invform

the Office of Technology Management at The University of Texas Health Science Center at Houston

OFFICE OF TECHNOLOGY MANAGEMENT
-INVENTION, TECHNOLOGY, OR COPYRIGHTABLE MATERIAL DISCLOSURE-

PLEASE PRINT THIS FORM AND TYPE THE INFORMATION or COPY IT INTO YOUR WORD PROCESSOR AND INSERT TEXT

File #:

Submitted to Edison:

1. TITLE OF INVENTION, TECHNOLOGY, OR COPYRIGHTABLE MATERIAL

2. CREATOR(S) INFORMATION
Please list the full name of University employees or students and any non-University personnel who have worked on the invention by conceiving or elaborating on the idea, designing experiments, evaluating experimental results, contributing features while building a device or performing a method, or otherwise directly contributing to the invention beyond merely providing funds, work space, or entirely directed labor. Note also if any such person holds a joint appointment with any other university, a company or governmental agency or the like

Name:		Social Security #
Title:		School:
Department:		Other Appointment (circle if applicable) Clayton Other__________
Citizenship:
Work Address:		Home Address:
Work Phone:		Home Phone:
Work Fax:		Email:
% Time Employed by UTHSC-H:		% Time Employed by ______________:
% Contribution:		Note: The Office of Technology Management should be informed of any changes to the above information

Name:		Social Security #
Title:		School:
Department:		Other Appointment (circle if applicable) Clayton Other__________
Citizenship:
Work Address:		Home Address:
Work Phone:		Home Phone:
Work Fax:		Email:
% Time Employed by UTHSC-H:		% Time Employed by ______________:
% Contribution:		Note: The Office of Technology Management should be informed of any changes to the above information

Name:		Social Security #
Title:		School:
Department:		Other Appointment (circle if applicable) Clayton Other__________
Citizenship:
Work Address:		Home Address:
Work Phone:		Home Phone:
Work Fax:		Email:
% Time Employed by UTHSC-H:		% Time Employed by ______________:
% Contribution:		Note: The Office of Technology Management should be informed of any changes to the above information

Name of Creator (from above) that should be the principal contact person:

3. FUNDING SOURCE:

Federal Funds	Percent:	Agency Name: Grant #:
UTHSC-Houston Funds	Percent:	UTHSC-H Dept.:
IMM Funds	Percent	Program Name:
Other Institutions	Percent:	Institution’s Name:
Other Sources	Percent	Source Name: Contract #:

4. Is a royalty sharing agreement in place when more than one inventor is listed?
__Yes __No __N/A

5. Have non-UTHSC-H inventors disclosed invention to their respective institutions?
__Yes __No __N/A

6. THE INVENTION:

(a) Invention Type: ___Device ___Drug ___Method ___Composition ___Software ___Other

Attach a layman's description of the invention. Be as specific as possible and address the following points:

(i) Summarize the purpose and use of the invention (Specifically, describe the problem solved)

(ii) Novelty and non-obviousness of the invention (Specifically, why would someone skilled in the field not see this as an obvious solution to the problem?)

(iii) Similar inventions currently in use

(iv) Advantages of invention over current practice (Specifically, how is this invention different from the known prior art?)

(v) A list of potential claims of the invention

() State of development of the invention: ____ Idea ____ Prototype ____ Sufficient information to make the invention

(An invention goes beyond a mere idea. It involves a tangible solution to a perceived problem)

6. CONCEPTION AND DEVELOPMENT OF THE INVENTION

(a) Date invention was conceived: ________________________

Do you have evidence to support this date? ____Yes ____No

If yes, what type of evidence (lab notebooks, other documentation, etc.)? ____________

(b) Date the first drawing or sketch was made: ________________________

ATTACH SUPPORTING MATERIALS (DATA, DRAWINGS, PHOTOS, FORMULAS, ETC.)

(d) Approximate time spent by you, personally, in making the invention?

_____________________________________

(e) Was any of this work performed at UTHSCH?

___Yes ___No

If no, is it your intent to assign this invention to UTHSCH?

___Yes ___No

(f) Were any of the following used in the development of the invention:

UTHSC-H Facilities or Technical Support: (Laboratories, offices, personnel, etc.)

___Yes ___No

UTHSCH Equipment: (tools, machinery, etc.)

___Yes ___No

UTHSCH Materials: (Supplies, etc.; if scrap waste, or salvage materials were used, give estimated value of materials.)

