invention, discovery, new technology disclosure discovery, new technology disclosure ... discoveries...

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1 THE FORSYTH INSTITUTE Invention, Discovery, New Technology Disclosure COMMERCIALIZING TECHNOLOGY By com- pleting this form with as much detail as possible, you will greatly help the Forsyth Intellectual Property Office (IP Office) take the necessary steps to best commercialize your invention, discovery or new technology. The first step in this process is estimat- ing commercial potential leading to filing of a patent application. WHAT IS A PATENT? A patent can regarded as a contract between an inventor and the gov- ernment, where, in return for full and public dis- closure of a previously unknown invention, the inventor is granted certain exclusive commercial rights in the invention for a limited period of time. See additional instructions at the end of this form. 1. TITLE Give your invention, discovery or new technology a short, non-confidential descriptive title. INVENTION OR TECHNOLOGY TITLE FOR ____________________________ REC’D BY ____________ ON _________________ [V. DEC’11 Above this line for IP Office use only] TO COMPLETE THIS “FILL IN THE BLANKS” FORM: (1) Save this file onto your computer’s hard disk; (2) add all information in the appropriate expandable gray boxes; (3) print the form and have all contributors sign; (4) have all the technology description pages witnessed; and then (5) submit this signed form and also e-mail the completed form to the Forsyth IP Office. PLEASE NOTIFY THE FORSYTH IP OFFICE AT LEAST 30 TO 60 DAYS BEFORE PUBLICATION OR OTHER DISCLOSURE OF THIS INVENTION.

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Page 1: Invention, Discovery, New Technology Disclosure Discovery, New Technology Disclosure ... discoveries or new technologies to the IP Office is essential to ... invention, discovery or

1

THE FORSYTH INSTITUTE

Invention, Discovery, New Technology Disclosure

COMMERCIALIZING TECHNOLOGY By com-

pleting this form with as much detail as possible, you will greatly help the Forsyth Intellectual Property Office (IP Office) take the necessary steps to best commercialize your invention, discovery or new technology. The first step in this process is estimat-ing commercial potential leading to filing of a patent application.

WHAT IS A PATENT? A patent can regarded

as a contract between an inventor and the gov-ernment, where, in return for full and public dis-closure of a previously unknown invention, the inventor is granted certain exclusive commercial rights in the invention for a limited period of time. See additional instructions at the end of this form.

1. TITLE Give your invention, discovery or new technology a short, non-confidential descriptive title.

INVENTION OR TECHNOLOGY TITLE

FOR ____________________________ REC’D BY ____________ ON _________________

[V. DEC’11 Above this line for IP Office use only]

TO COMPLETE THIS “FILL IN THE BLANKS” FORM: (1) Save this file onto your computer’s hard

disk; (2) add all information in the appropriate expandable gray boxes; (3) print the form and have all

contributors sign; (4) have all the technology description pages witnessed; and then (5) submit this

signed form and also e-mail the completed form to the Forsyth IP Office.

PLEASE NOTIFY THE FORSYTH IP OFFICE AT LEAST 30 TO 60 DAYS BEFORE PUBLICATION

OR OTHER DISCLOSURE OF THIS INVENTION.

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2. CONTRIBUTORS List the names of all individuals who contributed to this invention, discovery or

new technology. Note: Inventorship is a legal test; final determination of inventors (as distinct from

contributors) will be made by Forsyth’s patent attorney. See Instruction on last page.

NAME POSITION A. LABORATORY

B. INSTITUTION

C. TELEPHONE

D. E-MAIL

A.

B.

C.

D.

A.

B.

C.

D.

A.

B.

C.

D.

A.

B.

C.

D.

A.

B.

C.

D.

3. PUBLIC DISCLOSURE & PUBLICATION PLANS Publication or other public disclosure (includ-

ing websites, lectures, poster sessions and abstracts, as well as scientific papers) of your invention,

discovery or new technology prior to filing a patent application may limit Forsyth’s ability to seek patent

rights. Timely disclosure of inventions, discoveries or new technologies to the IP Office is essential to

protect both Forsyth’s and inventors’ rights. List any prior or upcoming publications or other public dis-

cussions of your invention, discovery or new technology, including journal name, meeting name and

dates, both in the past or in the future. Also list any existing documents that may disclose your inven-

tion, discovery or new technology, such as a thesis or grant application. Date format is m/d/yyyy. See

Instruction on last page.

MEETING, PUBLICATION, OR DOCUMENT NAME & COMMENTS PRIOR DATES COMING DATES

IMPORTANT: If an upcoming presentation, publication or other public disclosure is less than 60 days from now, immediately contact the IP Office.

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4. FINANCIAL SUPPORT & SPONSORSHIP List all research funding and sponsorships used in de-

veloping this invention, discovery or new technology, including all government, commercial and founda-

tion sources, and also all student and postdoctoral fellowships. If there was no external funding or

sponsorship, check the box “none.” See Instruction on last page.

