December 12, 2002
New form speeds assessment of UW inventions
The Office of Technology Licensing (OTL) has announced a new Record of Invention Form to more effectively serve the process of commercializing inventions arising from UW research.
The ROI form permits the researcher to provide information that enables quick assessment of the commercial merits of an invention. The ROI form is now available at http://depts.washington.edu/otl/forms.html and replaces the Invention Disclosure (ID-1) form.
Employees of the UW, and students and visitors participating in externally funded research projects on campus, are required to report their inventions to OTL. One of the most frequently asked questions is “what constitutes an invention?” The definition in the UW policy is clear but somewhat circular:
“The term ‘invention’ means any invention or discovery which is or may be patentable or otherwise protectable as to ownership. An invention may be a process, machine, manufacture, composition of matter or design, or any new or useful improvement thereof.”
“We encourage employees to submit the form, even if they are unsure whether a new invention has been made,” says Catherine Innes, director of educational outreach for the Office of Intellectual Property and Technology Transfer. “Submitting the form will allow OTL to begin evaluating the technology and assess both its commercial potential and whether it meets the requirements for a patent.”
Inventors should be aware that simply submitting the form does not provide legal protection for an idea. An idea may only be considered “protected” after a patent application has been applied for and granted; a process that typically takes three years to complete.
Publication or public disclosure of a patentable idea prior to filing a patent application will result in a loss of foreign patent rights and start a one-year clock for applying for protection in the U.S. This could significantly impact the commercial potential for an otherwise promising innovation. The detailed description of the invention that is supplied in the form is treated by OTL as confidential information, in order to protect the rights of the inventor and the UW.
After an inventor completes the form, the account is assigned to a member of the OTL staff, who will meet with the inventor to discuss possible commercial applications and licensing opportunities for the technology. This review process can take up to 90 days. Because an invention may become ineligible for patenting if it is discussed in detail in a publication, presentation, grant application or journal abstract submission, it is important that researchers work with OTL well in advance of any of these events.
Researchers should also be aware that contracts and grants for research support, materials, services or equipment may contain intellectual property terms that extend to inventions arising from the research project or use of the materials, services or equipment. OTL is available to help researchers understand the impact of these contracts on commercial opportunities for their innovations.
More information on the UW’s Patent, Invention and Copyright Policy is available at http://www.washington.edu/faculty/facsenate/handbook/Volume4.html. Additional information on patent procedures is at http://www.washington.edu/admin/adminpro/APS/59.04TOC.html.
For more information about the ROI form, call OTL at 206-543-3970, or e-mail the ROI Coordinator at otl@u.washington.edu .
