Commercialization Proposal / Invention Disclosure Form

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OTC USE ONLY
TAMUS #
______________
Commercialization Proposal / Invention Disclosure Form
This form is used to disclose new inventions for assessment and possible commercialization and to
meet obligations of disclosure as required under TAMUS Policy 17.01. Before completing this form,
please refer to the guidelines at the end of this document. Please send your completed form,
inventor data sheet(s), and any additional documentation to disclosures@tamus.edu.
1. Title:
2. Lead Inventor: (Inventor Data Sheet required)
3. Abstract: Describe the invention and what it can be used for in 500 words or less. The description
should be accessible to a “lay audience” having no special or expert knowledge in your field.
4. Other TAMUS Inventor(s): (Inventor Data Sheet required for each inventor)
1.
2.
3.
4.
5.
5. Other Non-TAMUS Inventor(s): (Inventor Data Sheet required for each inventor)
1.
2.
3.
6. Utility: Describe your vision for how this invention could be used to create a commercial product1 or
service2 or how it could be used in industry.3
7. Significance: Why would commercialization of this invention be important? Describe the benefits
that could be realized if this invention were used to create a product or service or if it were used in
industry.
8. Novel Aspects: What are the novel features of your invention compared to what has been previously
reported in the literature (e.g. scientific journals, published patent applications, issued patents)?
You are invited to speculate here as to why this invention has not been made before (e.g.
breakthroughs, new observations, innovative synthesis of existing data, etc.).
1
Items of commerce, including but not limited to devices, therapeutics, catalysts, advanced materials, diagnostics,
assays, and instrumentation.
2
Commercial activities including but not limited to consulting, manufacture, analysis, processing, and design.
3
Tools and methods that can be used to improve or enhance a company’s internal processes, including but not
limited to quality control methods, decision-making tools, training, waste stream management, and manufacturing
apparatus and methods.
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Commercialization Proposal /
Invention Disclosure Form
9. Enablement: Please provide a detailed description of how your invention would be made or
practiced. If additional experimentation is needed to determine any aspects of how your invention
would be made or practiced, please describe.
10. Stage of Development:
a. Please provide the earliest date of conception (as close as possible):
b. Please summarize results you have obtained that support the idea that this invention is feasible
and can work. If you have developed a prototype, please also describe the prototype.
11. Future Plans: Do you plan to continue developing or working with this technology? If so, please
describe your goals and next steps.
12. Past Public Disclosures: List all external disclosures of information about this invention regardless of
form. Examples of forms of disclosure include journal articles, submitted manuscripts, abstracts,
theses, public presentations, web pages, posters, consultations, emails, and verbal and written
discussions; in each case, this is with respect to disclosures with parties outside of TAMUS.
13. Funding: Rights in technologies may be impacted by, or obligated under, the terms of agreements
with entities that provided the funding that led to the technology’s development. Examples of
entities that provide funding under agreements include, but are not limited to, federal agencies,
state agencies, non-profit research foundations, commodity boards, private companies, industry
associations/organizations, and providers of gift contributions.
a. If no funding provided under a funding agreement was used to develop this invention,
please indicate so by checking this box
and proceed to question 14. Otherwise, proceed
to question 13.b.
b. Please list all sources of funding used in the conception and development of the disclosed
technology/discovery; include grant numbers or other unique, assigned identifiers for each.
Name of Funding
Agency/Entity
Federal Grant / Agreement
/ Contract / or Other Type of
Award No.
Internal Acct. No. or Other
Type of Internal Reference
No.
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Contracts & Grants Office
managing award (e.g.
AgriLife, TAMU, TAMRF,
TEES, etc.)
Commercialization Proposal /
Invention Disclosure Form
14. Other Contractual Obligations: Rights in technologies may be impacted by materials of others used
to develop them (e.g. materials obtained under a Material Transfer Agreement; materials sent by a
colleague at another institution; purchased materials for which there was a purchase agreement;
information obtained under a Nondisclosure Agreement; information received from an outside
party under terms of confidentiality; software received under a license from an outside party).
Please list all sources of materials/information used in the conception and development of this
technology or discovery and whether a Material Transfer Agreement, Nondisclosure Agreement,
license or other agreement was required to obtain the materials/information.