CHECK HERE IF NONE.

CONTRACT OR

GRANT NUMBERS

INSTITUTION

ADMINISTERING FUNDS

FUNDER’S OR SPONSOR’S

NAME

PRINCIPAL

INVESTIGATOR

5. USE OF PROPRIETARY MATERIALS Were any tangible materials received from any other uni-

versities, institutions or companies used in the research that led to this invention, discovery or new

technology? Tangible materials include compounds; biological materials such as cell lines, DNA con-

structs, proteins, animals, and the like; computer code, algorithms, software and the like; and devices.

If “yes”, describe below and indicate whether the materials were received informally or under an

agreement (Material Transfer Agreement or other). If there were no materials, check the box “none.”

See Instruction on last page.

CHECK HERE IF NONE.

DATE

REC’D

MATERIAL DESCRIPTION OUTSIDE SOURCE OF MATERIAL AND

FORM OF AGREEMENT

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6. USE OF PROPRIETARY INFORMATION Was any unpublished or non-public information re-

ceived from any other universities, institutions or companies used in the research that led to this inven-

tion, discovery or new technology? If “yes”, describe below and indicate whether the information was

received informally or under an agreement (Confidentiality or Non-Disclosure Agreement, Consulting

Agreement, or other). If there was no unpublished or non-public information, check the box “none.”

See Instruction on last page.

CHECK HERE IF NONE.

DATE

REC’D DESCRIPTION OF INFORMATION OUTSIDE SOURCE OF INFORMATION AND

FORM OF AGREEMENT

7. INVENTION, DISCOVERY & TECHNOLOGY DESCRIPTION Write a description of the inven-

tion, discovery or technology, including enough information so that someone knowledgeable in the area

can understand its key elements and importance. Please address each of the topics listed below.

Also, attach your key publications in the field and any draft manuscripts that have been submitted or

are in preparation. See Instruction on last page.

Have this page signed and each added page of description initialed and dated by a person who

is able to understand the invention, discovery or new technology, and who is not a contributor

or the principal investigator on the research project.

I HAVE READ, UNDERSTOOD AND HEREBY WITNESS THIS INVENTION, DISCOVERY OR NEW TECHNOLO-

GY DESCRIPTION:

SIGNATURE: ______________________________

PRINTED NAME: ___________________________

DATE: _______________________________

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INVENTION , DISCOVERY OR NEW TECHNOLOGY DESCRIPTION

Description of the invention, discovery or new technology:

General purpose of the invention, discovery or new technology and its principal uses:

What is the product made possible by the invention, discovery or new technology? Who is the

intended customer?

Advantages and improvements over existing solutions:

Possible variations or modifications to the invention, discovery or new technology to make it useful

in additional areas or ways:

Specific features believed to be novel and valuable:

Future work planned at Forsyth on the invention, discovery or new technology:

Date of conception of the invention, discovery or new technology (indicate whether approximate or

exact, and whether supported by written documentation):

Date experiments relating to invention, discovery or new technology first performed:

Attach drawings, pictures, tables, data and graphs here:

[The remainder of this page is intentionally left blank]

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8. COMMERCIAL INTEREST Describe the commercial potential of this invention, discovery or new

technology. What companies would be particularly interested? Why would they be interested? Do you

or any of the other contributors know people at these companies with whom the IP Office should dis-

cuss commercialization of this invention, discovery or new technology? See Instruction on last page.

COMMERCIAL INTEREST

9. COMPETITIVE LANDSCAPE Describe technologies related to this invention, discovery or new

technology. Who are your closest competitors, at academic institutions or at companies? Attach their

key publications in the field. What keywords do you recommend for conducting a focused search of the

scientific and patent literatures?

RELATED TECHNOLOGIES

COMPETITORS AND THEIR AFFILIATIONS

KEY-WORDS

10. DECLARATION, SIGNATURE, HOME ADDRESS AND NATIONALITY OF EACH CONTRI-

BUTOR

Declaration of Forsyth Institute Contributors: I have read and signed the Forsyth Institute Intellec-

tual Property and Copyrightable Works Policy (copy available on request). I hereby: (a) assign all

rights, title and interest to this invention, discovery or new technology to Forsyth Institute, and (b) agree

to execute all documents, as requested, assigning to Forsyth Institute my rights in any patent applica-

tion filed on this invention, discovery or new technology, and (c) cooperate with Forsyth Institute in pro-

tecting this invention.

Declaration of Non-Forsyth Contributors: I have disclosed (or will disclose) this invention, discovery

or new technology to my home institution.

Forsyth Institute will share any royalty income derived from inventions and resulting patents

with inventor(s) in accordance with The Forsyth Intellectual Property and Copyrightable Works

Policy.

