“Excuse me, can you repeat that? What does that mean?” Part II

“Excuse me, can you repeat that? What does that mean?” Part II

Mar 24, 2014
Stock photo of the word 'disclosure'

We are regularly reminded that acronyms and terms that are used at UNH and more specifically within UNHInnovation (UNHI) and in other technology transfer offices are not everyday phrases. Thus, the need arose for a continued discussion of these terms, as seen in UNHI’s December 10, 2013 blog post. The focus of this posting is to again look at some more general terms that are regularly used and more specifically, why they are used.

Obligation to Disclose. In this entry we are discussing Disclosure Forms. Under the Bayh-Dole Act of 1980, intellectual property arising from federal government-funded research is required to be disclosed. This allows for the university, small business, and non-profit institution (party receiving the disclosure) to take title in the intellectual property. Here at UNH, faculty, staff, and students receiving federal funding for their research are required to disclose to UNHI under the Bayh-Dole Act and under the UNH Intellectual Property Policy that is acknowledged when a proposal for funding is submitted. Please note that intellectual property is broadly defined and includes patentable inventions, software, and non-software copyrights.

Disclosure Forms: UNHI has developed four different disclosure forms that allow UNH faculty, staff, and students to inform our office of the outcome of their research. Traditionally, technology transfer offices only had one disclosure form for patentable inventions. Because there is so much more than patentable inventions that are developed from UNH researchers, UNHI created innovation-specific disclosure forms.

The Innovation Disclosure Form is meant for researchers who have developed a tangible product or believe that their research can lead to a tangible and potentially patentable widget. A Patent is a type of intellectual property right granting an exclusive right by the government to an inventor, and protects an invention or process that is novel, non-obvious, and useful.

The Copyright Disclosure Form is meant for non-software copyrightable works. A separate Software Disclosure Form is meant for software that is developed at UNH. A Copyrightable work can be a published or unpublished literary, scientific and/or artistic work that is placed into a form of expression, provided that the work is fixed in a tangible or material form. UNHI has worked with a wide range of Copyrightable works developed by UNH innovators, including test tools, musical compositions, and curricula.

The Trademark Disclosure Form is meant for trademarks developed in relation to the outcome of research. A Trademark is a word, logo, phrase, sound, or image that identifies and distinguishes a specific product or service from others in the marketplace. For example, the UNH trademark, Bringing in the Bystander®, is federally registered for educational services related to ending sexual assault, relationship violence, and stalking.

Once an innovator(s) completes one of the above discussed disclosure forms, a licensing manager at UNHI reviews the form, looking for a number of different things, including but not limited to: protectable intellectual property, marketability, commercialization, and grant-related funding requirements. After meeting with the innovator(s), the licensing manager develops an overall project plan based on the information he/she has from the disclosure form, meeting with the innovator(s), and research completed on what is disclosed. The project plan is then shared with the innovator(s) and they work together to determine next steps in terms of licensing, intellectual property management, etc.

Project plans are often different, depending on factors such as the type of innovation, stage of development, who is interested in the innovation, and the appropriate way to bring the innovation to a larger audience.

If you have any questions about disclosure forms, the process described above, the intellectual property terms used, or anything else that UNHI can assist you with, please contact one of the UNHI licensing managers:

Maria Emanuel at maria.emanuel@unh.edu or (603)862-4377 for College of Life Sciences and Agriculture (to include the Thompson School), Paul College, and UNH Manchester

Tim Willis at timothy.willis@unh.edu or (603)862-0948 for College of Health and Human Services, College of Liberal Arts, Cooperative Extension, and the Institute on Disability

Tristan Carrier at tristan.carrier@unh.edu or (603)862-2022 for College of Engineering and Physical Sciences (to include CCOM, EOS, & Marine School) and the InterOperability Laboratory

Stay tuned for discussions of other terms in future blog posts, including:  MOU, IIA, IP Rights Agreement, License Agreement, Provisional Patent, Utility Patent, Design Patent, PCT, intent to use, use, and other Trademark-specific lingo that often causes confusion. For questions about this blog post, please contact me at timothy.willis@unh.edu.


Photo Credit: http://foi-privacy.blogspot.com/2010/11/many-nsw-disclosure-logs-yet-to.html

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