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Invention Disclosure

When an inventor believes that he or she has created something that qualifies as an invention, it is necessary to reveal the information to Technology Commercialization Services (TCS) by filling out a document known as an Invention Disclosure Form. This disclosure should list all sponsors of the research and should include all the information necessary to pursue protection and commercialization activities. It is critical that you complete every section of the disclosure in as much detail as possible or its processing can be delayed. You should also note the date of any upcoming publications or other public disclosure describing the invention. When you are finished, you may e-mail an electronic copy of the disclosure to TCS, but you will need to send a signed copy as well. This document will be treated as confidential. One of the TCS Licensing Directors will contact you shortly after your submission to discuss the invention and its potential commercial applications.
All researchers are required to disclose to UConn all intellectual property that could constitute inventions or copyrighted works. This is especially important where any portion of the funding comes from the federal government, private foundation or commercial sponsor. Federal law requires prompt disclosure for federally funded inventions; UConn, inventors and involved companies could lose very significant rights if disclosures are not promptly made.
Any faculty, staff member or student who believes he or she may have created an invention or has a novel idea is obligated to disclose the nature of the invention and to provide background information and literature to TCS. A disclosure should be submitted to TCS once a researcher can concisely define the invention and have reduction to practice to substantiate the invention either through modeling or experimentation. A disclosure form should always be submitted prior to public disclosure. For example, it is advisable to submit a disclosure around the time one is preparing a manuscript for a peer-reviewed journal. To avoid overlooking inventions, researchers should err on the side of inclusion and let TCS conduct a professional evaluation.
Inventions are easy to define, but can be difficult to recognize. You are encouraged to submit a disclosure for all developments that you feel may solve a significant problem and/or have significant value. If you are unsure, you can quickly submit an Innovation Alert, which is a pre-disclosure form, to prompt a quick review and discussion with TCS staff. An invention is “the discovery or creation of a new material (either a new manufactured product or a new composition of matter), a new process, a new use for an existing material or any improvements of any of these.” Computer software may also be classified as an “invention.”

The United States patent law requires that an invention meet the following three criteria, in order to be eligible for patent protection:

  • Novelty: The invention must be demonstrably different from already available ideas, inventions or products (known as “prior art”). This does not mean that every aspect of an invention must be novel. For example, new uses of known processes, machines, compositions of matter and materials are patentable. Incremental improvements on known processes may also be patentable.
  • Usefulness: For an invention to be patentable, it must have some utility or application, or be an improvement over the existing products and/or technologies.
  • Non-obviousness: The invention cannot be obvious to a person of “ordinary skill” in the field. Non-obviousness usually is demonstrated by showing that practicing the invention yields surprising, unexpected results.

After evaluating the invention disclosed, the TCS staff will determine whether a potential invention meets these criteria. Some university research projects are clearly oriented toward invention from the outset. For example, the goal of a project may be to develop a new alloy, or it may be to find a new test for AIDS. If the research is successful, the result is likely to be an invention. Other research at UConn may not lead to a new discovery or invention. For example, a study of the effects of radiation on plant growth might identify previously unknown effects, but this new knowledge, while valuable and publishable, is not necessarily an invention. However, an invention could result if, while studying the radiation effects, the researcher discovered that a specific radiation frequency – applied at a particular period of plant gestation – increased the size of the mature plant by an average of 5 percent. The technological process of applying that radiation frequency at a specific time in a plant’s life could be an invention.

Sometimes identifying which part of a complex research effort might constitute an invention is very difficult. History is replete with examples of inventions buried in scientific studies focused on other issues. Frequently, new tools or techniques are developed to meet a particular research objective, but are overlooked once the objective is reached. These tools and techniques may constitute valuable inventions. This example illustrates that the scope of possible inventions can be very broad. If you are unsure if what you have discovered is an invention, contact TCS. We can also advise on alternatives to licensing.

All contributors to the ideas leading to a discovery should be mentioned in your disclosure, even if they are not UConn employees. TCS will determine the rights of such persons and institutions. It is prudent to discuss with TCS staff all working relationships (preferably before they begin) to understand the implications for any subsequent inventions. TCS routinely negotiates inter-institutional agreements for technologies jointly developed with other universities.
Yes. Typically research tools are materials such as antibodies, vectors, plasmids, cell lines, mice and other materials used as “tools” in the research process. Research tools do not necessarily need to be protected by patents in order to be licensed to commercial third parties and generate revenue for your laboratory. Other research tools (such as a new separation process) may need to be patented in order for a company to invest in the engineering development and make the process broadly useful. If you have research tools that you believe to be valuable, TCS will work with you to develop the appropriate protection, licensing and distribution strategy. TCS or your grants office will also help you distribute research materials at zero or minimal charge to other academic collaborators while preserving a material’s commercial potential.