___Yes ___No Estimated dollar value: $ ______

(g) Estimated amount of UTHSCH funds, other than salaries and wages, which were actually obligated or expended for the purpose of making the invention:

$______

(h) Contribution of time or services of other UTHSCH employees (state approximate number of hours and type of assistance):

___Yes ___No

7. DISCLOSURE:

(a) Has the invention been, or will it be disclosed or described in any manner (publication, abstracts, world wide web, oral presentation, etc.)?

____Yes ____No;

If Yes, answer (b), (c) and (d), below

(b) Date invention was first disclosed to others: ______________

(d) Date of the first written disclosure: ______________________

(e) Has the invention been tested?

____Yes ____No;

If yes: ___experimentally ___routinely

If yes, give date and results of test: Date: _____________

Details: ______________________________________________________________

8. PRIOR ART: Please provide a list and copies of all known related publications and patents.

The following are World Wide Web sites that may be used for patent searching. You are encouraged to conduct a preliminary search and submit your findings along with the disclosure.

http://autm.net/	Assoc. of University Technologies Managers
http://www.uspto.gov/	US PTO
http://www.delphion.com/	Delphion
http://sunsite.unc.edu/patents/intropat.html	STO's Internet Patent Search System
http://www.micropat.com/	MicroPatent

9. COMMERCIALIZATION:Please address the potential commercialization of the invention as follows:

(a) Commercial possibilities/value of the invention/

________________________________________________________________________

(b) A list of potential licensees or research sponsors

________________________________________________________________________

(d) Key words or phrases useful in computer searches relating the invention to other products, processes or devices.

________________________________________________________________________

10. MATERIALS:

(a) Did the research leading to the invention 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 UTHSCH?

____Yes ____No

If yes, name of institution/company:__________________________________

Date of Agreement:________________. PLEASE ATTACH COPY

If yes, name of sponsor/company:__________________________________________

Title of study:_____________________________________________________________

(d) Is a clinical study or additional research directed towards the development of this invention anticipated within the next 12 months?

____Yes ____No

If yes, name of sponsor/company:_____________________________________

Title of study:_____________________________________________________

LEGAL STANDARD FOR INVENTORSHIP

Conception is the touchstone of inventorship.[1] The inventor is the person or persons who conceived the patented invention.[2] Conception is the formation in the mind of the inventor, or the minds of the inventors, of a definite and permanent idea of the complete and operative invention, as it is to be applied in practice.[3]

Conception must encompass all limitations of the claimed invention. It is completed only when the idea is so clearly defined in the mind of the inventor, or minds of the inventors, that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.[4] A bare idea is not enough for conception. The idea must be definite and permanent in the sense that it involves a specific approach to the particular problem at hand. The idea must be sufficiently precise that a skilled artisan could carry out the invention without undue experimentation.[5]

In some cases, an invention results from the collective effort of multiple inventors. This is referred to as “joint inventorship.” Joint inventorship may occur among multiple inventors even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.[6] Thus, if a patent application has fifty (50) claims, and each claim has five (5) limitations, totaling two hundred and fifty (250) limitations in all, someone may be a joint inventor on that patent application if he or she contributed to the conception of only a single claim limitation.

1 Sewell v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994).
2 C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340, 1352 (Fed. Cir. 1998).
3 Singh v. Brake, 222 F.3d 1362, 1367 (Fed. Cir. 2000).
4 Id.
5 Burroughs Wellcome Co. v. Barr Lab, Inc., 40 F.3d 1223, 1229-’30 (Fed. Cir. 1994).
6 Id. at 1227; 35 U.S.C. §116

ALL UTHSC-H INVENTORS LISTED AS A CREATOR MUST SIGN THIS DISCLOSURE FORM.

Signature	Printed Name	Date
Signature	Printed Name	Date
Signature	Printed Name	Date

PLEASE ATTACH ADDITIONAL SHEETS FOR CO-INVENTORS SIGNATURE AND MAILING ADDRESS.

PLEASE RETURN THIS FORM ALONG WITH ANY ADDITIONAL ATTACHMENTS THAT MIGHT FURTHER EXPLAIN THE INVENTION (e.g.. manuscripts, reprints, related publications, etc.) TO THE OFFICE OF TECHNOLOGY MANAGEMENT, UCT 1470, HOUSTON, TEXAS 77030, PHONE 713.500.3369, FAX 713.500.0331. FACSIMILE COPIES MUST BE CONFIRMED WITH AN ORIGINAL.