DOR.OIPM.01 Disclosure Form

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Office of Intellectual Property Management
UHID:
INTELLECTUAL PROPERTY DISCLOSURE FORM
I. INSTRUCTIONS
Complete this form electronically and email an electronic version to Dr. Mark Clarke at
[email protected] Print one copy for all inventors/contributors to sign and send the signed
original disclosure form to Dr. Mark Clarke at University of Houston, 316 E. Cullen Building, Houston, TX
77204-2015. Incomplete forms will be returned to inventors for completion. The primary purpose of
this document is to capture relevant information about your intellectual property/invention. Apart from
a description of your intellectual property/invention, this document also serves to list those individuals
responsible for creating the intellectual property/invention. In general, these individuals fall into three
categories: (1) an inventor (whose name will appear on any published patent and shares in any revenue
generated by commercialization of any patent); (2) a collaborator (who is not a UH employee but can
also be an inventor and shares in any revenue generated by commercialization of any patent); and/or (3)
a contributor (who is NOT an inventor, whose name will NOT appear on any published patent but shares
in any revenue generated by commercialization). Please see Question 6 for more detailed information
on deciding whether an individual should be listed on this document as an inventor, collaborator or
contributor. For questions about this form, contact Dr. Mark Clarke by email at [email protected]
or by telephone at 713-743-9854. Refer to Appendix A at the end of the document for additional
guidelines for completing this document.
II. ADMINISTRATIVE INFORMATION
1.
Title of Invention, Technology, or Copyrightable Material:
2.
Abstract of Invention, Technology, or Copyrightable Material:
3.
Keywords (list as many as you believe are appropriate):
4.
Intellectual Property Category (check all that apply):
☐ Medical Device
☐ Drug/BioPharm
☐ Advanced Materials ☐ Energy-related
☐ Optics/Imaging
☐ Biotechnology ☐ Software/Copyright ☐ Method/”Know How”
☐ Other. Specify:
5.
Related Invention Disclosure(s) (use UHID number):
6.
Please answer the following questions about your intellectual property/invention:
(i) What is your intellectual property/invention?
(ii) What about your intellectual property/invention is new and/or better than existing
approaches/technologies?
7.
Full name, including salutation, and title(s) of inventor(s), contributor(s) and collaborator(s) as
well as a description of the relative contribution of each to support the identified percentage. If
necessary, append additional pages.
Note on Inventorship:
To be an "inventor" that person must have contributed to the CONCEPTION of one of the claims
in a patent application. Conception occurs when all that remains to be accomplished in order to
perfect the intellectual property is construction. It is "the formation in the mind of the inventor
of a definite and permanent idea of the complete and operative invention." The inventor is not
required to have reduced the invention to practice.
A “collaborator” is a person who is outside of the UH System and who has been, is, or will be a
contributor, inventor or joint inventor (as those terms are defined in this Form) on the disclosed
intellectual property.
A “contributor” is a person who is deemed by the inventors to share in future revenues based
on his/her percentage contribution but is not an “inventor” and will not be listed as such on any
patent.
To be joint inventors, there must be some sort of communication or collaboration between the
persons involved. However, it is not necessary that the joint inventors have equal contributions,
invent at the same time, or invent all the intellectual property of every claim of the disclosure
jointly. Accordingly, if the joint inventors invented different parts of the intellectual property,
good records should be kept so that the named inventors can be changed should one inventor’s
contributions be dropped from the patent application’s claims.
*The Office of Intellectual Property Management should be notified if an inventor, joint
inventor or contributor leaves UH.
Individual 1. Primary Investigator (PI for purposes of the disclosure only). Is PI also an inventor?
☐ Yes ☐ No
Name
Title
Percentage
College:
Department and/or Center:
Campus:
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Description of the relative contribution:
University Address
Home Address
Employee ID #:
Permanent Address (if different
to Home Address
Citizenship: ☐ U.S.A. ☐ Perm. Res.
(If other, specify:
)
Email:
☐ Other
Telephone:
Fax:
Other:
a) Percent time employed at UH:
b) Other Employment/Appointments, if any:
c) Have you signed an agreement with a third party which relates to the invention?
☐ Yes ☐ No
d) If yes, ATTACH A COPY.
Individual 2. ☐ Inventor or ☐ Contributor or ☐ Collaborator
Name
Title
Percentage
College:
Campus:
Department and/or Center:
Description of the relative contribution:
University Address
Home Address
Employee ID #:
Permanent Address (if different
to Home Address
Citizenship: ☐ U.S.A. ☐ Perm. Res.
(If other, specify:
)
Email:
☐ Other
Telephone:
Fax:
Other:
a) Percent time employed at UH:
b) Other Employment/Appointments, if any:
c) If a Collaborator, is an Inter Institutional Agreement or collaboration agreement in place
between the Collaborator and UH?
☐ Yes ☐ No
d) If yes, ATTACH A COPY.
