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OFFICE OF TECHNOLOGY MANAGEMENT

Instructions for the UCSF Technology Disclosure Form

Instructions for Handling the Form

Note that you cannot submit forms directly over the Internet or via email because your signature is required.

1. Download the form to your desktop: choose "Save As," select "text" format;
2. Open the form using a word processing program.
3. Fill it out.
4. Print it.
5. Sign it.
6. Make a copy for each inventor.
7. Send signed original by campus mail to: Office of Technology Management – Box 1209
Or:  
 a) fax signed document to 415-348-1579 with signed original to follow,
b) send via e-mail to any licensing officer, with signed original to follow

Instructions for Filling Out the Form

1. Provide a title that says, in 10 words or less, what the invention is and what it does.
2. Include material which covers the following points:
  a. Background.
  b. Technical description of invention and its use(s);
  c. Novel features, advantages, and improvements over existing methods, devices, or materials;
  d. Possible variations and modifications that you can imagine; and
  e. Background: related publications or bibliography and related patents (if known).
3. List complete details for each person who contributed to the invention, including any contributors from institutions outside of UCSF.
4. Give the names and full contract or grant number(s) of the sources of funds used to support the work resulting in the invention and provide the name of the investigator(s) named on the contract or grant.
5. Take care to record legally important events of conception (B), the first actual reduction to practice (C), and the establishment of a publication bar (D and E). (A publication bar is established when, for example, you publish, disclose or electronically or otherwise transmit information about the invention to anyone at a conference, in a journal, an abstract, a computer data base, or in a non-confidential seminar.)
6. List any proprietary material that was used in the work that resulted in this invention and that did not originate at UCSF.
7. List companies which you think might be interested in using, developing or marketing this invention.
8. Obtain original signatures from each UCSF employee listed in item 3.
9. Obtain original signatures from two witnesses who have read and understood this completed disclosure form. Any investigator(s) listed in 4 as contract supervisors and/or primary investigators named on grants who are not also contributors listed in 3 must witness the invention disclosure.

If your invention involves two or more inventors, please also print and fill out the Income Distribution Agreement Form.

Send completed forms to:

  UCSF Office of Technology Management
University of California
745 Parnassus Avenue, Box 1209
San Francisco, CA 94143-1209
phone: (415) 502-7537
fax: (415) 502-8248

General Information

A disclosure form must be prepared and submitted for each invention conceived or first actually reduced to practice pursuant to University of California Patent Policy. A disclosure form should be prepared and submitted when something new and useful has been conceived or developed, or when unusual, unexpected, or otherwise non-obvious research results have been achieved that have utility.

An invention is a novel and useful idea relating to processes, machines, manufactures, and compositions of matter. It may cover such things as new or improved devices, circuits, systems, chemical compounds, drugs, etc. To be patentable, the invention must not be obvious to a worker with the average skills in that particular technology. In addition, it must not have been used by others in this country, or patented or described in printed publication anywhere, prior to the date of conception

Please have the written record of the work that resulted in the invention signed and dated by the inventor, and witnessed and dated by a non-inventor scientist. The written record may be lab notebooks, ideas book, correspondence, etc.

The purpose of the disclosure form is to record what was invented and the circumstances under which the invention was made. It provides the basis for a determination of patentability and the data for drafting a patent application. It is a legally important document which should be read carefully before you sign it. Distribution of copies of a disclosure form to third parties is expressly prohibited, however, the technical description provided on the disclosure form is sometimes shared with prospective licensees with a confidentiality agreement.

Although each invention begins as an idea, the inventor should demonstrate feasibility by reducing the idea to practice with experimental data and/or working prototypes. In general, an invention that is prophetic in nature should be further developed by the investigator(s) before it is submitted. The OTM uses material evidence that provides proof-of-concept as a major factor in deciding whether to file a patent application and market the technology for licensing. Senior OTM staff are always available to talk with investigators about their specific cases and advise investigators about the appropriateness and timing of filing a disclosure.

A US patent application must be filed no later than one year after public disclosure. In most other countries, filing must take place before public disclosure.

For more information about patents, copyrights, procedures, and policies, see: UC Policies on Copyrights and Patents, and Working with OTM

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