Technology Disclosure Form
If you believe you have made a useful invention, you should first complete a Technology Disclosure Form which can be found here. Completing the short form will initiate the idea/invention evaluation and counseling process. Shortly after we receive your Idea, one of our professionals will contact you to discuss next steps. In some cases, the next step will be to provide our office with a comprehensive disclosure of the invention so that we can better evaluate its patentability and/or initiate the patent drafting and filing process.
The TDF form is a fillable PDF. In addition to a comprehensive description of the invention, the TDF collects pertinent information on inventors, critical dates, addresses, citizenship, e-mail contact information, materials, publication, references, etc. that OTD will need as the patent application process progresses.
Of particular importance is the box for the funding information. If your invention resulted from activites funded by a federal grant, foundation/gift or by an industry support, there may be certain obligations of disclosure and reporting that we will need to follow, so please ensure that this information is accurate. If internal funds were involved, please describe them. If no federal, industrial, foundation/gift or internal funding was involved, please check the appropriate box in the TDF.
The other critical piece of information on this form is the “Date of First Public Disclosure.” Generally speaking, in all countries of the world (including the United States as of March 16, 2013) a patent application must be filed prior to any public disclosure that is sufficiently detailed enough to allow someone “ordinarily skilled in the art” (e.g., another scientist with the right background) to practice your invention. Private discussions within your laboratory group or with your collaborators won’t necessarily constitute a public disclosure, but anything that a member of the public could attend – such as an advertised talk, poster session or seminar – may constitute public disclosure. If you have disclosed the invention publicly, we may still be able to obtain some form of US patent protection but not if others have also referred to or improved upon what you’ve disclosed publically so time is of the essence and the scope of what can be claimed may be severely impacted by any similar disclosure by others prior to the filing date of a patent application. Accordingly, we recommend filing a high quality patent application prior to any public disclosure of your invention.
We will need a written description of your Invention. Many invention disclosures our office receives are driven by a grant submission or by an impending publication, so often, the a manuscript, or a grant application, can provide the necessary written description. The content of these documents can be referred to, as appropriate, when completing the TDF rather than retyping the information into the TDF. Indeed, large portions of these documents are often incorporated into the patent application. Therefore, in order to better facilitate patent drafting, we ask that you please submit these documents in a form that facilitates ease of drafting such as a WORD or POWERPOINT document rather than a PDF. These documents can be submitted as attachments to the e-mail described below that sends the TDF to our FORMS Inbox. If the attachments to the email exceed the allowable size limit, the attachments can be separately sent to our FORMS Inbox at: email@example.com.
Because it is a fillable PDF form, all fields of the TDF will need to completed. It is also critical that you use ADOBE READER as your default program to edit the fillable PDF. If the TDF requests an answer but there is no proper answer, please just type in “Not Applicable”. You can also refer to attachment documents that you’ll submit with the TDF by simply typing “See attachment”. You can also answer a question by typing a reference to another section (e.g. “See Section 5, above”) if appropriate. Again, all fields need to have an answer for the form to be complete.
When the form is complete, you can hit the SUBMIT button at the end of the TDF form and it will create an e-mail to which the completed form is attached. We recommend that you save a copy of the form on your local drive before hitting the SUBMIT button. If the form is not complete (i.e. all of the fields that require input do not contain at least some typed content), you will be prompted to complete the sections of the form that require an answer (they will be highlighted in pink). Please complete all of the unanswered questions and then hit SUBMIT again. The e-mail to which the completed form is attached will be automatically generated. When you send the e-mail, it will be directed to our FORMs Inbox for processing by OTD. OTD will review the form and if it appears to be in good order, we’ll send it back to all the inventors (directed to their e-mail addresses as captured in the TDF) an the designated witness using an Adobe product called EchoSign to collect electronic/digital signatures. When the document has been signed by all inventors and a witness, you will receive a copy from EchoSign for your records and the TDF submission will be complete.
Finally, if any of the Inventors have not signed a copy of the updated BUMC Patent Policy or the Charles River Campus Patent Policy, you will be contacted to complete this form. If you know that you have not submitted this form to our office we would much appreciate if you could do that now. You use the hyperlinks above to obtain the correct form and you can submit a PDF of the signed form to our FORMS Inbox at: firstname.lastname@example.org.