West Virginia University Invention Disclosure and Assignment Form

Confidential

West Virginia University Invention Disclosure and Assignment Form

General Information and Instructions

General Information:

· An Invention Disclosure submitted to the Office of Technology Transfer (OTT) of West Virginia University Research Corporation (WVURC) serves as a record of a potentially patentable invention and notice of such to West Virginia University.

· A submitted Invention Disclosure is not “an application” for patent, trademark, or copyright.

o The Invention Disclosure is not filed with the United States Patent and Trademark Office or the United States Copyright Office.

· The Invention Disclosure will be evaluated by the Technology Transfer Assessment Committee (TTAC) to determine whether a patent/trademark/copyright application on the invention should be filed by WVU.

o Therefore, the Invention Disclosure should contain all information necessary to fully understand the invention, the related art, what is believed by the inventors to be patentable, and why.

Instructions:

· Complete all sections of the Invention Disclosure form.

□ In Section I, the total of numbers in “% of Contribution” is 100.

□ In Section XIII, all the inventors signed.

□ On Assignment Form, all the inventors’ signatures are notarized.

*Please contact the OTT if you would like an OTT staff to notarize the assignment.

· Submit the complete hard copy of Invention Disclosure with wet-ink signatures along with the Assignment Form with notarized wet-ink signatures to:

Office of Technology Transfer

P.O. Box 6224, Room 723

886 Chestnut Ridge Road

Morgantown, WV 26506

Process Followed by OTT

· After receiving an Invention Disclosure and Assignment Form, OTT will send the inventors an e-mail confirming receipt of a complete Invention Disclosure or communicating incompleteness of the Invention Disclosure.

· OTT confidentially sends the Invention Disclosure to a marketing agency for commercialization assessment.

· OTT receives a commercialization assessment and forward it to the inventors and TTAC members.

· TTAC reviews the Invention Disclosure and the commercialization assessment and decides whether or not to pursue a prior art search.

o If TTAC decides to pursue a prior art search for the Invention Disclosure, OTT confidentially sends the Invention Disclosure to the third party reviewer or performs an in-house prior art search.

o OTT receives prior art search report from the third party reviewer or in-house prior art searcher and shares the report with the inventors to determine if the identified prior art makes the invention unlikely to be patented /trademarked/copyrighted.

o If prior art is not likely to make the invention unlikely to be patented/trademarked/copyrighted, and if there is sufficient commercialization potential, OTT and inventors work collaboratively with an intellectual property law firm or an in-house practitioner to pursue protection of the invention by patent, trademark, or copyright.

· The marketing agency reaches out to third-party, potential licensees, business start-ups, or other partners to commercialize the invention.

West Virginia University Invention Disclosure

OTT Use Only
File # / Date Submitted / Date Approved

Title of Invention

Type Here

I. Contributors

Provide information below for each contributor.

Inventor / Inventor / Inventor / Inventor
Name:
Title:
Department:
College or External Affiliation:
Work Phone:
Work E-mail Address:
Home Address (No P.O. Box):
Home Phone:
Citizenship:
% of Contribution

II. Establishment of Discovery History and Public Disclosure

Date
(mm/dd/yyyy) / Brief Description
(who, what, where, when, how)
Invention Conception:
Proof of Concept Established/Experimental Evidence of Invention:
Planned Grant Submission(s):
Planned Contract Submission(s):
First Public Disclosure(s):
Upcoming Public Disclosure(s):

III. Sponsorship

Was the invention conceived or reduced to practice in the performance of the relating to the subject matter of a Governmental Contract? If No, check here:

If Yes, list below.

Sponsor / Grant/Contract Number / PI / WVU Grant ID# / WVU OSP# / Title

IV. Problem Statement

In a few sentences, briefly and clearly state the problem solved by the invention/discovery.

Type here

V. Solution of the problem by your invention/discovery

What have you discovered or invented? How does your invention/discovery address and solve the problem described above? Why is this invention/discovery important and useful?

Type here

VI. Prior Art

Discuss how the problem has been addressed or solved previously. Identify and discuss inadequacies and limitations of previous approaches and/or solutions. Attach results of any literature searches and identify relevant references.

Type here

VII. Advantages of the invention/discovery

How does the invention differ from existing technology? Pick out and expand on all novel and unusual features of this invention. What obstacles associated with prior art does this invention overcome, and what advantages does it possess? List the advantages in a bullet list below.

Type here

VIII. Data and Results

Attach papers or data/results that illustrate or demonstrate the invention, its discovery, and utility.

Type here

IX. Inventor’s Opinion of Commercial Potential

In your opinion, what is the commercial potential of this invention? What kind of product(s) would be sold? Into what market(s)? By what kind of company? How soon?

Type here

X. Materials

Please detail the source of critical materials (cell lines, antibodies, constructs, etc.) used in work to develop this invention.

Type here

XI. State of Development

Yes/No / If Yes, explain in detail
Has the invention been tested, used experimentally, used routinely, offered for sale, or provided to another individual or laboratory?
Has a prototype been made? Materials synthesized or isolated?

