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Submitting a Disclosure

How do I determine whether my collaborator or student should be listed as an inventor on a patent or intellectual property?


Under U.S. law, inventorship is determined by who contributed to the actual conception of the invention or an essential element of it. This means only individuals who provide a creative, inventive contribution to the patent claims qualify as inventors.

It’s important to note that factors such as funding, supervision, or project management do not determine inventorship. Misidentifying inventors can jeopardize patent rights and lead to legal disputes; therefore, accuracy is crucial.

 

Checklist to determine an inventor from a contributor

An individual IS an inventor if they:

✅ Contributed to the actual conception of the invention (the core idea or an essential element).

✅ Provided creative, inventive input that is reflected in the patent claims.

✅ Helped solve a problem in a way that became part of the invention’s design or function.

 

An individual is NOT an inventor if they only:

❌ Provided funding for the project.

❌ Supervised or managed the research team.

❌ Collected data or performed experiments without contributing to the inventive concept.

❌ Offered general feedback or administrative support.

❌ Listed as a collaborator or author on a manuscript.

What’s the difference between an “inventor” and a “creator”?

An inventor is the person(s) who conceives a novel idea, technical, functional solution, or process that is claimed in a patent. Inventors are listed in utility patents, design patents, and trade secrets. (e.g. A faculty member who develops a new chemical compound and defines its unique properties).

A creator is anyone who contributes to the development or expression of the work, which could include inventions, designs, software, or creative works. The creator is NOT always an inventor. A creator can help build prototypes, write code, or design experiments, but did not conceive the inventive concept. Not legally required to be named on patents unless they meet the inventor criteria. (e.g. A graduate student or technician who builds a prototype based on their faculty advisor’s instructions).

What steps should I take before meeting with a company and/or presenting at a conference?

Before sharing your idea publicly, reach out to the Innovation & Commercialization team. They can help you protect your idea and guide you through the process. If you’re meeting with a company, make sure a non-disclosure agreement (NDA) is in place first. This agreement keeps your information confidential and prevents accidental disclosures.

Checklist Before Meeting with a company or presenting at a conference: 

Avoid Public Disclosure Until Protected
  • Contact the Innovation & Commercialization team before you share your idea publicly, present at a conference, or publish any details (dissertation, manuscript, poster, etc.)
  • We’ll help you protect your idea and guide you through the inventor process.
Check for Confidentiality and ask for an NDA
  • If you’re meeting with a company, ask for a Non-Disclosure Agreement (NDA).
  • An NDA keeps your information private and prevents accidental disclosures.
Prepare Your Materials Carefully
  • Share only what’s necessary.
  • Keep sensitive details out of slides or handouts unless covered by an NDA.
What is a Non-disclosure Agreement (NDA)?

An NDA is a legally binding contract between UNT and an external partner/company. It restricts how confidential information can be used or shared, and establishes how long the confidentiality must be maintained.  contractual agreement that provides confidentiality.

Does submitting an invention disclosure mean that a patent application is automatically filed?

No. Submitting an invention disclosure initiates our review process, but it does not guarantee that UNT will decide to file a patent application.

When should I disclose my invention to UNT?

As early as possible, and any time you have something new that could be interesting. Ideally, submit the disclosure before any public disclosure or publication.

What if my disclosure has non-UNT inventors?

UNT will need to be notified and work with co-owners and their respective employers. We require the same information about each listed inventor regardless of their non-UNT status.

 

Patents & Patent Prosecution

When should I disclose my invention to UNT?

As early as possible, and at any time you have something new that could be interesting. Our office is always happy to meet with you to learn more and find a path forward. Ideally, we recommend you submit your invention disclosure before any public disclosure (publication, presentation, talk, etc.).

What is the difference between a provisional patent application and a non-provisional patent application?

A provisional patent application establishes an early filing date and allows you to use “patent pending” status. Valid for 12 months and is not examined by USPTO. The provisional application allows inventors time to refine the invention, seek funding, and identify commercialization needs. Provisional patent applications are less expensive and simpler to prepare. Provisional patent applications must be converted into a non-provisional application to start the patent examination process.

A non-provisional patent application starts the formal patent examination process that includes claims, drawings, and full specifications. It is reviewed for patentability by the USPTO. Non-provisional patent applications are expensive and more complex.

How long does the patent process take?

The USPTO patent process overall can take up to 3 years from the non-provisional. More complex patents can take longer.

What is an office action?

An office action (OA) is the USPTO’s initial examination of a pending patent. The university will typically receive the first OA within 1-2 years after filing the non-provisional application. There are three types of office actions: 1) non-final office actions; 2) priority office actions; and 3) final office actions.

What is prior art?

Prior art is defined as any publications, patents, public documents, presentations, dissertations, manuscripts, discussions, etc.

How does the USPTO determine patentability?

The USPTO determines patentability based on several requirements under U.S. law. This list is not exhaustive but includes the most common criteria.

Utility (Usefulness)

The invention has specific, substantial, and credible utility. It cannot be frivolous or inoperable.

Novelty (35 U.S.C. §102)
The invention must be new and not previously disclosed in any prior art (publications, patents, public use, etc)
Non-obviousness (35 U.S.C. §103)
The invention must not be an obvious improvement to someone skilled in the art or your industry.
Proper Inventorship
All true inventors must be named.
Adequate Disclosure (35 U.S.C. §112)
The patent application must enable others skilled in the art to make and use the invention. You must provide a written description of the invention and clearly define the invention in the claims.
What is a PCT?

A PCT patent refers to an application filed under an international treaty, the Patent Cooperation Treaty (PCT). The PCT establishes a cost-effective means for companies to seek protection for inventions in multiple countries.

What is a priority date?

A priority date is the earliest date an invention’s disclosure is considered your earliest-filed patent application for an invention. This will often be the provisional application.

What is a filing date?

A filing date is the physical submission date when you submit a patent application.

What is the first-to-file patent system?

The first inventor who files a patent application for an invention with the USPTO will receive priority over all other applicants for that patent. Don’t let someone else patent your invention; reach out to the UNT Innovation and Commercialization team before publicly disclosing your idea.