A policy outlining the process of disclosing and protecting an invention.
An important objective of the Technology Transfer Office (TTO) is to benefit society by enabling the transfer of inventions and knowledge from the academic enterprise to the public. If you believe you have an invention, these guidelines take you through the general process of protecting it. The process is often case specific and requires close interaction between the inventor and TTO.
1. Contact TTO as early as possible so that we can help you through the process of securing proprietary rights to the invention.
2. The inventor(s) completes and submits an invention disclosure with related supporting materials to TTO.
Pending TTO's evaluation of the invention, inventors should not disclose any confidential information pertaining to the invention. Once an invention is disclosed publicly, in oral, visual or written forms (including e-mail or internet posting), foreign patent rights are immediately forfeited, and the clock begins ticking on a 12-month grace period to file in the US. If an inventor must discuss the technology before TTO files a patent application or otherwise concludes its evaluation, the TTO provides Confidentiality Agreements for individual and corporate discussions (potential licensees, sponsors of further research, venture capitalists, etc.). It is important to understand however that there is no such protection of an invention in public forums, such as conferences. On the other hand, a grant application to a federal agency is not considered a public disclosure until it is awarded.
3. TTO reviews the disclosure internally to note any deadlines and/or public disclosures that may impact the invention's patentability. In addition, we review related grant requirements, material transfer agreements, rights of private research sponsors and other ownership issues.
4. After internal review, we will meet with the inventors to review any outstanding questions about the invention disclosure. At that point, the invention is evaluated for patentability according to the U.S. Patent Law.
A prior art search is done to determine whether there are issued patents, published articles or other published information capturing major features of the invention in question. The invention disclosure is also reviewed on the basis of commercial potential.
5. Once we have completed our evaluation, we share results with the inventor and, if necessary, arrange for discussions between the inventor and a patent attorney to be sure that we have captured all aspects and embodiments of the invention.
6. If we decide to file for a patent, we proceed by filing a provisional patent application (place holder for one year) assignable to the Trustees of Dartmouth College and naming all the inventors. TTO will direct the patent prosecution and the costs will be paid by the College. Note: Costs will be recovered from royalty or equity payments.
7. If the inventor wishes to start-up their own company based on the invention, we will work with the inventor and the inventor's representatives to draw up the necessary license and other agreements. Faculty should be aware of the policy about the use of Dartmouth space for start-up ventures.
Also read the policy on acceptance of equity.
8. Once a patent or patent application is licensed, license revenue is distributed in accordance with the Dartmouth College Patent Policy.
9. If the College decides not to proceed with patenting the invention, the title may be released to the inventor(s), subject to the requirements of the sponsor(s) of the research from which the invention arose. TTO facilitates this process. Subsequent to the release, the inventor may pursue patent rights themselves.