XII. Partnership with Non-WVU Individual(s)/Institution(s)

Yes/No / If Yes, provide the name of the institution(s)/ individual(s)
Has the invention been disclosed in an oral presentation or discussed with another individual, collaborator, or interested party?
Will the invention be disclosed in an oral or written presentation or discussed with another individual, collaborator, or interested party within the next 6 months?
Were any materials used in this project provided under the terms of a material transfer agreement, a non-disclosure agreement, an inter-institutional agreement, or other contractual agreement?
Was the invention conceived or reduced to practice under contract with private parties?

XIII. Signature of Inventor(s)

The herein-described invention is submitted pursuant to the provisions of the WVU Intellectual Property Policy.

Printed Name Date Signature

XIV. Name(s) of the Department Chair

Printed Name Department

XV. Name(s) of the College/School Dean

Printed Name College

West Virginia University Research Corporation

Office of Technology Transfer

RECORD OF ASSIGNMENT

WEST VIRGINIA UNIVERSITY

Form may be separately completed by each inventor/creator

WHEREAS,

Name of Inventor/Creator Residence Address (No P.O. Box)

1. ______

2. ______

3. ______

4. ______

(“Assignor(s)”) has/have invented/created certain new and useful intellectual property with a working title of:

TITLE OF INTELLECTUAL PROPERTY

______

which may become the subject of a United States or foreign patent application or any other type of intellectual property protection.

AND WHEREAS WEST VIRGINIA UNIVERSITY, a state institution of higher education existing under the laws of the State of West Virginia (hereinafter called “Assignee”), is desirous of acquiring the entire worldwide right, title, and interest in, to and under said invention/creation and in, to and under Letters Patent or similar legal protection including any intellectual property protections to be obtained therefore in the United States, its territorial possessions, and in any and all foreign countries.

NOW, THEREFORE, in consideration of One ($1.00) Dollar, the Intellectual Property Policy of West Virginia University and/or other good and valuable consideration paid to Assignor(s) by said Assignee, the receipt and sufficiency of all of which Assignor(s) hereby acknowledge(s), Assignor(s) do/does hereby assign, sell, transfer, and set over unto said Assignee, the entire right, title, interest in said intellectual property and improvements for the United States and its territorial possessions and all foreign countries and all divisions, reissues, continuations, continuations-in-part, renewals, and/or extensions thereof including all priority rights under the International Convention associated therewith for each country and the Union, said Assignee to have and to hold the interests herein assigned to the full ends of the terms of said Letters Patent and an and all divisions, reissues, continuations, continuations-in-part, substitutes, renewals, and/or extensions thereof, respectively, as fully and entirely as the same would have been held and enjoyed by Assignor(s) had this assignment not been made.

The Commissioner of Patents and Trademarks is requested to issue such Letters Patent in accordance herewith. Assignor(s) covenant that Assignor(s) is/are the lawful owner(s) of the inventions and improvements disclosed in said invention, that the same are unencumbered, that no license has been granted to make, use, offer for sale, sell or import said inventions or improvements of any of them, and that Assignor(s) has/have the full right to make this assignment.

Assignor(s) hereby covenant(s) with said Assignee, its successors, assigns and legal representatives that I/we have made to others no assignment, grant, mortgage, license, sale or agreement affecting the rights and property conveyed and that we have the full right to convey the same as herein expressed.

And for the consideration aforesaid, Assignor(s) agree(s) jointly and individually that Assignor(s) will communicate to said Assignee or the representatives thereof any facts known to Assignor(s) respecting said inventions and improvements, and will, upon request, but without expense to Assignor(s), testify in any legal proceeding, sign all lawful papers, execute all divisional, reissue, continuation, continuations-in-part, substitutes, renewal, and/or all other patent applications, execute all rightful oaths, and generally do all other and further lawful acts, deemed necessary or expedient by said Assignee or by counsel for said Assignee, to assist or enable said Assignee to obtain and enforce full benefits from the rights and interests herein assigned. This assignment shall be binding upon Assignor(s) heirs, executors, administrators, successors, and/or assigns, and shall inure to the benefit of the heirs, executors, administrative successors and/or assigns, as the case may be, of said Assignee

DATE EXECUTED ______, 20___

______

INVENTOR/CREATOR 1 (printed name) INVENTOR/CREATOR 1 (signature)

State of _____ County of ______

The forgoing instrument was acknowledged before me this ______, 20___ by ______(inventor/creator name).

My commission expires ______, 20___

______

Notary Public (signature) Seal/Stamp

DATE EXECUTED ______, 20___

______

INVENTOR/CREATOR 2 (printed name) INVENTOR/CREATOR 2 (signature)

State of _____ County of ______

The forgoing instrument was acknowledged before me this ______, 20___ by ______(inventor/creator name).

My commission expires ______, 20___

______

Notary Public (signature) Seal/Stamp

DATE EXECUTED ______, 20___

______

INVENTOR/CREATOR 3 (printed name) INVENTOR/CREATOR 3 (signature)

State of _____ County of ______

The forgoing instrument was acknowledged before me this ______, 20___ by ______(inventor/creator name).

My commission expires ______, 20___

______

Notary Public (signature) Seal/Stamp

DATE EXECUTED ______, 20___

______

INVENTOR/CREATOR 4 (printed name) INVENTOR/CREATOR 4 (signature)

State of _____ County of ______

The forgoing instrument was acknowledged before me this ______, 20___ by ______(inventor/creator name).

My commission expires ______, 20___

______

Notary Public (signature) Seal/Stamp