Individual 3. ☐ Inventor or ☐ Contributor or ☐ Collaborator
Name
Title
Percentage
College:
Campus:
Department and/or Center:
Description of the relative contribution:
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University Address
Employee ID #:
Home Address
Permanent Address (if different
to Home Address
Citizenship: ☐ U.S.A. ☐ Perm. Res.
(If other, specify:
)
Email:
☐ Other
Telephone:
Fax:
Other:
a) Percent time employed at UH:
b) Other Employment/Appointments, if any:
c) If a Collaborator, is an Inter Institutional Agreement or collaboration agreement in place
between the Collaborator and UH?
☐ Yes ☐ No
d) If yes, ATTACH A COPY.
Individual 4. ☐ Inventor or ☐ Contributor or ☐ Collaborator
Name
Title
Percentage
College:
Campus:
Department and/or Center:
Description of the relative contribution:
University Address
Home Address
Employee ID #:
Permanent Address (if different
to Home Address
Citizenship: ☐ U.S.A. ☐ Perm. Res.
(If other, specify:
)
Email:
☐ Other
Telephone:
Fax:
Other:
a) Percent time employed at UH:
b) Other Employment/Appointments, if any:
c) If a Collaborator, is an Inter Institutional Agreement or collaboration agreement in place
between the Collaborator and UH?
☐ Yes ☐ No
d) If yes, ATTACH A COPY.
Note: If more than four individuals will appear on this document please “cut and paste” additional
inventor information boxes into the document immediately above. Number the additional boxes
sequentially beginning with Individual 5, etc.
8.
Location(s) and dates where (1) the idea was conceived, (2) where the research related to the
invention was performed, and (3) where the invention was actually reduced to practice:
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Date
Location
Idea conception
Research performed
Reduction to practice
(may not apply)
(a) Date the first drawing or sketch was made:
(b) Date first construction or model was made:
(c) Date conception was first documented:
“Conception” occurs when the inventor or inventors has formulated the complete invention in
his or her mind, with no more remaining than the construction of the invention without much
experimentation or guessing.
In the United States, “actual reduction to practice” is said to occur when: the intellectual
property is constructed and shown to be operating.
9.
Location of the relevant notebooks containing information pertaining to this intellectual
property and a list of the relevant page numbers. Notebooks are preferably signed and
witnessed.
10.
List of sponsor(s) of the intellectual property and the relative contribution (percentage) of each
sponsor. This includes both private and public funding or grants. Call your OCG grant
administrator if unsure.
Sponsor
Percentage
Acct. no.
Has the intellectual property been reported to the Sponsor? ☐ Yes ☐ No
Briefly describe the purpose of the grant or contract and how development of the intellectual
property was aided:
11.
Any prior specific or general disclosures of the intellectual property, oral presentations,
publications, negotiations, disclosures to sponsors, disclosures to colleagues at other schools,
etc. Provide location, date, and citation and attach copies of meeting abstracts, presentation
slides, or publications/publication drafts.
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12.
Is any publication or disclosure of the intellectual property planned or scheduled within the next
six months? Attach draft of manuscript, if available. Include publication/presentation date of
any poster, research paper, etc.
☐ Yes ☐ No
If yes, describe:
13.
Has the intellectual property been disclosed to industrial representatives? Has any commercial
interest been shown in the intellectual property? If so, list companies, specific individuals, and
their titles.
14.
List other companies that might be contacted for interest in the intellectual property and
potential licensees or manufacturers and other companies active in this area. Especially
important are contacts you may have inside a company. Include e-mail addresses where known.
15.
What is the potential market for the intellectual property? Outline your views for potential
commercial applications.
16.
Have you built a prototype model/device, created a simulation, or designed software to test
whether your invention works?☐ Yes ☐ No
If yes, give dates and details of tests.
17.
List known inventions, patents, or publications by other research workers related to or similar to
this one. Inventors are encouraged to conduct preliminary patent searches. The following is a
website that may be used for patent searching. Submit your findings in the space provided
below or attach a separate page to this Disclosure.
Google Patents
http://www.google.com/patents
Enter Patent Search Findings Here
19.
List independent referees with expertise in the area of the intellectual property with whom we
may communicate with for additional information. No communication will be made without
your approval. These can be individuals within and outside the university.
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20.
Discuss the twelve (12) month work plan for this intellectual property.
21.
OTHER.
(a) Did the research leading to the intellectual property utilize biological material obtained from
an outside source?
☐ Yes ☐ No
If yes, what is the source?
(b) Was a material transfer agreement in place between the outside source and UH?
☐ Yes ☐ No
If yes, name of institution/company:
Date of Agreement:
. ATTACH COPY.
III. The Non-Proprietary Description
An ideal non-proprietary description has one simple objective – to generate interest from potential
licensees without revealing how the innovation is accomplished. It communicates the intellectual
property’s benefits and advantages but provides no information which would enable the reader to
achieve them. An effective non-proprietary description walks a fine line between revealing too little to
be of interest and telling them so much that the intellectual property is no longer proprietary.
