NSM Faculty/Staff Newsletter

From the Office of the Dean

Conflicts of Interest & Intellectual Property

Invention Disclosure, Provisional Patent Applications, Non-Provisional Applications (Part Two of a Three-Part Series)

In the normal course of your academic research, you may discover or develop something that may have commercial potential. For your discovery to have any chance of being translated into the commercial marketplace, it must be disclosed to UH before you make any public disclosures of that work.

Invention Disclosure and Public Presentations

After filing an invention disclosure (Related Links) and then a provisional patent over the next 90 days, you may publicly disclose your work.

Public disclosures include, but are not limited to, oral or written presentations/publications of the discovery at open meetings/venues. Presentations in a meeting covered by a Non-Disclosure Agreement (NDA) do not qualify as public disclosure. In some cases, it may be beneficial for you to delay public disclosure in order to have more time to develop the discovery further. This and related topics will be discussed in Part Three of this series.

Provisional Patent Applications and Copyright Protection

Once you have filed an invention disclosure, the UH Office of Technology Transfer and Innovation (OTTI) will work with you to evaluate the best course of action for your invention. If a discovery appears to be protectable and a significant market exists, the OTTI will typically file a provisional patent application or possibly suggest copyright protection.

If a provisional patent application is filed, a 10-month period ensues during which the inventor should make every effort to continue to develop their discovery and reduce it to practice as much as possible. At this time, you should also work with your industry contacts and OTTI to understand the commercial interest in the technology. Note that provisional patent applications are not public (not published).

Near the end of the provisional period, the UH Intellectual Property Committee will evaluate the invention both through a presentation document that you will be asked to prepare and an internal OTTI examination of the patent landscape, market potential, and SWOT (Strengths, Weaknesses, Opportunities, Threats) analysis. You may be asked to make a presentation to the committee, although that is not typical.

Non-Provisional Applications

The committee may recommend that UH convert the provisional patent application into a non-provisional application or to return the invention to the inventor. In the former case, the University commits to spend a substantial amount of money in order to attempt to protect the invention and, with your help, will attempt to identify (commercial) entities/persons who want to license and develop the invention toward the commercial marketplace. In the latter case, the inventor can choose to pursue non-provisional patent protection themselves through a formal return process managed through OTTI or to abandon the provisional patent.

Have a Discovery with Commercial Potential?

If you feel that you may have a discovery with commercial potential, you should seek out the advice of experts in the OTTI and also communicate with inventors/entrepreneurs who have been down that path before. UH entrepreneurs can be found through the OTTI website, the UH Intellectual Property Committee, and/or by contacting the NSM Associate Dean for Faculty Affairs.

Inventions, no matter how amazing you think they are, will not have the chance to benefit society unless they are protected and brought to market.

Reference Materials