Submitting an Invention Disclosure

Inventions are submitted to the university through an Invention Disclosure (.doc) (.pdf). To facilitate the timely review and processing of your invention disclosure, all sections of the invention disclosure form must be completed. The completed disclosure, signed by each contributing inventor, should be submitted to the Office of Technology Transfer (OTT) via e-mail (techtran@rice.edu). Alternatively, a paper copy of the completed and signed disclosure form can be delivered to the OTT at BRC Suite 1040. A disclosure should never be submitted to a licensing officer only, as his/her absence from the office could result in a delay in processing and even loss of certain patent rights.

If available, you are encouraged to also submit any additional information, such as PowerPoint presentations, manuscripts, etc., which provide supporting information that will assist the OTT in its assessment of the disclosure and filing of any patent application.

Please see below for frequently asked questions. If you have any other general questions please contact us.

Does submitting a disclosure mean that a patent application is automatically filed?

No – giving our office an invention disclosure starts OTT’s 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.

How does Rice decide whether to file a patent application based on an invention disclosure?

Rice OTT has the responsibility to evaluate each disclosure based on the likelihood of realizing a successful commercial partnership and the prior art landscape in the relevant field. In addition to traditional licensing pathways, we also take into consideration the possibility of attracting industry-sponsored research funding, as well as the desire and ability of the inventors to form a new startup company around the technology. Our goal is to use Rice’s limited resources to protect IP that has a high likelihood of successful commercialization.

How long does OTT's review process take?

In general, we want to have at least a preliminary review and recommendation on whether or not to seek IP protection within 30 days of receiving an invention disclosure. However, it is not possible for us to meet this goal if the disclosure materials we receive are incomplete and the inventors do not respond to followup questions to help us get any missing information. In particular, for disclosures that lack any supporting data or do not give us complete information about the contributors and sources of funding, we have a very difficult time making a recommendation to pursue IP protection.

Why should I disclose? How do I benefit from disclosing a new technology?

There are any number of reasons why you might want to disclose a technology to our office and start the process of evaluating its patentability and potential for commercialization:

You may want to explore ways in which your lab’s research can contribute to a product or service that can benefit the public.



You may want to create a startup company to develop this technology and want to work with Rice on an intellectual property and licensing pathway for the work the company will develop.



You want to develop a relationship with an existing company, whether to license the technology you have developed, to bring industry funding to your lab, or just to network and build relationships for you and your students in the future.



Some research sponsors require the disclosure of new technologies developed under a particular award, so you may need to submit a disclosure to comply with the grant terms.



Rice’s patent and software policy encourages and requires you to disclose patentable inventions created in the course of your research using Rice resources.



Finally, if a technology is licensed, you and the other inventors will receive a share of any license income Rice receives according to the terms of Rice’s patent policy.

When should I disclose?

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 provide a recommendation on whether or not to file a patent application before something is publicly disclosed.

Who counts as an inventor and how is that different from being an author?

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 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)].”

As alluded to above, just 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. Authorship on a publication, by contrast, is determined by the policies of a particular publisher or conference, and could easily include a person who only carried out experiments under someone else’s direction. “Authorship” is a matter of professional and academic norms rather than a concept defined by law.

Why do you need such detailed information about each contributor?

Our disclosure form collects information that is required by the US and other national patent offices 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.

What if my technology has non-Rice contributors?

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.

Why do you need information about funding?

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!

What kind of supporting detail do I need to provide about my technology, and why?

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 meet this standard. Patent examiners can and will reject claims if there is not sufficiently enabling information in the specification, which may require that we substantially narrow the breadth of our claims or abandon the prosecution entirely.

What are the consequences if we try to pursue a patent with very little data to support the claims?

Even if a patent issues, it is possible to challenge the validity of issued claims in court over lack of enablement. This often happens when one party is sued for infringement of the patent and responds by arguing that the allegedly infringed claims are invalid. These sorts of challenges can have serious consequences for the patent owner:

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. Boston University 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 allow a person skilled in the art to identify and create particular single-chain variable fragments that bind to particular target antigens.) Again, Juno ultimately received no money.

