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Invention Disclosure FAQs

 

What is an invention?

An invention is a novel and useful idea relating to processes, machines, manufactures, and compositions of matter. An invention may include such things as new or improved devices, systems, applications of software, circuits, chemical compoiunds, drugs, cell lines, antibodies, mixtures, etc.

An invention can be made when something new and useful has been conceived or developed, or when unusual, unexpected, or non-obvious results have been obtained and those unexpected results can be utilized. Many inventions can be patented. Even if an invention is not patented, it can still be useful for a business purpose.

How do I submit an invention disclosure?

Invention disclosures are filed online using Sophia, a web-based software that enables the tracking of your disclosures and related patents and agreements. Sophia is also used to request Material Transfer Agreements (MTAs), Data Use Agreements (DUAs), and Confidential Disclosure Agreements (CDAs). You can log back on to view current information about your inventions and agreements.

In addition, The Sophia system will provide you with a convenient listing of the current status of all your invention disclosures. You can use this to complete progress reports for your federal sponsors.

Who should submit an invention disclosure?

Anyone who may be required to assign their rights to Tulane University should submit and invention disclosure to the OIPM. If you are unsure whether this applies to you and your inventions, please submit an invention disclosure and our office can assist in determining whether it is Tulane University owned or not.

Why should I submit an invention disclosure?

Tulane researchers should submit an invention disclosure if they believe there is an opportunity for their research to be developed for public and commercial benefit. The invention disclosure enables the OIPM to track your invention, evaluate it to identify the appropriate legal steps, and begin its work to identify commercial partners. If your invention was funded by a third party (federal funding, sponsored research, etc.), the invention disclosure provides information to the OIPM to meet any reporting obligations as required by the funding agreement, such as reporting through iEdison for federally funded works. To meet federal funding requirements (if applicable) and to facilitate OIPM review, the description must be "sufficiently complete in technical detail to convey a clear understanding the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological or electrical characteristics of the invention."

When should I disclose my invention?

You should complete an invention disclosure well ahead of any public disclosure to provide the OIPM enough time to take the appropriate steps to protect the invention. We recommend that inventions be disclosed to our office 90 days before a poster presentation or seminar, or at the same time a manuscript is submitted to a journal for review prior to publication. Publication of the work prior to a patent filing may limit our ability seek patent protections.

What is a public disclosure?

A public disclosure is the non-confidential sharing of information related to you invention, sufficient enough that someone "of ordinary skill in the art" would be able to practice your invention. Common public disclosures in academia include:

  • Journal publications (including arxiv.org and bioarxiv.org)
  • Conference presentations (including talks and poster sessions)
  • Abstracts
  • Graduate theses and defenses
  • Campus seminars that are open to the public
Is a disclosure to the OIPM the same as filing a patent?

No, the invention disclosure process is simply a way for the OIPM to process and track your invention. It does not provide any immediate patent protections. Upon review, it may be decided that a provisional patent application should be filed with the U.S. Patent and Trademark Office, providing temporary patent protection.

What information do I need to complete a disclosure to the OIPM?
  • Title and short description
  • The date of first public disclosure or anticipated public disclosure date
  • A detailed description of your invention. This can be a manuscript draft, a slide deck, or other written materials. To meet federal funding (if applicable) and to facilitate Stevens Center review, the description must be "sufficiently complete in technical detail to convey a clear understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological or electrical characteristics of the invention."
  • A list of all inventors, their email addresses (tulane.edu email preferred), and each inventor's percentage contribution (if not equal)
  • A list of funding sources used, the respective grant numbers, and contact information
  • If applicable, a list of agreements related to this invention, such as a Data Transfer Agreements, Material Transfer Agreements, Collaboration Agreements, Consulting Agreements, Clinical Trials Agreement, and other agreements.
  • For software, in addition to the above, a list of any third-party codes, databses, and libraries used or incorporated into your work
What happens after I disclose to the OIPM?

Once you have completed the online invention disclosure, our office will begin processing the file to confirm that all required information has been provided. We will follow up if there are any corrections that need to be made. You (and your co-inventors) will also receive an email from our team providing instructions on how each inventor will be able to confirm their contribution to the disclosure and "sign off" on the provided revenue/contribution allocation.

A licensing associate from our team will reach out to schedule a meeting. The goal of this meeting is to learn details of your invention and discuss any potential commercialization plans, licensing partners, or strategies you may have. This conversation will help us determine the appropriate approach to protect your invention and whether we should file a patent application. Within 30 days, we will provide a decision on whether or not we are pursuing a provisional or non-provisional patent application, depending on the timing for commercialization.

How does the OIPM evaluate inventions?

After the OIPM receives your invention disclosure, your designated Licensing Associate will connect with you to discuss potential commercialization strategies. In partnership with the Tulane Innovation Institute, the OIPM evaluates the potential for your invention to be commercialized, including understanding its current and future applications, the current status of similar inventions and related intellectual property by others, and the current and future funding environment to continue research in the field of the invention. We also evaluate together which potential existing or future businesses or companies may be interested in licensing your invention.

How is revenue derived from Tulane inventions distributed?

Net revenue received by Tulane University from licensing university-owned intellectual property is shared with the university or authors in accordance with the Tulane University Intellectual Property Policy. See Invention Royalties page.

How do non-Tulane inventors affect my invention disclosure?

It is important to include all inventors on your invention disclosure, whether they are affiliated with Tulane University or not, as patent and copyright law requires that all inventors be identified correctly. If an inventor is not affiliated with Tulane University, it is likely that he or she will be required to assign their rights to his or her organization (the "Joint Owner"). This results in the invention being jointly owned between Tulane University and the Joint Owner. The OIPM will work with the Joint Owner to manage any intellectual property arising from the joint invention. Revenue from inventions is typically split between Tulane University and Joint Owner, then distributed according to each organization's internal policies.

I received an error after inputting my Tulane credentials. Who can I contact?

You likely received this error because your log in credentials are duplicated in our information management system. Please contact the OIPM Data and Systems Administrator to be granted access to the system.

I still have questions. Who can I contact?

If you have worked with our office before, please contact your License Associate directly. Otherwise, please send an email to OIPM@tulane.edu and we will get back to you as soon as possible.