Public Disclosure of Intellectual Property

Your innovation commercialization journey begins at the Innovation Institute with the process of protecting your innovation, typically with a provisional patent application, where applicable, submitted to the U.S. Patent and Trademark Office.

But such a journey can end abruptly and without success if your innovation is publicly disclosed before the provisional patent application is filed.

 

IMPORTANT:  After an innovation becomes public, it may no longer be eligible for patent protection.  Therefore, it is critical to avoid public disclosure before filing a patent application, where possible.

What constitutes a public disclosure of your intellectual property?  In short, more than you might imagine. Here is a list of activities to consider avoiding prior to working with the Innovation Institute to seek patent protection for your innovation:

  • Publishing anything — abstract or journal article, for instance.
  • Giving a talk or a poster presentation at an “open” meeting.
  • Sharing the content of a patent application or any description of the innovation with someone outside of the university.
  • Talking with external parties about the innovation without the use of a confidentiality agreement.
  • Transfer of scientific materials with the use of a material transfer agreement.
  • Posting messages on a Web site, public news group or blog that describe your innovation.
  • Grant progress reports — for the same reason as above.
  • Student theses (under some circumstances) — even if nobody ever actually reads them.
  • Classroom presentations — including distribution of handouts.
  • Department seminars.

Not all activities are considered public disclosures of your innovation.  The following activities will not jeopardize any potential patent rights:

  • Lab meetings— as long as they are attended only by University employees.
  • Faculty meetings — again, as long as they are attended only by University employees.
  • Confidential submissions for manuscript publications — but only prior to acceptance and on-line or print publications of the manuscript.
  • Unfunded government grant applications — proposals submitted to government agencies that have not yet been accepted for funding.

 

Please consider that you can still talk about your innovation. There will also be ways to talk about your innovation without revealing details of the innovation itself and how it works.  Please contact the Innovation Institute for further guidance and advice on protecting your innovation.

Protecting your innovation from public disclosure.

You can protect your innovation from public disclosure with a provisional patent application and/or by using a Confidentiality Agreement or Confidential Disclosure Agreement (CDA).  As early as possible, work with the Innovation Institute to submit an Invention Disclosure form, which alerts the Innovation Institute to the existence of your innovation and provides the Innovation Institute with the necessary information to evaluate your innovation for patent protection at the earliest opportunity.  Check with your Licensing Manger to learn whether a provisional patent has been filed before making a public disclosure.

IMPORTANT: An Invention Disclosure form is an administrative document and does not provide any legal protection for your innovation.

  • CDAs — This agreement should be signed by outside parties prior to discussion of your innovation.  A sample CDA can be found on the Innovation Institute Web site.  Please contact the Innovation Institute to initiate the CDA process with interested outside parties.
  • Material Transfer Agreements
    • Found on the Office of Research’s web site, these agreements will protect from misappropriation, misuse or infringement any materials that you send to other research organizations for their own commercialization efforts using your materials.

 

Best Practices for Laboratory Notebooks

In the United States, if two or more patent applications are filed on the same invention, the patent will be awarded to the applicant with the earliest date of invention. In the rest of the world, in a similar situation, the patent would be awarded to the first person to file a patent application on the invention. The United States is thus known as having a “first to invent” patent system and other countries use a “first to file” system.

In a first-to-invent system, if a dispute or question arises as to which of two inventions was invented first, the patent generally will be awarded to the inventor who can prove the date when he or she conceived the invention. Proof must be in the form of documentary evidence, not merely a statement by the inventors based on their recollection of events. The best form of documentary evidence, of course, is a laboratory notebook.

Keeping good notebooks — The purpose of your laboratory notebook is to document how and when your inventions have occurred and show what steps have been taken, and by whom. It is important to keep these records in case a question ever arises about inventive contributions or date of the invention. Questions don’t occur in every patent application, but this issue is not uncommon. Lack of documentation could result in a loss of your patent if the dates or inventors are challenged. Therefore, develop good practices for keeping records regarding your inventions.

What to include — Your notebook should include a description of the problem that you’re studying, a description of your research approach, and any initial ideas or approaches under consideration. Create your notebook entries as you form your ideas and conduct your experiments. Perhaps most importantly, record the conception of any new ideas, particularly if they seem to represent an important scientific breakthrough.

Ideas, theories, lines of inquiry — It is important for you to be able to prove when and how you made your invention. Inventions are considered to have two major development steps: conception and reduction to practice. Conception occurs when an you have a complete idea for a solution to a problem. This must be more than an idea for a line of study, however. You should fully describe your concept in your notebook — in sufficient detail that someone skilled in the field could understand your invention. The date that you first conceive your invention is extremely important, so ensure that your entry is complete, signed, dated, and witnessed. Record any additional ideas and improvements on your Iinvention as they occur, including notes from laboratory group meetings if the work is discussed, and note what contributions or suggestions are made and by whom.

 

The date that you first conceive your invention is extremely important, so ensure that your entry is complete, signed, dated, and witnessed.

 

Experimental results and data – Make sure you record data about any experiments in sufficient detail so they could be reproduced. Include information regarding equipment, materials, times, conditions and methods used. Your invention is considered to be reduced to practice when your idea can be made or exhibited to achieve the desired result. Include all data in your notebook, either by directly recording it in the book or by stapling photocopies of the data into the book with sufficient explanation written in the notebook to illustrate that the data is genuine.

How to record information – How you record the information is almost as important as the information itself. Make regular entries in your notebook as you perform experiments and collect data. Ideally this should be done on a daily basis, but this is not always practical. Consider the following six guidelines for best practices:

 

  • Use a bound notebook. Choose a bound book so that no pages can be added, deleted, or placed in a different order.
  • Include the names of all research investigators. The first page of your notebook should include the name of the principal investigator, the names of all other investigators involved (both Pitt researchers and external collaborators), the title of the research project, and information about the funding for the project.
  • Sign and date every page. Record all Information as it occurs, and make sure that all research collaborators sign and date every page of the notebook. Include the dates of the experiments, and document what the results show. Notations should be objective and factual.
  • Don’t erase or tear out pages. Enter all information into the notebook in ink. Do not erase or delete anything from the notebook. Cross out information that is not relevant, but ensure that all notes are legible.
  • Don’t skip pages. Any blank space on a page or an empty page should be marked with an ‘x’ or diagonal line through it to clearly indicate that no information was added to the record at a later date.
  • Obtain witnesses. This is the most important step in the process. It is extremely important to have someone who is not an inventor record that he or she has read the entries and understands the work. This ensures that the record of any invention is not based solely on the word of the inventors, but rather strengthens the validity of the documentation should there be a question regarding when or how the invention occurred. CDAs — This agreement should be signed by outside parties prior to discussion of your innovation.  A sample CDA can be found on the Innovation Institute Web site.  Please contact the Innovation Institute to initiate the CDA process with interested outside parties.