Intellectual Property and Technology Transfer Office

Management System

Preliminary Invention Disclosure

The Invention Disclosure Management System has been design to facilitate the inventive process by providing and “all-in-one” online management system. With this system you will be able to do the following:

  1. File an Invention Disclosure (ID) describing you invention and the online system will send the information to the OPITT
  2. The Invention Disclosure (ID)  will be reviewed and you will be contacted shortly to discuss your invention
  3. You will receive assessment based on your Invention Disclosure (ID) on what are the next steps in order to protect it
  4. A prior art search will be conducted for your invention in order to see if it can be patented or if modification is needed
  5. You will be able to see on the system if your ID was selected to proceed with a patent application
  6. You will be able to see when the application was sent to the USPTO for processing
  7. You will be able to see the status of your patent application on the system and see if it was approved or denied

The first step is to go to:  http://tron.uprm.edu/invention/open.php (Coming Soon! – for now fill out form available on this website: http://engineering.uprm.edu/opitt/?page_id=83) and create a user id. Once you have registered in the system you will be able to fill out the ID form. Once you finish the form it will be sent to a specialist at the Office of Intellectual Property and Technology Transfer at the University of Puerto Rico at Mayaguez and you will be contacted shortly to discuss the invention.

Below you will find information on the innovation process and on how to fill out correctly the Invention Disclosure.

Patent, Copyright, Trademark and/or Tangible Research Property

GENERAL GUIDELINES/INFORMATION

The University of Puerto Rico, Mayaguez, encourages the inventive process and the scholarly publication of research results.  Within the limits of financial practicality, the Office of Intellectual Property and Tech Transfer (OPITT) will evaluate the feasibility of bringing an invention to the point of public use.

It is critical to have your cooperation and assistance during the patenting and licensing effort.  Once you sign and submit this Intellectual Property Disclosure Form, the University accepts the fact that you are in agreement with statements on the form and will work with the University to the best of your ability, consistent with the University patent and copyright policies.

PUBLIC DISCLOSURE

Any publication, presentation or public posting of works (digital or otherwise, including theses/dissertations) that describe a new technology may be considered public disclosure of an invention.  It is the responsibility of the inventor to notify OPITT if any work has been or will be publicly disclosed in part or in its entirety.  Note:  Public disclosure prior to alerting OTC may compromise certain patent rights.

Under current United States law, a patent application is not compromised by a publication describing the invention if the application is filed within one year of such publication.  However, under the laws of most other countries, any prior publication describing the invention precludes the granting of a patent.  Therefore, if an inventor publishes or otherwise publicly describes the technology before a patent application is filed, most foreign patent rights are lost.

PATENTABILITY

What actually constitutes a patentable invention is often a complex legal determination.  If you think you may have made an invention of commercial value, consult the staff of OPITT.

INVENTORSHIP

In order to be valid, a patent must correctly identify the inventor(s), and the inventor(s) must have been the first to invent the subject matter.  The details of these prerequisites are complex and involve legal determinations that might affect the validity of the patent application.  If there is any question about inventorship, you should consult the OPITT staff before attempting to establish inventorship and before disclosing the invention.

The inventor(s) is/are the person(s) who conceive of an invention.  To be an inventor, a person must have made an intellectual contribution to an original concept.

Inventorship may include more than one person.  Joint inventors need not have worked together or at the same time, but they must have communicated and been aware of each other’s work.  The contribution of joint inventors need not be equal; the contribution may be partial, but must be original.

Before submitting your invention disclosure form to OPITT, you must complete all sections of the form.  Incomplete intellectual property disclosures cannot be processed and will delay the technology transfer process.

How to fill out the Invention Disclosure

A complete Invention Disclosure should include the following information:

1.     Inventor information:

  • Make sure that inventors are listed and numbered in the order that they should appear on official documents.  The primary contact will be responsible for all communications regarding this invention disclosure.
  • Original signatures for all University of Puerto Rico  inventors (faculty/staff/student) are required.
  • For UPR appointment information, list name of UPR college(s) and name of UPR department(s), along with the percentage you worked at that appointment, during the time the invention was developed.

Why does OPITT need my work and home addresses?

We need your work address to contact you and your home address to mail royalty checks to you. Please keep us updated if either address changes.

Students own all inventions they create as part of their University academic and research activities except those created through sponsored research.  Students should seek legal counsel before assigning rights to the University.

2. Technical Background of Invention

This is where you describe the unique element of your invention. In a short phrase, describe what is the problem that you invention overcomes or solves. It is important to describe clearly, in a short phrase, what exactly makes the invention unique. For example, if there is a problem with light bulbs getting to hot when they turn on and your invention uses a particular circuit element of a particular material that no one else uses that dissipates the photon in another manner other than heat, then in this section you would just briefly stat that the inventive element is the use of this particular circuit element that dissipates photons in a particular manner and reduces heat by almost 100%. You would not need to include the circuit information or the type of material used, nor the specifics of the circuit element, just include what the inventive element is that solves the problem at hand.

