Should I Disclose?

David Richardson ReliOx 2

You have questions? We have answers. Find out more about why you should disclose your invention and how OTL can help you in this FAQ section.

Why disclose an invention?

Because commercialization:

  • Attracts research funding
  • Forms industrial partnerships
  • Earns royalty income
  • Places graduate students in rewarding jobs
  • Moves research discoveries to the market for the public good

Don’t underestimate the value of your work! While very few research discoveries generate millions of dollars, many play a key role in improving the human condition and making the world a better place. Unless researchers disclose, however, their work is rarely commercialized.

Under the requirements of the Bayh-Dole Act and University of Florida policy, University employees must disclose all intellectual property created by them to the Office of Technology Licensing. The University of Florida will own this intellectual property unless specifically waived back to the funding agency and/or the inventor(s). UF will have rights to the invention in the following circumstances: the invention was made while you were employed at UF AND the invention is in the field/discipline in which you are/were employed OR the invention was made with university resources.

OTL staff are here to ensure your rights are protected and to assist you through the entire process of moving your discovery to market.

Is my discovery an invention?

An invention is…

  • Novel – New, never before used
  • Useful – Must have a purpose or intended use
  • Non-obvious to someone “skilled in the art” ie: peers and/or a patent examiner would not readily identify the improvement or new application

Not sure? Call OTL to discuss your discovery with a licensing officer, 352-392-8929.

When should I disclose an invention?

Researchers, faculty, graduate students and clinicians should disclose all intellectual property that may be eligible for protection as soon as possible in order to obtain patents and copyrights. The Office of Technology Licensing works with hundreds of researchers every year to assist them in protecting their intellectual property. With a patent, you can prevent others from making, using or selling your invention for a certain period unless they have your permission. Patent protection is vitally important to finding a commercial partner willing to invest in getting your discovery from the lab to the market.

Can OTL still protect my invention if I presented or published?

  • Do not discuss your discovery with anyone outside your laboratory without first executing a Confidential Disclosure Agreement (CDA). This includes presenting posters at conferences or submitting publications. Telling others what your discovery does is fine, but giving enabling information (ie: how your discovery works) without a CDA in place can drastically affect patent protection.

What should I do before speaking with industry or someone outside the university?

  • Confidential disclosure agreements protect your rights if you need to discuss enabling details of your invention with people outside the university. The Office of Technology Licensing staff execute an average of 300 CDAs per year, often completing them on the same day. A CDA serves three purposes:
    • It alerts the receiving party of the confidentiality of the information to be received.
    • It specifies the responsibilities required of the receiving party.
    • It can be used as evidence in subsequent patent processing, e.g., to defeat an allegation that the invention is not novel because the inventor treated it as public information. This kind of allegation arises frequently from those contesting a potentially lucrative patent, so a CDA is more than a “mere formality.”

Why do I need a patent?

The Office of Technology Licensing works with hundreds of researchers every year to assist them in protecting their intellectual property by filing patents. With a patent, you can prevent others from making, using or selling your invention for a certain time period unless they have your permission. Patent protection is vitally important to finding a commercial partner willing to invest in getting your discovery from the lab to the market. OTL licensing associates work with law firms to manage the patent prosecution process.

A patent is an intellectual property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.

There are three types of patents:

  • Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
  • Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture

Learn about the patent process

A copyright protect works of authorship, such as writings, music, and works of art that have been tangibly expressed. The Library of Congress registers copyrights which last for the life of the author plus 70 years.

A trademark protects words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.

I want to start a company. How do I do that?

First, you need to disclose your invention. Some technologies are better suited for licensing to an existing company, where they might fit into product offerings and markets. However, if your technology is sufficiently broad-based (e.g. a platform technology that enables a range of different products, possibly for a range of different markets) or novel, or offers potential returns that justify the required capital investment, a startup company may present the best commercialization strategy. UF consistently ranks among the nation’s leaders in launching companies based on university research. In most startup companies, the faculty inventor plays an important role, usually as chief scientific adviser.

For more information, read the Startup Primer, explore Funding & Resources, and read more about how investors and entrepreneurs Start a New Company.

OK, I have an invention to disclose. Where do I do that?

I still have more questions

Or call OTL, 352-392-8929. We will be happy to help.