Here are sample questions you might answer in the description:




What is the function of the intellectual property? For example, will it improve or make possible a
process or product? Summarize the purpose.
How will the intellectual property benefit the licensee? Will it reduce costs, increase efficiency, or
improve accuracy? Summarize the use of the intellectual property.
Why is the intellectual property an improvement over what exists now? That is, why is it better than
competing products, methods, processes, or applications? Advantages of this intellectual property
over current practice.
What is the intellectual property’s working status? For example, is there a working prototype? Has
clinical testing started? State of development of the intellectual property.
Whenever possible, try to avoid technical language, i.e. use layman’s language – decision makers in
industry are not always experts in your field, and in some cases, have no technical background at all.
Attach the Non-Proprietary Summary to the Disclosure.
Title:
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Description
IV. THE DISCLOSURE
It is important that you provide the most comprehensive and complete disclosure possible as the
disclosure may be used as legal verification of the intellectual property. Furthermore, a complete
disclosure will allow the Office of Intellectual Property Management to make an adequately informed
recommendation with regard to whether the university will proceed with protection or marketing of the
intellectual property. If there are deficiencies in the disclosure, further information from the inventor
must be requested and thus slow processing time.
1.
Append a full description of the intellectual property. Information that should be included in a
full description includes:
(a) Drawings illustrating the intellectual property or flow diagrams (required for software);
(b) Chemical structural forms;
(c) List of equivalents which can be substituted for the intellectual property or for the
components of the intellectual property;
(d) Reprints of articles or patents describing the device, products, process or methods similar to
the one described in the disclosure;
(e) A specific section describing the novel aspects or unique features of the device, products,
process, or methods explaining how the intellectual property differs from the present
technology, the non-obviousness of the intellectual property, what problems does it solve
and what advantages does it possess;
(f) The possible uses for the intellectual property, in addition to immediate applications and
uses that might be realized in the future;
(g) The current status of the intellectual property, what tests have been done and describe all
available experimental data;
(h) If software, include the first and last 100 lines of code and include a disk/CD of the software
in compiled and non-compiled forms (software should also include instructions for
operating and installing the software);
(i) A list of potential claims of the intellectual property.
V. ADDITIONAL INFORMATION
1.
Have all required approvals been secured for the work on this intellectual property (human
subjects, recombinant DNA, radiation safety, animal care, etc.)?
☐ Yes ☐ No
2.
Signatures. By my signature below I assert that I am the inventor or contributor of this
intellectual property, have read this disclosure and feel it is a complete and adequate disclosure
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of the intellectual property, and agree to be bound by the University of Houston’s policy on
Intellectual Property (including without limitation with regard to University research) and to
sign appropriate documents to acknowledge and secure the University of Houston’s ownership
of the intellectual property. To the extent this intellectual property is the result of University
research that I am engaged in under the University of Houston’s policy on Intellectual
Property, I hereby assign all of my right, title, and interest to the intellectual property
described herein, including worldwide rights therein, to the University of Houston, and I
acknowledge that the compensation or other benefits that I received from the University of
Houston are valuable and sufficient consideration for this assignment. The percentage
allocated to me on this disclosure is correct.
3.
If you are a staff member, graduate student, or postdoctoral fellow, has the principal
investigator in your lab been informed of this intellectual property disclosure?
☐ Yes ☐ No
INVENTOR/CONTRIBUTOR SIGNATURE:
Processing of this intellectual property disclosure by OIPM cannot commence until all inventors sign and
date this intellectual property disclosure in the spaces below.
Name
Signature
Date
Name
Signature
Date
Name
Signature
Date
Name
Signature
Date
Mark S. Clarke, Ph.D.
Signature
Associate VC/VP, Technology Transfer
Date
Received by the University of Houston:
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APPENDIX A
Additional guidelines
 Timeline for Inventors
 Submit a complete disclosure in a timely fashion: at least 3 months prior to a public
disclosure (thesis publication, journal paper article, posters, textbook, etc.)
 If you have already made a public disclosure, we have 1 year from the date of disclosure
to protect the invention in US. Foreign rights are generally lost permanently after such a
public disclosure.

Inventors shall present their technology to the Intellectual Property Committee for review and
feedback before Non-Provisional patent application. The IPC meets every month to review new
inventions during the fall and the spring semesters. Base your presentation to the IPC on the
following items:
 Prior Art Search
 www.uspto.gov: Review the current patent landscape in your invention
 Define the novel attributes of the invention compared to current standards
and/or products
 Identify the patentable elements not covered in the existing patent landscape
 Commercial Potential
 Identify the commercial needs and niche of your invention
 Identify other applications for your invention
 Identify existing competition
 Identify commercial partners

Commitment
 Note that patent prosecution demands substantial time from the inventor (you), to
respond to office actions, work with attorneys, and present data as required to defend
the patent. Consider such factors when making invention disclosures.
 Mark your calendar – Make yourself available to present your invention before the IP
Committee.
 Commercialization efforts would require additional time from the inventors.
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