Reporting Inventions

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Full Policy Contents
Effective: September 1998
Last Updated: February 2003

Responsible University Officer:
  • Vice President for Research

Policy Owner:
  • Associate VP for Research Administration

Policy Contact:

POLICY STATEMENT

Any invention conceived or first brought to practice that is related to the inventor's work assignment or invented while using University resources is owned by the University subject to any rights of the sponsor.

According to University policy, federal law, and agreements with private sponsors, inventors have obligations to report these inventions to the University and sponsor. This policy outlines when and how inventors must make these disclosures.

REASON FOR POLICY

This policy has been developed to protect the University's intellectual property. The University and the sponsor must be notified in a timely manner in order to exercise their legal rights to patent or market the invention. This policy also ensures that the University and inventor meet sponsor disclosure requirements.

PROCEDURES

In support of this policy the following procedures are included:

FORMS/INSTRUCTIONS

In support of this policy, the following forms and instructions are included:

ADDITIONAL CONTACTS

Subject Contact Phone Fax/Email
Primary Contact Pamela Webb 612-624-1648 pwebb@umn.edu
Project administration Grant Administrator, SPA Directory Directory
Inventions, Intellectual Property Office of Technology Commercialization 612-624-0550  

DEFINITIONS

Invention
A patentable invention is any new and useful process, machine, article of manufacture, or composition of matter, or new and useful improvement thereof. (35 United States Code 101)
Inventor
All personnel who produce a development that must be disclosed to the Office of Technology Commercialization in accordance with the Regents' Patents and Technology Transfer Policy and Administrative Procedures for the Intellectual Property Policy.
License
Legal permission from a patent owner to practice an invention. (35 United States Code 101)
Patent
A grant of property right by the U.S. government to the inventor giving the owner of the patent the right to exclude others from making, using, offering for sale, or selling the invention in the U.S. or importing it to this country. (35 United States Code 101)

RESPONSIBILITIES

Inventor
  • Complete the internal Invention Disclosure Form.
  • Disclose the invention on the continuation application, if applicable, and to SPA during project closeout.
  • Notify the Office of Technology Commercialization and the sponsor when publication of invention-related information is planned.
Office of Technology Commercialization (OTC)
A professional in OTC is responsible for contacting the inventor within ten working days of receiving the internal Invention Disclosure Form.
For federally-sponsored projects, OTC files inventions reports, including progress reports and results of patent applications. If a patent is issued, OTC submits a copy of the patent and government license to the agency. If it is not issued, OTC informs the agency of its plans.
Principal Investigator
The Principal Investigator must include invention information when requested in federal Continuation Applications. Principal Investigators must also disclose invention information to Sponsored Projects Administration during closeout of the project.
Sponsored Projects Administration
SPA includes a list of inventions for final reports it submits to federal sponsors. The grant administrator negotiates terms and conditions for many nonfederal sponsors.

APPENDICES

In support of this policy, the following appendices are included:

FREQUENTLY ASKED QUESTIONS

There is no FAQ for this policy.

RELATED INFORMATION

HISTORY

Amended:
February 2003 - Updated Related Information and definitions section to link to Intellectual Property Policy and related administrative procedures rather than the superceded Patents and Technology Marketing Policy.

Effective:
September 1998

To obtain a copy of a historical policy, e-mail the U Policy Librarian at policy@umn.edu or call 612-624-4372.

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