Why should I submit a Technology Disclosure?
NTU faculty, staff or students should disclose an invention to the ORIC if they believe their research could be commercialized for public use and benefit. Inventions from academia are typically in the very early stages of development and require a significant investment before bringing a product to market. Intellectual property protection often provides the necessary incentive for a company to pursue such a project.
The Intellectual Property Evaluation Committee (IPEC) will assess whether to begin the legal protection process and work to identify outside development partners. If university or government funds were used for your research, PI is required to file a technology disclosure. Similar requirements may exist for other sponsored projects.
How do I know if my discovery is an invention? Should I submit a Technology Disclosure?
You are encouraged to submit a Technology Disclosure for all developments that you feel may solve a significant problem and/or have significant value. If you are in doubt, contact the ORIC to discuss the potential invention. We can also advise on alternatives to licensing.
When should I complete a Technology Disclosure?
You should complete a Disclosure Form whenever you feel you have discovered something unique with possible commercial value. This should be done well before presenting the discovery through publications, poster sessions, conferences, press releases, or other communications. Once publicly disclosed (i.e., published or presented in some form to non-ORIC/NTU listeners), an invention may have no, restricted or minimal potential for patent protection.
Will I be able to publish the results of my research and still protect the commercial value of my intellectual property?
Yes, but since patent rights are affected by these activities, it is best to submit the Technology Disclosure Form well before any public disclosure of the invention. Once publicly disclosed (published or presented in some form), an invention may have restricted or minimal potential for patent protection. Be sure to inform the ORIC of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal submission, dissertation/ masters thesis, publication, or other public presentation of the invention.
When or how do I disclose research tools?
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 new separation processes) may need to be patented so that a company will invest in the engineering development to make the process broadly useful. If you have research tools that you believe to be valuable, the ORIC will work with you to develop the appropriate protection, licensing and distribution strategy.
Should I disclose software?
Yes, the ORIC assists inventors and authors in licensing software under a variety of distribution strategies. In addition to licensing software code for commercial development and distribution, the ORIC licenses research code for non-commercial and/or academic purposes and assists authors in offering software via open source licenses. If you have software that you believe incorporates a patentable process, you should submit the Invention Disclosure Form to ORIC for the patentable process and submit the NTU-ORIC Software Code Disclosure Form for the software code. The Technology Disclosure submission should be filled out completely, including sponsorship information, a description of the software and original signatures.
Should I report contributions of non-NTU inventors?
All contributors to the ideas leading to an invention should be mentioned in your disclosure, even if they are not NTU employees. The ORIC, along with legal counsel, will determine the rights of such persons and institutions. It is prudent to discuss collaborations (preferably before they begin) with the ORIC to understand the implications for any subsequent inventions.
What rights does a research sponsor have to any discoveries associated with my research?
Rights granted to research sponsors vary according to the contract put in place. For more information see the ORIC IP Policy.
What is considered a public disclosure of an invention?
Anything that is readily available to the public (a journal paper, a conference presentation, a publication on the Web, Facebook, a YouTube video, even a dissertation indexed at the library) that describes the basic ideas in enough detail that someone else would be able to make and use the invention; i.e., those ideas that are new. Showing or telling these ideas may also constitute a public disclosure, as does selling or offering for sale a prototype of the invention.
Should I refrain from publishing a paper or making an public disclosure of an invention before ORIC has filed for a patent?
No, If possible, we highly recommend that you disclose your invention several months before your invention is to be publicly disclosed to ensure that it may be properly protected.
Questions that may arise when filling out the Technology Disclosure Form:
Why is the contract/grant information important to ORIC?
ORIC is required to report to the concerned department/agency inventions created under sponsored research. If the University decides not to take title to such an invention (that is, decides not to keep it), then the sponsoring agency has rights to it. If the sponsoring agency doesn’t wish to pursue it, the invention may be assigned back to the inventors. Non-Government sponsors may also have intellectual property clauses and obligations attached to the agreement of such sponsorship with which University must comply.
How detailed should the description of the invention be?
As detailed as possible. All information provided to ORIC will be kept confidential. Without adequate information, ORIC/IPEC cannot perform a complete evaluation of the invention’s licensing potential, nor can we obtain an accurate legal opinion as to whether it is patentable. The first meeting of the Intellectual Property Evaluation Committee and the inventor(s) is a time when the invention may be discussed in greater detail.