Innovation Disclosure, Assessments and Protections Decisions

Innovation Disclosure

Innovation disclosure covers creative works such as inventions, software, and copyrights. There are different forms for each type of disclosure.

  1. Invention disclosure
  2. Software disclosure
  3. Copyright disclosure
  4. Research tools/Tangible research property

Disclosure is available through the attached forms or via online reporting tools.

Innovation Protection Assessment Process
    1. TTO receipt of a disclosure initiates internal file creations and review of the innovation process
    2. Creator meeting with TTO for innovation review and confirmation of innovation understanding
    3. TTO assessments assist the TTO in identifying risks and marketability. Scoring is evaluated in the following areas:

      • Patentability – prior art, public disclosure, bar dates, practical use, technical development feasibility
      • Sponsorship – funding secured, resources used, ownership clarification
      • Market opportunities – need, competitiveness, market size, regulatory hurdles, etc. A commercially valuable innovation may have these characteristics: wide use, present a significant improvement over current methods or properties (e.g.. tenfold or more)
      • Further development timelines, resources needed, etc.

    4. Recommendations are then made to the Vice President for Research and Innovation Partnerships regarding protections Note: Decisions to file for protections are based on university business decisions, not scientific merit decisions.
Innovation Protections

Protection decisions for university-owned IP are made by the Technology Transfer Office with the approval of the Vice President for Research & Innovation Partnerships. Information regarding uses, markets, potential development costs and commercialization partners will be sought from the inventors and other interested parties to inform the decision process. Protection decisions include

      • Types of protections such as patent, trademark or copyright.
      • Geographies of protections sought.

Generally, the Technology Transfer Office uses external patent law firms to assure access to specialists in diverse technology areas for protection drafting and applications.

Pursuit and prosecution of protections

It is common for protection filings under review by the registration/patenting offices to incur rejections, amendments, revisions and responses. These actions will be managed, monitored and reviewed by the Technology Transfer Office. The Technology Transfer Office with the approval of the Vice President of Research and Innovation Partnerships determines what actions, if any, will be carried out.

Maintenance of Protections

Protections that have been legally granted often require payments to maintain the protection in the form of annuities or fees whose value and timing vary depending on the type of protection and issuing country. These protections will be periodically reviewed by the Technology Transfer Office to assess whether maintenance will continue. Abandonment of maintenance will need the approval of the Vice President for Research and Innovation Partnerships.

Contact Us

Elizabeth R. Gaillard, Ph.D.
Lab Director and Professor, Chemistry and Biochemistry 
gaillard@niu.edu 

Michael Vega, Ph.D.
Lab Manager
mvega5@niu.edu 

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