I have a concept or prototype for an invention, biological material, software, or document/content (“matter”) that I think should be legally protected as my intellectual property. What should I know and what should I do?
Document the conceptualization and development of your “matter” in writing (as in a lab notebook) or some other medium. While generally no longer required in the US, it remains a good idea to date and sign such documentation.
As soon as your matter is developed in conceptual detail or actually fleshed out in tangible form (“reduced to practice”), file a Disclosure with the Vanderbilt Center for Technology Transfer and Commercialization (CTTC). There are 4 types of disclosure forms: for patentable innovations, for software/cell phone apps, for content (written document, music, video, etc.), and for biological materials. If in doubt about whether and what type of disclosure to file just call the CTTC at 615-343-2430. They will be most happy to advise you. It is never too early to call!
The CTTC will work with you to determine if a patent application, application to copyright or application for some other protection is appropriate. If so, they will work with you to prepare/submit such applications. Other important things to know:
Should I keep my idea confidential?
- You can discuss and present your matter with other VU/VUMC personnel, although they should be aware of the imperative not to broadcast information on the matter beyond the Vanderbilt community.
- Avoid discussing, publishing, and/or presenting your matter in any significant detail to non-VU/VUMC personnel or media (journals, non-VU/VUMC presentations, web sites, theses, etc.) unless covered by a confidentiality agreement. In the case of a Ph.D. thesis, it is possible to write, defend, and submit the completed dissertation, but place a hold on its public release until a patent application (or an application for some other form of protection) is submitted.
- Just because you have discussed your matter with someone outside of VU/VUMC that you should not file a disclosure with CTTC. In most cases, the level of such discussion will not be an “enabling disclosure” that would be a big problem.
- When in doubt, call the CTTC.
Who are the inventors?
- The inventor is the person (or persons) who conceived the matter.
- VU personnel can co-author a disclosure in cases where two or more have conceived the matter.
- It is OK to involve students, other trainees, and staff in development of a protectable matter that you have conceived. Participation in development does not confer “inventor” status. However, the involvement of students or others in development should be reported when you file a disclosure.
- If students, trainees, and/or staff are involved in the development of your matter, do not worry that your life will suddenly involve a complicated web of conflict of interest (COI) disclosures and oversight. COI issues will usually be minimal; at least until your matter is either licensed, marketed, and/or results in formation of a company in which you hold equity.
- If your matter was co-conceived by you and non-VU personnel (faculty at another university, for example) and/or if your matter has relied on components (reagents, for example) that came to you from outside of the university you can still file a disclosure but should declare all outside involvement.
- Ultimately CTTC will work with you to determine whether any others beside you merit “inventor” status. A patent attorney will comprehensively assess all contributions and ensure that the inventor list is correct.
Will this process interfere with my academic work (grants, papers, talks, etc.)?
- The time period between disclosure and a patent application is often short and can be expedited if needed. Accordingly, disclosure and applications for protection should not result in major delays of pubs and presentations.
- It is OK if your matter is directly related to research being undertaken with the support of existing or proposed federal grants. It is the University’s responsibility to facilitate commercial development stemming from federally supported research (Bayh-Dole Act), and they are well prepared for assisting you with the disclosure of inventions and other matter to funding agencies as a standard component of grants reporting.
Ok, what about the money?
- The cost of disclosure and subsequent applications for protection is covered by the CTTC.
- As the initiator/inventor of protected matter, you are entitled to receive a significant fraction of any income generated by the licensed use, sale or any other transaction involving your matter. Indeed, Vanderbilt has a very generous policy regarding royalties.