The University of Texas at El Paso s1

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The University of Texas at El Paso s1

FOR OTT ONLY: UTEP #: ___ - ______THE UNIVERSITY OF TEXAS AT EL PASO Received: ______Invention Disclosure Form

I. Inventor Information An inventor is someone who contributes to the creation of an invention or its reduction to practice. This includes anyone who contributes to the mental development of the complete invention and/or to the methods of carrying the mental concept to the final invention. lnventorship is not the same as authorship. Care must be taken before designating contributors as co-inventors. They must have played a fundamental part in the conception of the invention. Generally, this means that technicians or students who assisted in experiments under the direction of investigator may not be co-inventors. Please note that inventorship is a legal issue which will be analyzed by inside and/or outside patent counsel should a patent application be filed. Thus, designation or non-designation of someone as an “inventor” by you does not entitle or disentitle that individual of their status or an inventor.

I/we hereby agree to cooperate with UTEP in the protection of this invention. If a patent application for the invention disclosed above is filed, I/we will be required to execute an oath or declaration affirming that I/we am/are the original and first inventor(s) of the subject matter claimed in the application. I/we confirm that the subject matter disclosed herein is original to me/us and that I/we am/are the sole contributor(s) to the creation of this invention and/or its reduction to practice. I/we further agree to cooperate with UTEP in the commercialization of this invention.

Contributor’s Name (Lead) Contributor’s Name Contributor’s Name

Title Title Title

Department Department Department

Campus Address Campus Address Campus Address

Phone Phone Phone

Home Address (City, State, Zip) Home Address (City, State, Zip) Home Address (City, State, Zip)

Citizenship Citizenship Citizenship

Email Address Email Address Email Address ______Contributor’s Signature Date Contributor’s Signature Date Contributor’s Signature Date

Lead Contributor’s Department Chair Signature: Date:

College Dean Signature: Date:

Send this electronic document and any attachments to [email protected]

Signed hard-copy originals must be sent to: Technology Transfer, Office of Research and Sponsored Projects Administration Building, Room 209

UTEP Oct 2010 I. Invention The U.S. Patent and Trademark Office, http://www.uspto.gov, defines an invention as any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, which, taken together, include practically everything that is made by man. 1. Title of Invention:

2. Non-Confidential Abstract (Summary results and data may be included, but materials and methods should be omitted):

3. Key Words (An abstract of the invention may be posted online in a searchable database. Provide key words that will help interested parties find the invention):

4. Confidential Description of the Invention – Describe the invention completely. Include materials and methods, sketches, drawings, and photographs as appropriate. Provide key data and experimental results. If available, attach a draft manuscript (Space below allows for copy and paste or you may attach this information separately):

5. Evidence for Patentability – The criteria for a U.S. patent are novelty, non-obviousness, and utility. Indicate below evidence for each criterion: NOVELTY. How does the invention improve what has already been described in the scientific or patent literature? Attach copies of key publications (including your own), patents, and patent applications that demonstrate the progression of technology that led to your invention, as well as the features of your invention that improve on the state-of-the-art.

NON-OBVIOUSNESS. What makes your invention new and unexpected? Why was your invention not obvious, at the time the invention was made, to a person skilled in the art?

UTILITY. What problem does the invention solve? How does the invention fit into current practice, use, diagnosis or therapy? Who might find the invention useful, and be willing to pay for it, and why?

6. Stage of Development – Provide evidence for the conception of the invention including the date, such as copies of original notebook pages, reports, charts, notes, and electronic media. Ensure that original records are signed, dated, and witnessed and kept in a secure location. To what extent has the invention been reduced to practice? Has the invention been sufficiently tested to demonstrate that it will work for its intended purpose? Attach data. What further work is needed to develop the invention?

7. Commercialization – What companies might be interested in manufacturing or selling the invention, and why? Do you have personal contacts with such companies? If so, provide contact information. Does other technology provide similar utility? If so, what practical or competitive advantage does the invention offer?

III. Public Disclosure Public disclosure prior to filing a patent application (a presentation, a published paper, a web publication or abstract, or an offer for sale) may compromise patent rights. After public disclosure, U.S. patent law provides a one-year grace period in which to file but essentially all foreign rights are lost. Inventors are urged to use discretion, take advantage of Non-Disclosure Agreements and submit IDFs well in advance of presentations or publications. Please contact Office of Technology Transfer for assistance. 1. Has the invention been disclosed in an abstract, paper, grant application, talk, news story, thesis, or public conversation? YES NO If YES, please list with details and enclose copies, if available. UTEP Oct 2010

2. Is a publication or other disclosure planned in the next six months? YES NO If YES, please list with details and enclose copies, if available.

3. Have you spoken about the invention to persons outside the university? YES NO If YES, please describe the circumstances, dates, and extent of the disclosure.

4. Have technical materials or items related to the invention such as chemical compounds, reagents, antibodies, biologicals, cell lines, chips, or software, ever been sent to or received from another organization? YES NO If YES, provide details (what was transferred, date, and the originating or receiving organization).

5. In reference to SECTION III. Item 4. above, were the materials transferred under a Materials Transfer Agreement (MTA)? YES NO If YES, please attach a copy.

III. Sponsorship Sponsors often have certain rights to inventions discovered through funded research. The Office of Technology Transfer will contact and notify the sponsor, if necessary. *DO NOT LEAVE THIS SECTION BLANK* 1. Was the development of the invention aided in any way by a grant or contract? YES NO - - Sponsor Contract/Grant # Principal Investigator UTEP acct.# - - Sponsor Contract/Grant # Principal Investigator UTEP acct.# - - Sponsor Contract/Grant # Principal Investigator UTEP acct.# Any other sponsors not listed here? YES NO 2. Has the invention been disclosed to government or industry sponsors? YES NO If YES, please provide details, including the dates and names of organizations and their representatives.

3. During the past three (3) years have any of the Inventors had a consulting agreement related in any way to the field of the invention or with the sponsor of the research? YES NO If YES, please provide details, including a copy of the consulting contract and statement of work.

IV. Conflict of Interest Conflicts of interest may arise when an employee participates in the business of or has a financial interest in a company that conducts business with the university in the area of the faculty member's responsibilities. This may happen in corporate sponsorship for research and in technology transfer. 1. Have all the employees listed in section I. Inventors filed annual Conflict of Interest (COI) disclosures or amendments, for the current financial year as required by university policy? YES NO

UTEP Oct 2010

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