Patents & Licensing - Definitions

Disclosure Form Complete and Accurate
This is the standard four page form provided by the University. It is important to include signatures of all supervisors. This keeps them informed as to intellectual property developments within their units.
Concise Description of the Invention with Drawings/Full Abstract
Your disclosure should enable someone having knowledge of the field to understand the invention. Include all essential elements (features, concepts, or new results of the invention, whichever is most applicable), their relationship to one another, and their mode of operation. Identify the elements that are considered novel. Also, if the invention is an apparatus or system, attach drawings or a sketch and indicate if it has ever been built or tested. Use additional pages, attach drawings, manuscripts, papers, or other supporting material to facilitate understanding of the invention.
This is the full description of your idea, how it works, why it works. This does not necessarily have to be as simplistic as the non enabling abstract. The full abstract would be best described as your description of your idea to a colleague or peer. Although most abstracts are held to one hundred words or less, please feel free to take as much space as you need to fully describe the idea.

Technical Data Summary
This is the data which proves that your device/idea works. If you have begun testing a device or gathering and analyzing performance data for your device, you will have generated technical data. If the idea has not been reduced to practice, you may not have technical data to submit. It is not necessary to provide the raw data, however; the reader should be able to draw some inferences about performance from a summary.
The lack of technical data will not disqualify you from this process. If you have not built a prototype or other physical manifestation of your idea, there will be little or no technical data generated. Many ideas are reduced to practice mathematically or theoretically.

Prior Art Review
Prior art may consist of prior patents, printed publications, prior public uses, prior public sales, and sometimes even prior invention by another or prior secret uses. All doubts should be resolved in favor of disclosure. If you have read or seen a device/idea similar to your own, this is the place to disclose it. Explain why your device/idea is better or different. You may want to take this opportunity to identify colleagues who may be working in the same field. In this way, we can search patent databases by inventor names.

Literature Search and Review
This is a review of the written professional journals, refereed papers, conference presentations, and public disclosures that are related or similar in nature to your invention. Some of the professional journals or conference proceedings may or may not appear on a library bookshelf. Describe what is currently available in the field. Identify existing devices and processes (and their shortcomings) and list any published material such as patents, commercial literature, and scientific articles relating to the invention. Identify the advantages or benefits of the invention over currently available technology, such as efficiency, cost benefit, simplicity, overcoming a defect. Identify possible uses or new uses of the invention (especially important if the invention is a chemical compound or new process).

Record of Conception
Conception, in the patent-law sense, involves the formulation, in the mind of the inventor, of the complete means for solving a problem. The mere recognition of a desirable result, or of a problem, or of a general approach to solving the same, without the formulation of the physical structure to accomplish that result or to solve the problem, will not suffice to constitute conception.
This is the first documented proof of the chronological event of creation. For most engineers who maintain a bound laboratory notebook, a photocopy of the page will suffice. Bound notebooks are more defensible in a courtroom because they are not easily altered. A single page record of conception will work, however, it must have signatures of at least two people who understand the technology as witnesses. Electronic notebooks and computer generated records are usually not acceptable as a record of conception because they can be altered.
The basic idea here is to be able to document that you did something first. Often, the conception of the idea occurs months or years before reduction to practice or the building of the first prototype.

Reduction to Practice and Commercialization Hurdles
Reduction to practice, according to patent law, involves actual and complete use of the invention for its intended purpose. Such reduction to practice generally involves physical construction of the invention and testing the physical embodiment to determine whether it performs as contemplated, but this is not always necessary if the invention can be fully described. The process of invention is often described in terms of "conception" and "reduction to practice". This means an invention must involve something which is conceptually novel (with respect to the prior art) as well as being capable of working successfully to produce something useful. Both conception and reduction to practice must be accomplished before an invention is complete and patentable. However, the requirement of reduction to practice does not mean that a complete and practical working example of the invention is a prerequisite for disclosure of the invention or filing for a patent application.
Under patent regulations, it is possible to effect a reduction to practice by filing a complete patent application in the USPTO. This is known as a constructive reduction to practice, as compared to an actual reduction to practice, which requires that the invention be actually practiced by making and testing a claimed machine, or article of manufacture, or by actually carrying out a claimed method.
This is a simple explanation of what it will take to get your product/device to market. There can be two aspects here. First, what is required to build your device? For example, if your invention can be made with "off the shelf" components, it will be relatively easy to manufacture. If, however, your invention requires a new materials process, or a technology that is not accepted as the industry standard, you should say so here. If there is a governmental regulation that must be changed to have your device accepted as the standard, please let us know.
Commercialization hurdles can also manifest themselves in two forms. First, a paradigm shift in the industry. This would occur if the industry has to "start from scratch" to implement your invention. Second, if your device could be retro fitted onto an existing machine, it would be seen as an addition with little to no costs. The retro fitting would be more readily accepted than a paradigm shift because the industrialist can use existing machinery that has improved performance.

Competitive Situation
Who is the competition on both an academic and industrial level. This allows us to identify both potential competitors, and, potential licensees. Also, please identify any technologies which might commercially compete with your invention.

Publication Expectations and Grant Application Deadlines
Public disclosure includes abstracts and presentations at scientific meetings (including poster sessions), public seminars, shelving of theses, publications, disclosure to others outside the University who have not signed a confidentiality agreement, and use, sale, or offer of sale of the invention. Identify dates and circumstances of any such disclosures. Also, indicate your future disclosure or publication plans, and NOTIFY the Office of the Vice President for Research if the invention becomes publicly disclosed or published in the future (whether by plan or inadvertently).

Samples&
If you have built a prototype in your lab, let us know. We could demonstrate the device/idea for both the market evaluation group and any industrial sponsors.

Non Enabling Abstract
This will be used in our campaign to promote the invention, and should, therefore, be no longer than a type written page and not contain confidential information.
This is a description of what your idea will do, not necessarily how it will do it. The non enabling abstract uses layman's terminology and is meant to be understood by someone outside of your discipline.