakota State University and that the invention arose in the course of work at or on behalf of the University and will be managed according to South Dakota Board of Regents’ Policy Manual 4:34 for Intellectual Property. Please call the Technology Transfer Office at 696-7872 with any questions. For each Inventor, please TYPE in all fields, then sign and date. Main Contact Inventor 1 Name: Citizenship: Home Add: Work Add: Phone: e-mail: FAX: Signature: Date: Inventor 2 Name: Citizenship: Home Add: Inventor 3 Name: Citizenship: Home Add: Work Add: Work Add: Phone: e-mail: FAX: Signature: Phone: e-mail: Date: Signature: Inventor 4 Name: Citizenship: Home Add: Inventor 5 Name: Citizenship: Home Add: Work Add: Work Add: Phone: e-mail: Signature: FAX: FAX: Phone: e-mail: Date: Signature: 3 Date: FAX: Date: South Dakota State University Confidential Invention Disclosure South Dakota State University RECORD OF ASSIGNMENT to the South Dakota Board of Regents Form may be separately completed by each inventor/creator WHEREAS, Name of Inventor/Creator Residence Address (No P.O. Box) 1. ______________________________ ______________________________________ 2. ___________________________ ______________________________________ 3. ___________________________ ______________________________________ 4. ___________________________ ______________________________________ (“Assignor(s)”) has/have invented/created certain new and useful intellectual property with a working title of: TITLE OF INTELLECTUAL PROPERTY ______________________________________________________________________________ ______________________________________________________________________________ ____________________________________________________________ which has or may become the subject of a United States or foreign patent application or any other type of intellectual property protection. AND WHEREAS THE SOUTH DAKOTA BOARD OF REGENTS controlling the state institutions of higher learning (hereinafter called “Assignee”), is desirous of acquiring the entire worldwide right, title, and interest in, to and under said invention/creation and in, to and under Letters Patent or similar legal protection including any intellectual property protections to be obtained therefore in the United States, its territorial possessions, and in any and all foreign countries. NOW, THEREFORE, in consideration of One ($1.00) Dollar, the Intellectual Property Policy of South Dakota State University and/or other good and valuable consideration paid to Assignor(s) by said Assignee, the receipt and sufficiency of all of which Assignor(s) hereby acknowledge(s), Assignor(s) do/does hereby assign, sell, transfer, and set over unto said Assignee, the entire right, title, interest in said intellectual property and improvements for the United States and its territorial possessions and all foreign countries and all divisions, reissues, continuations, continuations-in-part, renewals, and/or extensions thereof including all priority rights under the International Convention associated therewith for each 4 South Dakota State University Confidential Invention Disclosure country and the Union, said Assignee to have and to hold the interests herein assigned to the full ends of the terms of said Letters Patent and an and all divisions, reissues, continuations, continuations-in-part, substitutes, renewals, and/or extensions thereof, respectively, as fully and entirely as the same would have been held and enjoyed by Assignor(s) had this assignment not been made. The Commissioner of Patents and Trademarks is requested to issue such Letters Patent in accordance herewith. Assignor(s) covenant that Assignor(s) is/are the lawful owner(s) of the inventions and improvements disclosed in said invention, that the same are unencumbered, that no license has been granted to make, use, offer for sale, sell or import said inventions or improvements of any of them, and that Assignor(s) has/have the full right to make this assignment. Assignor(s) hereby covenant(s) with said Assignee, its successors, assigns and legal representatives that I/we have made to others no assignment, grant, mortgage, license, sale or agreement affecting the rights and property conveyed and that we have the full right to convey the same as herein expressed. And for the consideration aforesaid, Assignor(s) agree(s) jointly and individually that Assignor(s) will communicate to said Assignee or the representatives thereof any facts known to Assignor(s) respecting said inventions and improvements, and will, upon request, but without expense to Assignor(s), testify in any legal proceeding, sign all lawful papers, execute all divisional, reissue, continuation, continuations-in-part, substitutes, renewal, and/or all other patent applications, execute all rightful oaths, and generally do all other and further lawful acts, deemed necessary or expedient by said Assignee or by counsel for said Assignee, to assist or enable said Assignee to obtain and enforce full benefits from the rights and interests herein assigned. This assignment shall be binding upon Assignor(s) heirs, executors, administrators, successors, and/or assigns, and shall inure to the benefit of the heirs, executors, administrative successors and/or assigns, as the case may be, of said Assignee DATE EXECUTED ______________________, 20___ ___________________________________ INVENTOR/CREATOR 1 (printed name) _______________________________ INVENTOR/CREATOR 1 (signature) State of _____ County of _______________ The forgoing instrument was acknowledged before me this ______________________, 20___ by ________________________________ (inventor/creator name). My commission expires ______________________, 20___ ___________________________________ Notary Public (signature) DATE EXECUTED ______________________, 20___ 5 Seal/Stamp South Dakota State University Confidential Invention Disclosure ___________________________________ INVENTOR/CREATOR 2 (printed name) State of _____ _______________________________ INVENTOR/CREATOR 2 (signature) County of _______________ The forgoing instrument was acknowledged before me this ______________________, 20___ by ________________________________ (inventor/creator name). My commission expires ______________________, 20___ ___________________________________ Notary Public (signature) Seal/Stamp DATE EXECUTED ______________________, 20___ ___________________________________ INVENTOR/CREATOR 3 (printed name) _______________________________ INVENTOR/CREATOR 3 (signature) State of _____ County of _______________ The forgoing instrument was acknowledged before me this ______________________, 20___ by ________________________________ (inventor/creator name). My commission expires ______________________, 20___ ___________________________________ Notary Public (signature) Seal/Stamp DATE EXECUTED ______________________, 20___ ___________________________________ INVENTOR/CREATOR 4 (printed name) _______________________________ INVENTOR/CREATOR 4 (signature) State of _____ County of _______________ The forgoing instrument was acknowledged before me this ______________________, 20___ by ________________________________ (inventor/creator name). My commission expires ______________________, 20___ ___________________________________ Notary Public (signature) Seal/Stamp 6