Invention Disclosure Form (Word)

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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
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