Submitting Invention Disclosures
at Rice University

No – giving our office an invention disclosure starts our review process, but doesn't guarantee that Rice will decide to file a patent application. Submitting an invention disclosure to our office does not in and of itself protect any intellectual property.

Please feel free to send a disclosure as early as possible, any time you think you have something that could be interesting! We are always happy to engage with you at any point in the research process; indeed, it's often helpful for our office to have an understanding of your long-term research plans and goals, so we can help create a strategy for protecting and commercializing your work. On a strictly pragmatic note, it's strongly preferable if you can submit a disclosure well in advance of a publication or public presentation of a particular piece of research – at least 60 days in advance, or even longer, is ideal so that we can fully evaluate the disclosure and file a high-quality patent application before something is publicly disclosed.

Inventorship on a patent is a matter of law. It is a legal requirement that a patent list only those people who are inventors and not omit anyone who qualifies as an inventor. To quote the relevant case law cited by the United States Patent and Trademark Office's Manual of Patent Examining Procedure (emphasis added), "The threshold in question in determining Inventorship is who conceived the invention. Unless a person contributes to the conception of the Invention he is not an inventor..." Insofar as defining an inventor is concerned, reduction to practice, per se, is irrelevant [except for simultaneous conception and reduction to practice, Fiers v. Revel, 984 F.2d 1164, 1168, 25 USPQ2d 1601, 1604-05 (Fed. Cir. 1993)]." Because the claims of a patent application may be amended during the process of patent prosecution, the people who qualify as inventors on a patent may change as the claims change. As alluded to in the relevant quote above, merely reducing an invention to practice does not guarantee that a person should be considered an inventor on a patent application. For example, an undergraduate research assistant who carries out an experiment that was entirely conceived of and directed by a professor may not be an inventor. Again quoting the MPEP, relevant case law has established that "[a] noninventor's work was merely that of a skilled mechanic carrying out the details of a plan devised by another." Authorship on a publication, by contrast, is determined by the policies of a particular publisher or conference, and could easily include someone who solely carried out experiments under someone else's direction. A person who qualifies to be an author on a paper may not meet the legal standard to be named an inventor on a patent application that protects the work described in the paper. "Authorship" is a matter of professional and academic norms rather than a concept defined by law.

Our disclosure form collects information that is required by the USPTO to be included with a patent filing, as well as sufficient contact information for our office to be able to communicate with the contributors during patent prosecution. The inventors' feedback on draft applications and responses to office actions are crucial for us to ensure that a patent adequately protects the technology. Additionally, there will from time to time be legal documents that we need all the inventors to sign, so we need a way to reach people to get signatures even after they have left Rice. Finally, if a technology is licensed, we need to be able to reach all the contributors so that we can distribute any license revenue that is collected.

Rice needs to be able to notify and work with any co-owner(s), since contributors outside of Rice may have obligations to their employer that need to be taken into consideration as we review the disclosure and make a recommendation about how to proceed. Hence, we need the same information about each contributor regardless of whether they are a Rice employee/student or not. Each person listed needs to review the disclosure, agree that they are a contributor, and confirm their contribution and contact information by signing.

In general, we need as much supporting data as possible when we begin to draft a patent application. United States patent law (35 U.S.C. §112(a)) requires that a patent "shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention." There are a number of factors that the USPTO would consider when examining a patent application to determine if this requirement is met, but in general, the standard is that a person "skilled in the relevant art" must be able to make and use the entire claimed invention without "undue experimentation" using the information disclosed in the patent and information generally known in the art, so an application must include enough supporting data to be able to meet this standard. Patent examiners can and will reject claims for lack of sufficient enabling data. In a case involving a research university, Trustees of Boston University v. Everlight, Boston University sued Everlight Electronics for infringement of a patent related to the manufacturing of LEDs and was initially awarded nearly $14 million, but the judgment was overturned on appeal because of a lack of enablement of the claim that Everlight allegedly infringed – the claim was instead invalidated by the appeals court. In the end, Boston University was awarded no money at all because of an enablement issue. In a more recent and much larger case between two pharmaceutical companies, Juno Therapeutics, Inc. v. Kite Pharma, Juno was initially awarded $1.2 billion by a jury for alleged infringement of a patent covering a cancer immunotherapy technology licensed from Sloan Kettering Institute for Cancer Research, but an appeals court reversed the judgment and invalidated the claim at issue, again because of a lack of detail in the patent specification to support the claim. (In this case, the specification contained insufficient detail to identify and create particular single chain variable fragments that bind to particular target antigens.) Again, Juno ultimately received no money whatsoever. This is why it's so important for us to have as much data as possible to support the full breadth of the possible invention – it prevents us from having to narrow our claims during prosecution, and it ensures that our licensees have strong patents that cover the products and services they make and sell that can stand up in court if they are challenged.

Our office typically has an obligation to report invention disclosures to the entity that funded the research. For research done using US federal funding, this is actually a legal requirement, but the contracts we have with nonprofit foundations or industry sponsors usually also require us to report inventions. Hence, we need complete and accurate information about funding to fulfill Rice's legal and contractual obligations. Beyond reporting disclosures, certain kinds of funding may need to be cited in a certain way in a patent application, so we need that information to make sure the application is drafted correctly. Furthermore, it's possible that sponsors may have been automatically been granted an option, license, or other rights to the technology, so we need to be able to take that into account as we evaluate a disclosure and make recommendations regarding IP protection and commercialization strategy. There could even be funding agreements in place that limit Rice's ability to file patents and grant licenses to third parties – this is really important to know from the start!

Patent rights could be lost if you make a public disclosure of the technology before a patent application is filed. A disclosure may be a written publication such as a journal article, a public presentation such as a conference talk, or really any description of enabling details of the technology to someone outside of Rice, if there is no obligation of confidentiality in place (such as through a non-disclosure agreement between Rice and the other party). One practice that is becoming more and more common nowadays is to post manuscripts on preprint servers such as arxiv or biorxiv, or just to a personal website – these preprints count as public disclosures because they are accessible to the general public, even though they have not yet been peer-reviewed and accepted by a journal. If you have a question about whether something might constitute a public disclosure, please contact us in advance!

In general, if a publication or public presentation "describes the claimed invention in sufficient detail to enable a person of ordinary skill in the art to carry out the claimed invention,"that public disclosure may be counted as prior art against your patent application. In some cases, it may be possible to redact critical details about an invention from a planned presentation in order to avoid this issue – if this is a concern for you, please contact us and we can discuss! In the United States, there is a grace period of 12 months after a public disclosure made by the inventors themselves during which you can still file a patent application to protect the disclosed invention. However, nearly all other countries lack such a grace period, and any public disclosure of an invention before a patent application is filed will kill your ability to obtain a patent. If you know you plan to publish a paper or present research at a conference, it's best to give us a disclosure well in advance (ideally, at least 60 days before the planned publication date) so that we can review the disclosure and file a patent application if that's our ultimate recommendation. Our strong preference is not to ask a researcher to delay a publication because of the need to file a patent application, so we want to make sure we have enough time to work with you.