Technology Disclosure FAQs

Have a question?  Here you’ll find the answers to the most asked questions regarding technology disclosures.

Vanderbilt faculty, staff and students should disclose to CTTC any new technologies and discoveries that they believe to have commercial value or could otherwise benefit the public. There are many different motivations for disclosing new technologies – public good, personal financial gain, potential for future research collaborations, and to fulfill sponsor obligations, among others. Please see our more detailed explanation here.
New technologies and inventions arising from VUMC personnel as well as Vanderbilt University personnel are governed by The Policy on Technology and Literary and Artistic Works. VUMC personnel use the same process as University personnel and the services will continue to be provided by the Center for Technology Transfer and Commercialization (CTTC).
There are many potential benefits to you personally in working with CTTC to commercialize your technology. Commercialization of your technology is a tangible way to achieve recognition of your scientific discovery, and marketing your technology can increase your research opportunities via collaborations and strategic partnerships. But there is also the potential for significant personal income resulting from licensing. Vanderbilt’s Technology Policy is among the most generous of any U.S. university, providing for roughly half of all income to be shared by the inventors.
It’s never too early to engage our office. If you have a question about whether you should or should not disclose, we are always available to come meet with you to discuss your research and the process. This can lead to a decision that it is time to disclose, or that you should continue developing your concept a bit further. All licensing officers have a scientific background and enjoy learning about cutting-edge research. Our office is happy to work with you to learn more about your technology whenever you are ready to disclose it to us. However, it is important to consider disclosing your technology prior to any form of publication or other public disclosure of the technology. Any such public disclosures prior to submitting a patent application may cause the immediate loss of certain patent rights. The earlier you can discuss your technology with us, the better, and CTTC can work with you to determine the best time in which to start the patenting and commercialization process.
How do I know which disclosure form to use? There are four different disclosure forms that cover various types of intellectual property, and each form differs based on the type of information needed for CTTC to evaluate the technology and to fulfill any necessary contractual requirements. The Invention Disclosure form is used for any potentially patentable innovation such as new processes, pharmaceuticals, devices and systems. The Software disclosure form and Creative Works disclosure form both apply to copyrightable material and are fairly self-explanatory. For Research Tools - often a plasmid, mouse model, cell line, or other common tool used in the lab – we have our concise Tangible Materials form. The final form is the most used form, the Invention Disclosure form. This is for any potentially patentable innovation. More information about each of these forms can be found on our technology disclosure resources page, including a short video.
In general, a public disclosure is any presentation, publication, abstract, or other public display or talk about the technology that is “enabling” – that is, described in sufficient detail such that a person having ordinary skill in the art would be able to make and use the technology without undue experimentation – and is generally available to the public. However, presentation to any non-Vanderbilt party, including invited speaking events at companies may also constitute “public disclosure”, unless that disclosure is protected by a confidentiality agreement signed in advance by Vanderbilt and the company. Contact our office for assistance if you plan to disclose previously unpublished, and potentially patentable, information at this sort of venue.
General discussions about your technology area or research interests are not typically enabling and are not likely to be considered a public disclosure of any patentable technology. Describing what objective your technology achieves can often be non-enabling provided that you don’t reveal all of the steps of your method or elements of your device, but the fewer specifics the better.
Public disclosures of patentable technologies will result in the immediate loss of any potential patent rights in most counties outside of the U.S. if the technology is not already covered by some form of patent application. U.S. patent law allows for a 12 month “grace period” for inventors to file patent applications on their inventions after public disclosure.
Shortly after you disclose, you will receive an email confirming our receipt of the technology disclosure including which Licensing Officer has been assigned your technology. The Licensing Officer will contact you within two business days shortly thereafter the commercialization process will begin. To learn more about the commercialization process, follow this link.
At the very least, you should include the names of anyone working on the technology who might possibly be considered an inventor (although a patent attorney will make the legal determination as to whom should be listed on the patent). However, Vanderbilt Technology Policy allows for the sharing of royalties with anyone making a significant contribution to the conception and/or development of the technology, so others who contributed to the development of the technology (such as technicians, staff biologists, etc.) may be included on the disclosure in order to share royalties (though they may not be listed on the final patent application). All named inventors must be included in the royalty sharing agreement portion of the disclosure, but non-inventor contributors may be added upon agreement of all inventors.
Inventorship is a legal determination. An invention is complete following conception of an idea and reduction to practice. However, inventorship is assigned to whoever conceives of the idea, not by whoever merely reduces it to practice. In contrast, authorship is more often determined by contribution and a general agreement by those involved in its drafting, rather than by any legal statutes. Being listed as an author on a paper does not necessarily lead to being a named inventor on the patent application for the technology described by that paper. A case in point, a PI conceives of a new rocket ship. The graduate student who first assembles that rocket ship following guidance/instruction from the PI is not an inventor. Both may be listed on the publication describing the work to acknowledge the different contributions, but only the PI would be listed on the patent.
