Inventions and Inventors

What is an Invention? (Intellectual Property)

A new, novel, non obvious idea or concept that has been reduced to practice. What makes an invention patentable are four criteria that must be met. The invention must be novel, useful, non-obvious and enabled.

The invention must be new – no prior public disclosure, offer for sale, or public use. In the U.S. the patent office allows a patent application to filed within one-year following public disclosure. However, in most other countries there is no grace period. If you publish or otherwise disclose the unprotected invention (technology) first, foreign patent rights are destroyed or If you are not the first to file for the U.S. Patent (as of March 2013).

Any of the following constitute a public disclosure, providing it is enabling (provides enough information and detail that someone in the field could develop it): publication in a scientific journal (when actually published), published abstract with all key details, poster presentation, internet publication, dissertation available from University Microfilms, thesis or dissertation in UNO library, email or oral disclosure to people outside your institution, if not under a secrecy (or non-disclosure; confidentiality) agreement.

Who creates inventions?

The Inventors (Faculty, Staff and Some Students) who made a creative contribution to at least one of the issued claims in a patent– not a just someone who assisted the inventor, such as a lab technician or student who ran tests directed by the inventor. Inventorship is defined under patent law. Sometimes inventorship can't be determined until the patent is issued, because the claims may change during prosecution (if for example certain claims get disallowed).

Why, I must and should disclose my inventions and discoveries?

It is required as an employee of UNO. If your research was funded in whole or in part by a federal, state or industrial grant/contract, you are required to file a Technology Disclosure Form for any possible invention under terms of the grant. The University in turn, is required to notify the sponsor. For federal grants, the University must report the invention to the sponsoring agency within 60 days and actively work to commercialize the technology to meet the requirement that federally funded inventions should be licensed for commercial development, in the public interest. If the invention has commercial value, not disclosing the invention can lead to loss of royalty revenue income, that is shared by the institution with the inventor(s) according to its policies.

When should I disclose my inventions and discoveries?

You should file the Technology Disclosure Form as soon as you realize your research has uncovered something new and useful – two of the key elements for patentability. While the experimental work need not be complete, a clear and complete written description is required. A working model is not required – drawings and a written description are sufficient.