15. Check all that apply:
15.a
Yes
No
This disclosure is required by, or motivated by, the terms of a sponsored
research agreement or other contract
If you answered “Yes” to 15.a, for each relevant agreement list the name of the party with
which the agreement or contract has been made.
15.b
15.c
There is a publication or other public/non-confidential release of
information on this invention planned in the near future.
If you answered “Yes” to 15.b, provide a list of all planned publications and dates.
Yes
No
Yes
No
This disclosure was requested by the OTC.
If you answered “Yes” to 15.c, provide the names of the requestor(s).
15.d
This disclosure was requested by department head, research
administration or other TAMUS official.
If you answered “Yes” to 15.d, provide the names of the requestor(s).
15.e
This was co-invented this with someone in another university or other
organization, and they have requested that this be disclosed.
If you answered “Yes” to 15.e, provide the names and contact information for the
requestor(s).
15.f
There is a planned discussion with a potential licensee, investor or
research sponsor regarding this invention.
If you answered “Yes” to 15.f, provide details regarding this planned discussion.
Yes
Yes
Yes
No
No
No
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Commercialization Proposal /
Invention Disclosure Form
15.g
Yes
No
Do you see yourself having a role in commercializing this invention?
If you answered Yes to 15.g please describe what you envision your role might be.
15.h
There is a desire to create or work with a start-up company that would
make use of this invention.
If you answered “Yes” to 15.h, provide details regarding this potential objective.
15.i
Have you spoken to a System-contracted attorney regarding this
invention?
If you answered “Yes” to 15.i, please provide the law firm and name of person you spoke
with.
Yes
Yes
No
No
16. Export Control. THIS SECTION MUST BE COMPLETED. The Texas A&M University System (TAMUS)
has an obligation to implement an export control compliance program to reduce the risk of export
control violations. All employees and students must be aware of and are responsible for the export
control implications of their work and must ensure their activities conform to export control laws
and regulations. There are severe institutional and individual sanctions for violations of export
control laws and regulations, including the loss of research funding, loss of export privileges, as well
as criminal and civil penalties. It is important for OTC to understand if the technology that is the
subject of this disclosure is controlled by export regulations.
Please address the following questions for this purpose:
a. To the best of your knowledge, is the technology being disclosed or the technical
information in the disclosure subject to US export Control laws including, without limitation,
those implemented by the Department of Commerce through its Export Administration
Regulations (EAR)4 and the Department of State through its International Traffic in Arms
Regulations (ITAR)5, as well as those imposed by the Treasury Department through its Office
of Foreign Assets Control (OFAC)6?
YES
NO
If yes, please explain:
b. What is your item made of? (Please provide a list of components, chemicals, etc.)
4
The Export Administration Regulations (EAR) 15 CFR 700-799 can be found at
http://www.access.gpo.gov/nara/cfr/waisidx_99/15cfrv2_99.html.
5 The International Traffic In Arms Regulations (ITAR) 22 CFR 120-130 can be found at
http://www.pmddtc.state.gov/regulations_laws/itar_official.html.
6 The Office of Foreign Assets Control (OFAC) 31 CFR 500-599 can be found at
http://www.access.gpo.gov/nara/cfr/waisidx_08/31cfrv3_08.html#500.
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Commercialization Proposal /
Invention Disclosure Form
c. Does your disclosure involve actual technology that has been completed or is the
technology only theoretical?
d. Was there any language in your grant that prohibits the participation of foreign nationals?
e. Are there any publication restrictions in your grant or contract?
If you are unsure if the technology that is the subject of the disclosure is subject to export control,
please check with the Office of Research Compliance. The Office of Research Compliance (ORC)
maintains a website with export control information and resources at
http://researchcompliance.tamu.edu/. Additional information and resources regarding these and
other regulations that impact university activities can be found at
http://researchcompliance.tamu.edu/export-controls. Questions on export controls can be sent to
exportcontrols@tamu.edu.
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Commercialization Proposal /
Invention Disclosure Form
INVENTOR DATA SHEET
Please complete an Inventor Data Sheet for each named inventor including non-TAMUS inventors.
