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Federal regulations, nonfederal agency regulations and the terms
and conditions of the award govern many of the steps in this process.

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1. DETERMINE THAT YOU HAVE AN INVENTION
In order to be patented, an invention must meet several conditions:

• New: an item cannot be patented if it was known or used by others (or patented or published in this or any other country) before the patent applicant invented the item. It cannot be patented if it was patented or described in a printed publication in this or any other country or in public use or on sale in this country more than one year prior to the application for an U.S. patent. Note. The courts have defined "printed publication" broadly. Public seminars and meetings, posters, abstracts, theses, as well as refereed journals are considered 'publications.'
• Non-obvious: the item cannot be obvious to a person with ordinary skill in the area of technology related to the invention. For example, a change in size or color is not normally patentable.
• Useful: the item must have a useful purpose. Abstract ideas, laws of nature, physical phenomena cannot be patented.
• Operativeness: the item must be able to operate. A complete description or model of the item is required; the idea for the item cannot be patented.

If you are unsure whether you have an invention, call the Office of Technology Commercialization (OTC) and discuss the item with a licensing professional in your area of expertise.

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2. REPORT THE INVENTION TO THE UNIVERSITY
The University's confidential Intellectual Property Disclosure Form asks for such information as a description of the inventions, names and contact data for everyone involved in making the invention, and funding sources for the research that led to the invention. This form is also used to inform department heads and deans that an invention has been disclosed and to fulfill the employee disclosure requirement under Federally-sponsored projects.

Obtain the form: This form is available from OTC or its web site at http://www.ptm.umn.edu/v3/index.html

Deadlines: This form must be completed as soon as you think you may have an invention, whether during the project period or after the project has been closed, and at least three months before any publication, if possible.

Submit the form: After completing the form, send it to OTC. A professional in that office will contact you within ten working days of receiving the form.

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3. REPORT THE INVENTION TO THE SPONSOR

Federal Sponsors
This information is governed by 37 CFR 401 (Code of Federal Regulations). Note: If deadlines are missed, the University may have to forfeit title.

After it has evaluated the internal Invention Disclosure Form, OTC will submit to the federal sponsor a detailed disclosure of the invention. Staff members in that office as well as Sponsored Projects Administration are also responsible for submitting other reports. A complete list of these reports is available in Appendix A.

1. Disclose the invention on the Continuation Application (Competing and Noncompeting)
   For some agencies, primarily Public Health Service, each application for continuing support must include either a listing of all inventions made during the preceding budget period or a certification that no inventions were made during that period. Supply this information in the appropriate section of the application.
   

2. Disclose the invention to Sponsored Projects Administration during closeout of the project
   SPA must file a report, usually within 90 days after expiration of the project period, listing all inventions at the end of a project or a certification that no inventions were made. SPA will contact you to obtain this information.
   

Nonfederal Sponsors
Nonfederal sponsors may not have specified deadlines or they may be negotiated at the time of award. Check the sponsor's guidelines, the Notice of Grant/Contract Award (NOGA), or the contract for information and reporting responsibilities.

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4. FULFILL OTHER REPORTING OBLIGATIONS

Publishing information about the invention
Most sponsors require notification when any information is accepted for publication or if any sale or public use is planned by the University.

Process: Read the NOGA to determine exactly what information must be disclosed and how it is to be disclosed. If necessary, contact the grant administrator.
Deadline: Promptly upon notification of acceptance.