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_________________________________ _____________ SIGNATURE DATE

HOME ADDRESS:

COUNTRY OF CITIZENSHIP:

_________________________________ _____________ SIGNATURE DATE

HOME ADDRESS:

COUNTRY OF CITIZENSHIP:

_________________________________ _____________ SIGNATURE DATE

HOME ADDRESS:

COUNTRY OF CITIZENSHIP:

_________________________________ _____________ SIGNATURE DATE

HOME ADDRESS:

COUNTRY OF CITIZENSHIP:

_________________________________ _____________ SIGNATURE DATE

HOME ADDRESS:

COUNTRY OF CITIZENSHIP:

_________________________________ _____________ SIGNATURE DATE

HOME ADDRESS:

COUNTRY OF CITIZENSHIP:

11. ADDITIONAL COMMENTS AND REMARKS Is there any other information about this inven-

tion, discovery or new technology that would be helpful to the IP Office? Please note additional com-ments and remarks here.

ADDITIONAL COMMENTS & REMARKS

12. THANKS! Thank you for completing this Forsyth Institute Invention Report. We will contact you

with any further questions. If you have questions on how this invention disclosure is moving through

the system, feel free to contact the IP Office at any time.

[The remainder of this page is intentionally left blank]

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QUESTION 2. WHO ARE “CONTRIBUTORS” OR IN-

VENTORS? An inventor is a person who makes a material “inventive”contribution to at least one claim in a patent. Since the scope of patent claims is not determined until the end of the patenting process, a definitive determination of “inventorship” is not possible now, when the patenting process may just be beginning. Thus, this form requests a list of those individuals who “contributed materially” to the in-vention, discovery or new technology being report-ed. Determination of who to actually list as inven-tors on any patent application will be made by a pa-tent attorney selected by Forsyth applying the legal standards of inventorship under U.S. patent law.

QUESTION 3. PUBLIC DISCLOSURE & PUBLICA-

TION PLANS Any public disclosure of the inven-tion, discovery or new technology prior to filing a patent application may limit Forsyth’s ability to ob-tain patent rights. Public disclosures include abstracts and presentations at scientific meetings (including poster sessions), public seminars, thesis defense, websites, publications, funded grant appli-cations, and disclosures to people outside Forsyth who have not signed a confidentiality agreement. List dates and circumstances of any such disclosure and in general what was disclosed. IMPORTANT: Please indicate here any future disclosure or publica-tion plan and dates.

QUESTION 4. FINANCIAL SUPPORT & SPONSOR-

SHIP Identify the specific grant or contract num-ber(s) and the external sponsors (governmental agencies, industrial sponsors, private agencies, foun-dations or others) which provided support used to defray costs related to the research (including sala-ries and fellowships of researchers) from which the invention, discovery or new technology resulted. The IP Office will use this information to determine obligations of Forsyth to sponsors.

QUESTIONS 5 & 6. USE OF PROPRIETARY MATE-

RIALS OR PROPRIETARY INFORMATION Indicate whether any aspect of this invention, discovery or new technology was made possible by the use of proprietary materials or proprietary information

obtained from an outside individual or institution. The IP Office may need to notify providers that an invention has been made using their materials or information.

QUESTION 7. DESCRIPTION Your disclosure should enable someone having knowledge of the field to understand the invention, discovery or new technology. Include all essential elements (features, concepts, new results and so forth), their relation to one another and their mode of operation. Use addi-tional pages attaching drawings, figures, manuscripts and other supporting materials to facilitate under-standing of the invention, discovery or new technol-ogy.

Have each page (and all attached figures) describing the invention, discovery or technology initialed and dated by someone who is able to understand the technology disclosed and who is not a listed contrib-utor or the principal investigator on the research pro-ject. This procedure provides legal proof of the date that the invention was reported to the IP Office.

QUESTION 8. COMMERCIAL INTEREST Preparing and prosecuting a patent application is expensive. Initial attorney fees and filing costs often exceed fifteen thousand dollars, and prosecution in the US alone typically costs fifty thousand dollars. Forsyth will not file for patent protection for your invention unless the IP Office believes the invention has com-mercial potential. You know your technology best, and your assistance in finding qualified licensees can be of great help to Forsyth’s licensing efforts. If a patent application is filed, the IP Office willask for your help discussing your invention with potential licensees.

QUESTION 10. DECLARATION & SIGNATURES The IP Office can provide you with a copy of the Forsyth Institute’s “Policy Statement Regarding Pa-tents, Copyrights and Other Intellectual Property” and can answer any questions you have about For-syth IP policy.

INSTRUCTIONS THIS DOCUMENT IS A “FILL IN THE BLANKS” MICROSOFT WORD FORM.

THE ANSWER AREAS (IN GRAY) WILL EXPAND AS YOU ADD INFORMATION.