Additional Inventor Data Sheets may be found at http://otc.tamu.edu.
Contribution:
Briefly describe your contribution to the disclosed technology.
Inventor:
Preferred Salutation: Professor
Dr.
Ms.
Mrs.
Mr.
Other
First:
MI:
Last:
PhD
DVM
MD
MS/MA
BS/BA
Other:
Please name any joint appointments and/or affiliation that you have with another institution,
including but not limited to joint appointments within TAMUS (if any):
University ID Number (UIN):
Country of Citizenship:
Work Address:
Home Address:
street address
street address
city/state/zip
city/state/zip
phone
phone
fax
fax
work email
home email
TAMU System Employment Status/Title (including former employees):
Professor
Associate Professor
Assistant Professor
Employed Student
Other Status/Title (if not listed above):
Former Texas A&M University System Employee
If you checked “Former Texas A&M University System Employee,” were you employed by the A&M
System at the time of technology or discovery?
YES
NO
System Component: (AgriLife, TAMU, TEES, TTI, Kingsville, Corpus Christi, etc.):
Department/Division:
Laboratory or Center:
Non-TAMU System Employment Status/Title (for non-System inventors only):
Please provide your Position/Title and Company Name:
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Invention Disclosure Form
SIGNATURE PAGE
Each named inventor must sign and date this page; non-TAMUS inventor signatures are optional. All
inventors should be named on this page. Please also indicate each inventor’s percentage of contribution
to the disclosed technology.
Title of Disclosure:
Inventor Signatures:
I/We certify that the information in this Invention Disclosure / Commercialization Proposal is
complete and accurate.
Printed Name:
% Contribution
Date
Printed Name:
% Contribution
Date
Printed Name:
% Contribution
Date
Printed Name:
% Contribution
Date
Printed Name:
% Contribution
Date
Printed Name:
% Contribution
Date
Witness Signature (optional):
Disclosed to and understood by me this
day of "MONTH", "YEAR".
Printed Name:
Please submit this completed form including all Inventor Data Sheet(s) and the signed Signature Page to
disclosures@tamus.edu or mail to
The Office of Technology Commercialization / Attn: Disclosure of Technology
3369 TAMU / College Station, TX 77843-3369
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Commercialization Proposal /
Invention Disclosure Form
GUIDELINES
You may contact the Office of Technology Commercialization for a consultation prior to submitting your
proposal. Please contact us at 979-847-8682 or by email at OTC@tamus.edu.
1. If you have never submitted a commercialization proposal / invention disclosure before, it is
recommended that you contact the Office of Technology Commercialization to arrange a
consultation about your proposal.
2. If you are disclosing a plant variety or plant germplasm, or software, please use the Plant
Variety/Germplasm Disclosure Form or Software Disclosure Form as appropriate. These forms
are available at the OTC website.
3. Please be advised that your proposal will be assessed on the basis of how your invention could
enable a commercial opportunity. If you would like to discuss commercial applications of your
invention, please contact the OTC for a consultation.
4. In the event that your proposal is accepted, it will become the subject of a commercialization
plan, with the goal of achieving a licensing agreement with a company that will commercialize
the invention. In the event that your proposal is not accepted, you will be informed and may
elect to request a release of TAMUS rights in the invention such as it has been disclosed.
5. All questions must be answered and all inventor data sheets must be submitted. If any question
is not answered or if there are missing inventor data sheets, the proposal will not be reviewed.
6. If you have supporting documentation that will further clarify the nature of the invention and/or
the commercial opportunity, you may submit these along with the completed form and inventor
data sheet(s).
7. After submitting your proposal, and after verifying that the form is complete, the form will be
sent out for export controls review to determine whether the disclosure contains materials
which are subject to export control regulations. When your disclosure is returned to the OTC,
the proposal will be assigned to a project manager and you will be notified.
8. As per TAMUS Policy 17.01, the OTC will make a decision regarding your proposal within ninety
(90) days. Since the assessment process is interactive, you can accelerate this process by
meeting with the assigned project manager as soon as possible.
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Form Revised 09/20/2012-Version 13.1
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