Having as much data as possible to support the full breadth of the possible invention not only prevents us from having to narrow our claims during prosecution to avoid rejection, it also ensures that our licensees have strong patents covering their products and services that can stand up in court if they are challenged.

What could I do that might inadvertently jeopardize the ability to get a patent?

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!

How do I handle publications or presentations?

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 a patent application can still be filed 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 in those countries.

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 fully review it and make a recommendation on whether to file a patent application. Our strong preference is not to ask a researcher to delay a publication because of a need to file a patent application, so we want to make sure we have enough time to work with you.

How does the process of drafting and filing a patent application work?

If we decide to invest in protecting a technology, we almost always start with a United States provisional patent application. OTT selects a patent attorney with expertise in the technology space the disclosure fits into, sends them the disclosure and any supporting materials, and asks them to prepare a draft patent application for the inventors and OTT to review. Usually, there are several rounds of revisions before all parties are happy with the application and it can be filed. This can take several weeks, particularly if we do not receive prompt responses from the inventors.

What are my obligations as an inventor on a patent application?

We need you to work with OTT and with Rice’s attorneys to prepare draft applications and to give your input on responses to office actions. From time to time, there will also be additional legal documents that must be signed by the inventors and filed with the USPTO or other national patent offices in order for the patent to issue. If you have a patent application pending, it’s critical that you keep an eye out for correspondence from our office, help us stay in touch with inventors who move on from Rice (e.g., students or postdocs who move on), and provide us with signed documents in time to meet legal deadlines – if you don’t do so, it can severely harm your chances of getting a patent application issued.

Why do they call it “patent prosecution?”

This may be a bit of an archaic use of “prosecution” – in the sense of “the carrying out, performance, or practice of a pursuit, occupation, craft, etc.” or possibly “effort… to obtain or get possession of something.” So, “patent prosecution” is the entire process of filing a patent application, responding to office actions from the US or other national patent office, and following up to have a patent issued. This is distinct from “patent litigation,” which would involve someone taking legal action (such as filing a lawsuit) against someone else for alleged infringement of a patent.

What is an “office action?”

Directly from the USPTO: “An Office action is written correspondence from the patent examiner that requires a properly signed written response from the applicant in order for prosecution of the application to continue. Moreover, the reply must be responsive to each ground of rejection and objection made by the examiner.”

Office actions layout in writing a patent examiner’s reasons for rejecting claims or objecting to the patent application on other legal grounds. When the USPTO or other national patent office issues an office action, Rice’s patent attorneys report it to our office, and we in turn work with the attorneys and our inventors to draft an appropriate response, which may include arguments against the examiner’s rejections of the claims, amendments to the claims that address the examiner’s rejections, or both. Responses to office actions must be made by the deadline specified by the patent office; otherwise, the patent application is considered to be abandoned.

How long does the typical patent process take?

It’s usually several years from the filing of a provisional application to receiving a notice of allowance. After filing a provisional, you have a deadline 12 months later to convert it to a non-provisional application. From there, we can either file directly in the United States or file a PCT application, which is a placeholder application that allows you to later decide whether to file in the US or in most other countries in the world.

If we file a PCT application, we have to select which countries to file in 18 months after the PCT filing date (which is 30 months after the provisional filing date) – and it’s only after filing in a specific country that the patent application is even put in a queue to be examined. We then have to wait for the USPTO or other national patent office to examine the application and send office actions. It can take months or even years before we receive the first office action on an application. It is typical to go through several rounds of office actions and responses before an examiner either decides to allow a set of claims to issue or we decide to abandon an application because it is clear the examiner will not allow any meaningful claims to issue.

How does Rice choose what countries to file patent applications in?

The usual path is to file a United States provisional application, then at the conversion deadline 12 months later, decide whether to convert to either a US utility application or PCT application. We might choose to file a PCT application if a technology is not licensed and we want to preserve our ability to later file outside the United States if we can find a licensee before the PCT nationalization deadline. Due to the high cost of filing and maintaining non-US patent applications, it is Rice’s practice not to file patent applications outside the US for technologies that are not licensed. For technologies that are licensed exclusively, we request the licensee’s input as to where to seek patent protection and almost always file accordingly, provided that the licensee is in compliance with the terms of their license agreement.