Also known as ‘invention disclosures,’ these questions about disclosing a record of invention (and answers) are frequently asked of UCI Beall Applied Innovation’s Research Translation Group.
The Research Translation Group (RTG) at UCI Beall Applied Innovation receives more than 130 invention disclosures every year that can range from a variety of research, departments and disciplines. An invention disclosure, also known as a record of invention (ROI), is a confidential document written by the inventor that details how the technology is built and how it works to solve a particular problem. RTG also manages patent protection for UCI’s most promising innovations and leverages intellectual property (IP) to enhance research collaborations with industry partners.
Below are some frequently asked questions that UCI faculty, postdocs or graduate students have asked when submitting an ROI:
Q. What is considered a “public disclosure?”
A. Examples of public disclosures include a published paper, like a journal article (online or in print, including conference abstracts) or a presentation or poster at a conference or meeting. If a researcher and/or faculty member publicly discloses the invention, RTG’s ability to obtain patent coverage will be compromised. Filing a patent prior to a public disclosure is the best approach to preserve global rights.
RTG encourages proactive engagement with our office prior to publishing in order to coordinate IP protection with public disclosure.
Q. Who is considered an inventor?
A. Inventors are those individuals that made an intellectual contribution to the conception. Unlike co-authorship on publications, deciding who is an inventor on a patent is a legal determination and not a subjective choice made among participants. Incorrectly specifying inventors can make a patent unenforceable.
Q. Who pays for the patents filed?
A. Securing patent rights is expensive and complex. If RTG selects an invention for patenting, UCI will pay a qualified patent attorney with appropriate expertise to apply for a patent on RTG’s behalf. An issued U.S. patent can cost as much as $20,000‐$40,000 or more to prosecute. Once a startup or established company licenses the invention, RTG will seek reimbursement of these costs from the licensee.
Q. Will I receive a share of income from the licensing of my invention?
A. Royalties and fees received by UCI from licenses are shared with the inventors. It is UC policy that 35 percent of net revenue is distributed to all named inventors.
If you think you have an invention or questions about submitting an ROI, contact a licensing officer at Applied Innovation. You can also check out our FAQ section.
Ronnie Hanecak has over 30 years of experience working in drug discovery within biotechnology startups and in the management of university inventions in addition to more than a decade of academic research experience. She holds a Ph.D. in Microbiology and is UCI Beall Applied Innovation’s Senior Director of Licensing.