Like virtually all other U.S. universities, Vanderbilt’s IP policy provides that the contributors agree on the revenue split at the time of the submission of the technology disclosure in order to help accurately capture the relative contributions of each contributor. It can take many years to license a technology and many of your co-inventors (especially students and post-docs) may have moved on to other institutions and may be hard to reach if you wait until later to decide on royalty sharing. Also, each contributor’s memory of the creation of the technology may have faded by then, and disputes are always more likely with the passage of time, especially if there is money on the table to distribute. Revenue from technologies are intended to reward past contributions that led to the creation of the invention, not future work towards development or advanced versions of the technology, so securing sharing percentages at the time of disclosure is best.
All individuals with a VA appointment, regardless of whether they receive compensation from the VA, have an obligation as federal employees to report their technologies to the VA. This is true even if few or no VA resources are used to make the technology. In such cases the VA makes a formal determination as to whether it has any ownership in the technology.
This information is critical for CTTC’s purpose, as we must coordinate with the VA regarding the patenting and licensing of jointly owned technologies. Furthermore, as a courtesy, we will send inventors who indicate a VA appointment instruction on how to report the technology to the VA.
Like all US employers responsible for carrying out research, including universities, Vanderbilt owns technologies made by its employees while acting within the scope of their employment or using University resources. Vanderbilt policy for ownership of technologies (Policy on Technology and Literary and Artistic Works) can be found in the Faculty Manual. In addition, ownership by Vanderbilt is necessary for federally-funded technologies in order for Vanderbilt to fulfill its requirements under U.S. patent law, as well as for compliance with provisions of contracts with government entities, foundations and industry sponsors.
There are several reasons for needing funding information. Under the U.S. Patent Law, universities are required to report technologies arising out of federally funded research, and CTTC fulfills these reporting requirements for Vanderbilt. If you plan to report technologies on your grant renewals and grant close-out reports, it is essential for the technologies you report to match those that CTTC has reported. Also, if you have made a technology under a foundation grant or industry sponsored research contract, CTTC needs to be aware of any contractual restrictions or obligations on your technology as a result, so we may fulfill such obligations. best.
A proof-of-concept or a prototype is not necessary for a patent application. Under US patent law, “reduction to practice” is a concept referring to embodiments of the technology. These embodiments can be an actual reduction to practice (such as a prototype/proof-of-concept) or a “constructive” reduction to practice, which occurs upon filing of a complete patent application (without necessarily an actual prototype in place). However, building a prototype can help troubleshoot the technology, identify unanticipated problems, demonstrate efficacy, and therefore make it a lot more attractive to potential licensees.
In most cases, if after evaluating your technology for patentability and marketability, CTTC decides that continued pursuit of patent protection by Vanderbilt is not warranted, you will have the option to take ownership of your technology in order to allow you, at your expense, to continue prosecution of patent rights and commercialization of the technology on your own. This will most often occur within one year after the filing of a provisional patent application, but rights could be offered back to you at any time during prosecution or after issuance of the patent. For federally-funded technologies, such assignment of rights from Vanderbilt to the inventors must be approved by the funding agency. If allowed, CTTC has a standard set of terms, developed in conjunction with the Faculty Advisory Committee, for the assignment.
Vanderbilt University via CTTC pays for the drafting, filing, prosecuting and maintaining of patents and patent applications. Once your technology is licensed, in most cases the licensee will pay all patenting costs, and may reimburse Vanderbilt for past patenting costs incurred for the licensed technologies. If not reimbursed by the licensee, Vanderbilt Technology Policy provides that such unreimbursed costs be deducted from licensing revenues before distributing those revenues to inventors.
The short answer is no.
Vanderbilt University’s main purpose is to carry out its mission of teaching and research which includes disseminating the results of those endeavors via publication. CTTC will never impede a publication with the patent process. However, if you want patent protection world-wide, a patent application must be filed before you publish or otherwise publicly disclose your technology. In this case, we strongly suggest that you contact CTTC before a publication occurs. We can generally file a patent application prior to your publication date to ensure that any intellectual property will be protected before the public disclosure and no commercial value will be lost.
If you are a Vanderbilt employee and the technology is under your scope of employment, or if you use Vanderbilt resources for the technology, then you must disclose. Undergraduate students who have not used Vanderbilt resources are not required to disclose, however we are here to help if you have further questions about protection of your technology or commercialization. Even if the technology is not owned by Vanderbilt by default, students may choose to assign the rights to their technology to Vanderbilt in order to enable CTTC to protect and commercialize the technology. In such cases, the student will be treated as any other Vanderbilt inventor and will receive a share of royalties in accordance with the policy.
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