When an inventor believes they have made something that qualifies as an invention, they need to reveal the information to the IDEA Center. This can be completed by filling out an online document known as an invention disclosure form (IDF). The IDF should list all sponsors of the research and include all the information necessary to pursue protection and commercialization activities. It is critical that inventors complete every section of the disclosure in as much detail as possible; failure to do so can result in delayed processing. Inventors should also note the date of any upcoming publications or other public disclosures describing the invention. Public disclosures include, but are not limited to, journal publications, website publications, presentations at conferences, posters, dissertations or master theses, and abstract publications. The IDF will remain confidential, and an assigned licensing manager will contact the inventor shortly thereafter to discuss the invention and its potential commercial application.
It is critical to disclose all intellectual property that could constitute inventions or copyrighted works to the IDEA Center, particularly if any portion of the project funding comes from the federal government, a private foundation, or a commercial sponsor. Not only does federal law require prompt disclosure, but the University, inventors, and involved companies could also lose very significant rights if disclosures are delayed or not made at all. An IDF should be submitted to the IDEA Center once a researcher can concisely define the invention and has reduction to practice substantiating the invention through modeling or experimentation. In this sense, an IDF should always be submitted prior to public disclosure.
While it is important to properly disclose inventions to the IDEA Center, many inventors struggle to recognize when their research has resulted in an invention. To clarify the term, an invention is “the discovery or creation of a new material (either a new manufactured product or a new composition of matter), a new process, a new use of an existing material, or any improvements of any of these.” In modern applications, computer software may also be classified as an invention. At times, identifying which part of a complex research effort might constitute an invention is very difficult. Indeed, history is replete with examples of inventions buried in scientific studies focused on other issues. This can result in new tools or techniques that are developed to meet a particular research objective, but are then overlooked once the objective is completed. These tools and techniques may constitute valuable inventions on their own merit, so it is critical for inventors to understand the specific definition and rules underlying inventions.
United States patent law requires that an invention meets three primary criteria to be eligible for patent protection:
- Novelty: The invention must be demonstrably different from already available ideas, inventions, or products (known as “prior art”). This does not mean that every aspect of an invention must be novel. For example, new uses of known processes, machines, compositions of matter, and materials are patentable. Incremental improvements on known processes may also be patentable. Inventors should take special care to understand the broad nature of prior art—anything from journal publications, foreign patents, issued U.S. patents, and patent applications can contain prior art.
- Usefulness: For an invention to be patentable, it must have some utility or application, or be an improvement over the existing products and/or technologies.
- Non-Obviousness: The invention cannot be obvious to a person of “ordinary skill” in the field. Non-obviousness usually is demonstrated by showing that practicing the invention yields surprising, unexpected results.
Some University research projects are clearly oriented towards invention from the outset. The goal of a project may be to develop a new alloy, for instance, or it may be to find a new test for AIDS. If the research is successful, the result is likely to be an invention. Other research at the University may not lead to a new discovery or invention. For example, a study of the effects of radiation on plant growth might identify previously unknown effects, but this new knowledge, while valuable and publishable, is not necessarily an invention. However, an invention could result if, while studying the radiation effects, the researcher discovered that a specific radiation frequency applied at a particular period of plant gestation increased the size of the mature plant by an average of 5 percent. This technological process of applying the radiation frequency at a specific time in a plant’s life could very well be classified as an invention. Overall, the professional Licensing Staff at the IDEA Center will determine whether a potential investment meets all relevant criteria after evaluating the invention in full.
All visiting scientists, collaborators from other universities, collaborators from industry, and general contributors to the ideas leading to a discovery should be mentioned in your disclosure, regardless of their University employment status. This counts for students as well, as they may even be the sole contributor or inventor and are protected under the same ownership policy as any other member of the University. The IDEA Center will determine the rights of such persons and institutions. In some cases, a shared relationship is set up between the University of Notre Dame and the collaborating university with both institutions jointly responsible for patent costs and marketing efforts. Researchers should also disclose any relevant research tools used in the invention process as well, as they may need to be patented to protect future commercialization abilities.
It is important to note that submitting an IDF to the IDEA Center does not directly result in any form of protection. The IDEA Center assesses technology for commercial applicability and then decides about filing for patent protection. Researchers will be kept well informed throughout the process and will be given the opportunity to pursue protection of their own should the IDEA Center decide not to seek patent protection for their technology.