Q: What is an invention?
A: An invention is defined as a new or useful process, machine, manufacture, or composition-of-matter, or any new and useful improvement thereof.
Q: What is the purpose of an invention disclosure form, and when do I need to fill it out?
A: The completed and signed invention disclosure is a legal document that notifies and describes the invention to the University. Other important documents which support an invention disclosure are lab notebooks, preferably signed, dated and witnessed. OTC reviews the invention disclosure form, along with other information provided by the inventors. We also review database and library searches conducted by our office, and, occasionally, searches done by patent counsel for patentability. If you believe you have an invention, you should contact OTC.
Q: Who can send disclosures to OTC?
A: You can send your completed disclosure form to OTC if you are a faculty member, staff member, student or joint appointee of the University of Maryland, College Park. If you do not fit into the above categories, and you are affiliated with the University System of Maryland, please contact OTC so that we can direct your disclosure to the appropriate office. On an individual basis and under special agreement, OTC may have the opportunity to manage a disclosure for any faculty, staff or graduate student in the University System of Maryland.
Q: Who is considered an inventor, and what obligations does an inventor have to the University with respect to the intellectual property?
A: Inventorship is an extremely important and often misunderstood issue. Inventorship is very different from authorship of a paper, as individuals considered an inventor are those who participate in the inventive process, not the individuals who simply execute experiments or edit the related publication alone. If a person is listed as an inventor that is not truly an inventor, or if a person is not listed that should be, the patent office may invalidate the patent application or the issued patent. If you qualify as an inventor, then any discovery made on University time or that utilizes University space or equipment is considered the property of the University and should be disclosed to the University. As an inventor of a disclosed invention, OTC encourages you to cooperate and assist during the protection process, whether it be patenting, trademarking or copyrighting.
Q: I have a publication I would like to send to a scientific journal, does your office delay or prohibit publications if I turn in an invention disclosure?
A: OTC requests that inventors notify the office in advance of sending in a publication since it affects foreign and U.S. patent rights. If the technology has already been licensed then you may be asked to delay publication for a short period of time so that a patent application may be filed (if appropriate). We represent the University of Maryland as a flourishing academic institution, and the right to publish your work is never prohibited; however, if the inventor is interested in including results or information which is proprietary to the company, then only company information may be restricted from publication upon the company's request.
Q: Can OTC secure research funding?
A: As part of a license agreement we can negotiate a total amount for research to be dedicated to your lab; however, it is up to the researcher/inventor to work out the details of the research agreement and get the appropriate approvals from the company and the University's Office of Research Administration and Advancement, or similar offices at other campuses.
Q: How can an inventor help?
A: There are several ways to help OTC accurately and quickly review and license the invention. Here are some steps to consider:
- Contact OTC when you think you have an invention.
- Fill out the disclosure form completely.
- Be sure to list companies and contacts you believe may be interested in the invention. Inventors are OTC's greatest resource for locating potential licensees because the inventors are the experts in the field and often the most knowledgeable of the companies in that market.
- Be responsive to OTC and patent counsel requests. Although some of the requests may be frequent and time consuming, the better the information we get from you, the more successful and faster the process will be.
- Remember it is OTC that negotiates the license agreement for the University; however, your input is valuable and always appreciated.
- Keep OTC informed of upcoming publications or interactions with companies pertaining to the invention.
- Call OTC if you have any questions or concerns. We are here to serve the University.