Invention Disclosure Process
What is an invention disclosure?
An invention disclosure is the notification of the creation of an invention provided by the inventor candidate in the form of a Report of Invention (ROI) form.
When is a ROI required?
If, in the course of conducting research or providing patient care at Jefferson, an employee (including residents and fellows) conceives of and/or reduces to practice a discovery/invention, she/he is obligated to report such discovery/invention by completing an ROI form. This form provides important information for the invention review process. The discovery/invention could be a new or different process, a device, a compound, an animal model or a software program.
Why is a ROI required? It is MY invention.
If you are a Jefferson employee and/or used Jefferson resources to create/discover the invention, Jefferson owns the invention/intellectual property (see the Patent Policy), but has very generous revenue sharing.
What do you need from me?
1. The ROI form filled out as completely as possible..
2. Any unpublished manuscripts, posters, abstracts, presentations, publications or any pending public disclosure deadlines related to the discovery/invention.
If you have any questions, contact us.
What is the process?
Once you submit an ROI, we will review it to ensure it is complete. If complete, we will submit it to one of our law firms for a patentability assessment. If the assessment comes back positive, we will contact you to determine the best timing for a provisional patent. Then, we will assign you a mentor to help prepare you for a commercial review by an internal panel.
If the patentability assessment comes back negative, but there could be commercial opportunities, you will also have a mentor assigned to you. The internal panel will evaluate your invention based on these criteria.
How long does the process take?
Usually our law firms will give us a patentability assessment within seven to 14 days. You have approximately one month to prepare for the internal panel.
Frequently Asked Questions
If you are a student, alumnus or a visitor and you use more than a minimal amount of Jefferson resources to create your invention, then you're obligated to submit an ROI form.
According to United States patent law, a patentable invention must be: (1) novel; (2) non-obvious; and (3) have utility. In addition, in 2011, 2012, and 2013, the Supreme Court set boundaries on what is patentable subject matter. We engage external patent attorneys to assess inventions for their patentability.
Not all discoveries/inventions require patent protection in order to be commercialized. Patent protection is just one of the tools to assist discovery/invention commercialization. Universities usually do not seek patent protection on research tools. Examples are transgenic mice, plasmids, methods, and pathways or targets for potential therapeutic compounds.
Biological material(s) could be provided under a material transfer agreement for a fee. A discovery/invention on a method could be marketed as know-how, provided that the detailed steps of the method are not published. A software program could be licensed for a fee.
Unless modulators of a pathway or target are identified, the pathway or target itself is generally considered to be of limited commercial value by the industry. Patent protection of a pathway or target does not extend to the modulators of such pathway or target. Modulators have to be identified and validated in order to seek sound intellectual property protection.
Inventorship determination is a legal issue and must be confirmed by a patent attorney in accordance with United States patent law. Co-authorship of a published paper is not equal to inventorship. Incorrect inventorship makes a patent invalid and may jeopardize any potential licensing opportunities or cause potential legal risk, if the discovery/invention is licensed.
Please talk to us first before discussing your invention with anyone outside of Jefferson.
A public disclosure of a patentable discovery/invention makes it unpatentable in the majority of foreign countries, if, prior to the public disclosure, a patent application has not been filed and/or a Confidential Disclosure Agreement (CDA) has not been executed by Jefferson and the third party.
(You have, in the United States and Canada, a one-year grace period from the time of the first public disclosure to seek patent protection, but you will lose rights in the majority of the world. Also, we are a first-to-file system, which means that if you invent something first, but someone else invents the same thing later and files in the United States Patent and Trademark Office first, that person's patent application receives priority and is recognized as the original concept.)
Remember, publications, conference abstracts, posters, graduate students' theses (online or hard copy, whichever occurs first), oral presentations or communication with any third parties outside of Jefferson are considered public disclosures. However, submitting a manuscript to a journal for review or submitting a grant application to a funding agency for review, does not constitute a public disclosure until the manuscript is published (online or hard copy, whichever occurs first) or the grant application is awarded.
If you have been a Jefferson employee for less than three years, we share a copy of the ROI and any supporting information with the person's prior institution(s). If any non-Jefferson personnel are listed as inventor candidates, we share a copy of the ROI and any supporting information with that person's employer(s). We work closely with any potential joint owner(s) of the discovery/invention on how to proceed with a discovery/invention, including costs of patent protection and revenue sharing.
If a commercial entity's funding or biological materials are used for generating data on the discovery/invention, we may be obligated to report such discovery/invention to the commercial entity pursuant to an agreement. Depending on the terms of the agreement, the commercial entity may be entitled to make a patent protection decision and/or enjoy option or license rights.
If any federal or foundation funding was used for generating data on the discovery/invention, Jefferson is required to report such discovery/invention to the appropriate funding agencies and may be obligated to comply with the funding agencies' profit sharing policy on license revenues, if any.
If funding from a for-profit was used, presumably there is a sponsored research agreement or other agreement in place, and the terms of such agreement will dictate the intellectual property rights of the for-profit and Jefferson.
- Intellectual property rights of an inventor candidate's prior institution;
- The use or incorporation of third party materials in the invention;
- Industry- or foundation-sponsored research obligations;
- External collaborator(s);
- Public disclosure;
- Prior art;
- Consulting obligations.