Inventors and Authors
The OIPDC offers two disclosure forms for your intellectual property. If you have a creative work that requires copyright protection, a Work Disclosure Form is needed. Typically this applies to software, music composition, dance, and literature. However if your discovery is an invention, and may be patentable, you will need to submit an Invention Disclosure Form to the OIPDC. Both forms are available on our website and are explained in more detail below.
Information For Inventions
An Invention Disclosure Form will serve as a complete and full description of the invention to the University. Its information will aid in searching patents and the open literature in an effort to determine novelty. The completed disclosure also provides key information concerning potential applications of the technology (its utility). The disclosure and any relevant prior art discovered during the search process will then be used to assess the technology and determine patentability. In some instances a patent attorney will be engaged on behalf of the University to provide a detailed opinion on the patentability question.
It is not unusual for a researcher to be unsure as to whether a particular discovery is patentable or even worth the time and effort of disclosure. The OIPDC staff is available to answer questions and can assist in the preparation of the disclosure documentation.
If you need to disclose an invention, please complete and submit an Invention Disclosure Form. Instructions and more information can be found below.
Information For Creative Works
The University also offers a Work Disclosure Form that when completed will serve as a complete and full description of the creative work to the University.
If you need to disclose a creative work, please complete and submit a Work Disclosure Form. Instructions and more information can be found below.
Invention and Work Disclosures
Before filling out an Invention Disclosure or Work Disclosure Form, readers are asked to review the following topics. The topics are designed to clear up any potential confusion inventors or authors may come across when filling out a Disclosure. If you have further questions please feel free to call the Office of IP Development office at (850) 644-9318.
Work Disclosures
- When the Disclosure is Software
- When the Disclosure is Multimedia
- When the Disclosure is a Web-Based Product
- Fill out the Work Disclosure Form
Invention Disclosures
- Inventors/Co inventors: Who They Are, Who They Aren't
- Evaluating an Invention PDF version
- Fill out the Invention Disclosure Form
When the Disclosure is Computer Software
Choosing the Best Form of Protection. Unlike subject matter that qualifies only for a single form of intellectual property protection, computer software generally has some copyrightable elements, and may or may not in addition have elements that are patentable. Most often, the patentable element of a computer program will be an algorithm that is used for a novel purpose. The challenge for a university is to determine whether to pursue patent protection in addition to copyright protection. While copyright protection will prevent the unlicensed copying, distribution, modification, adaptation, display of the computer code and is immediately available at virtually no cost, patenting will require a commitment of time, effort and money. The advantage of patenting, however, is that it protects against independent discovery and is generally considered a stronger form of protection than copyright. Since patent protection covers different elements than copyright protection, it is altogether possible, and may be commercially advantageous, to seek both kinds of protections.
When the Disclosure is Multimedia
Identifying the Pieces of the Puzzle. Unlike patentable inventions, or computer software, which have fairly distinguishable elements, a multimedia work is generally a collage of separately identifiable and often independent contributions. For example, a multimedia work disclosed to a university may include a computer program, a video, a digital archive, text content, recorded music, film clips, and still images, just to name some of the possibilities. Prior to considering whether a multimedia work is a viable candidate for commercialization, the university must assemble all of the components and then determine whether the university has ownership in all, some, or none of the pieces. Unless the answer to the question of university ownership is "yes" to all elements of the work, the university must determine from the non-university owners whether it is possible to acquire sufficient rights to enable the entire work to be licensed into the marketplace.
When the Disclosure is a Web-Based Product.
The licensing of web-based (or Internet) products such as digital archives, databases, learning tools, courseware and web pages intended for distributed learning environments is much like the licensing of multimedia products in that there is apt to be a tangle of separately protected elements (copyrighted and/or patented software, copyrighted text, images, film, new delivery technology that may be patented and more). And, there are additional considerations because the product will be distributed over the Internet.
Inventors/Co-Inventors: Who They Are, Who They Aren't
Determining who should be named as an inventor on a patent application is a difficult, often subjective, task and not at all the same as deciding who should be listed as authors of a publication. But it is a matter of law. If the names on a patent don't match with the legally defined inventors, it can be invalidated with disastrous results.
Because people are co-authors of a peer-reviewed article, or students, co-workers, supervisors, or employees, doesn't entitle them to be co-inventors. For instance, sometimes students or technicians are included as co-authors on a publication to recognize their contribution for having carried out the inventor's instructions. Or a department chair or thesis adviser may be honored or shown deference in the same way. However, unless they contribute in a legally defined way, they cannot be considered co-inventors. Conversely, if they did contribute, even accidentally or in minor proportion, then they must be considered co-inventors.
"Conception" and "reduction to practice" are the two elements of inventorship. Conception is the completion of the mental part of the invention. When an inventor has a definite and permanent idea of the invention that would require only ordinary skill to reduce to practice, conception is complete. The key is that the idea must be a specific solution to a problem, not a general research goal. Reduction to practice must be carried out personally by the inventor or through someone under the inventor's direction. Reduction to practice can be actual or constructive. (Don't be confused: Physical "construction" of an invention is considered actual reduction to practice.) When an inventor files a patent application that "describes prophetically … how to reduce the invention to practice," that application is considered the legal equivalent of actual reduction to practice. Naming co-inventors is a gray area that comes up often, says Deanna Shirley, a patent attorney for the firm of Rivkin, Radler & Kremer. Co-inventors can even change over time, as an invention is developed and as claims are allowed or disallowed, she said. (A claim is a legal term for the very precise explanations of the scope of an invention.) A co-inventor must have some role in the final conception of an invention as it is patented. "Who conceived is the critical question," Shirley said.
William H. Needle, of Needle & Rosenberg, Atlanta, Ga., suggests applying this test to help determine inventorship: Ask of a potential co-inventor's contribution: "If this idea had not been contributed, would the claimed invention exist?" If the answer is no, then that person is probably a co-inventor. When faced with a situation that may lead to an invention, Needle divides co-workers into three groups: 1) Those who contribute ideas that result in the development of an invention as claimed. Members of this group should be considered inventors; 2) Those who contribute labor, supervision, or routine techniques and other non-mental contributions. Members of this group should not be considered inventors; and 3) Those who contribute ideas while an invention is being developed, but whose ideas don't contribute directly to the claimed invention. This group also should not be considered as inventors.
The claims of the patent are the standard for determining inventorship. All inventorship questions must be analyzed against the specific steps that make the invention perform differently from any prior part. To put it simply, a sole inventor must have conceived the ideas in all of the patent's claims; a co-inventor must have conceived the idea in at least one of the patent's claims. To help avoid inventorship disputes, it's a good idea to become familiar with your institution's invention disclosure procedures. Giving clear information about your research to the patent or licensing professional in your tech transfer office and keeping good records of everyone involved in the inventive process-students, engineers and technicians-can help simplify the inventorship question.
From the Oklahoma State University Technology Nexus Newsletter.
For further assistance please contact:
Office of IP Development & Commercialization
2010 Levy Avenue, Suite 276-C
Tallahassee, FL 32306-2743
Ph: (850) 644-8637
Fax: (850) 644-3675