3. Closest related art

There should be a preliminary prior art search that inclused, patents, publications, research papers and anything else that was found that is related to the invention. So for the case of the example of the light bulb circuit, anything that has to do with circuits that dissipate efficiently heat and lower temperature of the light bulb. It doesn’t have to be exactly like your invention it just has to have some similarity in solving the problem. This is important because the OPITT will use this information to better understand the invention and to see what other varieties could exist regarding this technology. The OPITT will also conduct a prio art search and will use your prior art (related documents) to have a good start.

4. Description of Technology and Suggested Scope:

Attach a complete enabling description of the technology.  The description must include how to make and use the invention and should include specific examples, drawings, diagrams, etc.  The description may be by reference to a separate document (copy of a report, preprint, grant application and the like) attached hereto.  If so, identify the document positively.

If the technology is software, attach a copy of the source code on paper as well as on a computer-readable disk.  To provide the best protection of copyrightable works, please apply the following copyright notice to all existing copies of the work:  “Copyright © YEAR, University of Puerto Rico, All Rights Reserved”

If any portion of the software contains code that was developed solely by a third party, you must have written permission to use the code (please attach a copy of that agreement).  If you do not have written permission, please supply the name, address and telephone number of the owner of the code.

For software, the above copyright notice should be placed in the following locations:  (a) source code (top, bottom and randomly throughout), (b) on the title screen, (c) on all disk labels, (d) on any printed materials (i.e., user’s manual).

If the technology is a tangible research property (i.e., microorganisms or devices), provide stored location(s).  Refer to the OPITT Inventor’s Manual.

6. Describe alternative elements

Describe any other alternative of your invention that could also solve the problem. For the example of the light bulb, could there be another semiconductor material for the circuit element that could accomplish the same goal? This will help us to search other alternatives to see if anyone has already invented an alternative way to solve the problem.

7. UPR project name

The name of the research project that you worked on that lead you to this discovery.

8. UPR products that will use this invention

In what way could the university use this invention? As part of a product?

9. Related government  contract

        Any contract or collaboration with the government (local or federally) or any of its agencies

10. If the invention is related to a standard activity

        If the invention is related to an activity that is considered standard to the university protocols of research and development

11.  Publications and Presentations:

  • Attach copies of any publications, abstracts, poster presentations, etc., that you have prepared relating to this technology.
  • Attach copies of any publications others have prepared relating to this technology.
  • Attach copies of any slide presentations, visual aids or handouts that you have used disclosing this technology to others.

12.  Sponsored Research:

  • Complete all information in this section of the disclosure form.  To comply with federal Bayh-Dole Act regulations, OPITT must report all government funded inventions to the federal agency that granted the award.

13.  Joint Owners:

  • In the event of a joint invention disclosure with a company, government agency, or other university/institution, provide a copy of the completed joint owner’s invention form, if available.  Original signatures of joint owner inventors on the UPR form are not necessary.  OPITT will contact the joint owner; please provide contact information.

How detailed should the description of the invention be? 


As detailed as possible. All information provided to OPITT will be kept confidential. Without adequate information, OPITT cannot perform a complete evaluation of the invention’s licensing potential, nor can we obtain an accurate legal opinion as to whether it is patentable. The first meeting of the Associate and the inventor(s) is a time when the invention may be discussed in greater detail.

Why are the dates of conception and disclosure important?

Until March 16, 2013 the U.S. patent system is a “first-to-invent” system; that is, the party that can prove they were the first to invent an invention gets the patent rights. Keeping dated lab notebooks that are witnessed by others, and other records of your research is thus important for patenting. (After that the U.S. will switch to a “first-inventor-to-file” system, described in the highlights of the America Invents Act).

The dates of disclosure are important because in the U.S. an inventor has one year from the date of public disclosure (this includes orally at a public meeting, in writing, or offering it for sale) in which to file a patent application. Once that year has passed, the invention cannot be patented. Moreover, foreign patent rights are lost once an invention has been publicly disclosed. While OPITT does not often file for foreign patents due to their high costs, we strongly encourage inventors to disclose their inventions well before public disclosure so that we may keep this option open.

If I publish a paper or make an oral disclosure before OPITT files a patent application, have we lost patent rights? 

U.S. rights, no. Foreign rights, yes. In the U.S. we have one year from the date of first publication (or public disclosure) in which to file for a patent. But OPITT does not file many foreign patents, since there is often a larger potential market in the U.S.

What is considered a public disclosure of an invention? 

Anything that is readily available to the public (a journal paper, a conference presentation, a publication on the World Wide Web, even a dissertation indexed at the library) that describes the basic ideas in enough detail that someone else would be able to make and use the invention; i.e., those ideas that are new. Showing or telling these ideas may also constitute disclosure, as does selling or offering for sale a prototype of the invention.

Should I refrain from publishing a paper or making an oral disclosure of an invention before OPITT has filed for a patent?

No. The one-year grace period permits later patent filing. If possible, however, disclose your invention well before your invention is to be publicly disclosed. That way, we have plenty of time to evaluate it to see if we might want to protect foreign patent rights.