Emory Intellectual Property Disclosure Form - Office Of Technology Page 4

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Instructions

The Office of Technology Transfer (OTT) reviews all Emory IP Disclosure Statement Forms as they are received from members of the Emory

community. Where appropriate, the OTT endeavors to license Emory Intellectual Property to industry for further development and commercialization.

Any royalties derived from any such license are shared with the inventor(s) and their departments according to Emory policy. This form notifies the OTT

of your Intellectual Property and any relevant sponsorship, related agreement and publication history.

II.

The following instructions apply to the correspondingly numbered sections in the Form:

Use a brief descriptive title to aid in identifying the Intellectual Property.

Check the appropriate technology box.

In describing the Intellectual Property, attach material which covers the following points:

General purpose

ii.

Technical description, including a list of key words

iii.

Advantages, unusual features and improvements over existing methods, devices or materials. How does the Intellectual Property differ

from the present technology? What problems does it solve or what advantages does it possess?

iv.

Attach sketches, drawings, photographs, or other material that help illustrate the description, if appropriate.

Commercial applications (economic potential, potential uses, indirectly related uses, etc.)

vi.

Please list (and attach) any additional related patents or publications which may be important background reference material in

reviewing the Intellectual Property. If appropriate, please attach an initial patent search related to the Intellectual Property obtained

from searching the USPTO’s website: http:

Include the names of any potential co-inventors including any potential co-inventors at another institution. A co-inventor is an individual who

has conceived or contributed an essential element of the invention, either independently or jointly with others, during the evolution of the

technology concept or reduction to practice. Include the percent contribution to the invention for each Contributor as mutually agreed upon

by all of the Contributors. Mark each check box for any Contributors who also have an appointment with or are employed by the Department

of Veterans Affairs (“VA”), Children’s Healthcare of Atlanta (“CHOA”) or the Georgia Institute of Technology (“Ga. Tech.”). For the VA check

box, include any Contributor who (i) has a dual appointment with the VA, i.e., is employed/salaried by both the VA and Emory); or (ii) has

executed a VA-WOC Appointee Intellectual Property Agreement with the VA in order to conduct research using VA facilities and/or

resources. Name any other institution (university, research institute, company, etc.) the Contributor is affiliated with under “Other Institution”.

List all sources of funding that relate to the creation/development of the Intellectual Property by providing the applicable contract or grant

number(s), the OSP UPN numbers, and the principal investigator on the project(s), including departmental, governmental, industrial and/or

foundation support (e.g., NIH, departmental, Georgia Tech/Emory Center for the Engineering of Living Tissues, other external sponsors).

List all MTAs and other agreements whose Material and/or terms relate to the Intellectual Property.

In the United States, a patent application must be filed no later than one year after public availability of a printed publication disclosing the

invention in detail (use of overheads or blackboards may be considered written disclosures). In other countries, filing must take place before

either oral or printed publication is made available to the public: however, where there has been a U.S. filing before any oral or printed

publication, generally a one year grace period is granted for foreign filing. Complete all parts of section 6 in view of the following:

Conception, in the patent-law sense, involves the formulation, in the mind of the inventor, of the complete means for solving a problem.

The mere recognition of a desirable result, or of a problem, or of a general approach to solving the same, without the formulation of the

physical structure to accomplish that result or to solve the problem, will not suffice to constitute conception.

ii.

The term “first publication” means the first time any member of the general public (those outside the Emory community), without

restriction of confidentiality, would have been able to legally gain access to your written or printed enabling description of the invention.

iii.

“First public oral disclosure” means the same as 7ii, but only as to oral presentation to the general public (those presented to individuals

outside the Emory community).

iv.

The anticipated date of publication, (as described in 7ii above), should be entered here, as well as the date any documentation was

submitted for review for possible publication.

Reduction to practice, according to patent law, involved actual and complete use of the invention for its intended purpose. Such reduction to

practice generally involves physical construction of the invention and testing the physical embodiment to determine whether it performs as

contemplated, but this is not always necessary if the invention can be fully described.

A list of commercial entities that may be interested in the invention will assist the OTT in identifying potential licenses for the technology.

Please include names and addresses of specific contacts if known.

10. Your lab books and/or other records relating to this Intellectual Property should be witnessed by a person who has read and understood your

disclosure. It is recommended that this form also be witnessed. If the principal investigator is not an inventor/author, he or she is often the best

witness.

III.

What is a utility patent?

A utility patent is a grant issued by the United States (or other foreign countries) which gives the owner of the patent the right to exclude others from making,

using, or selling the invention claimed in the patent within the jurisdiction of the country for the term of the patent (typically 20 years from the date the utility

patent application is filed). A patent document typically includes a specification, drawings, and claims. The claims are an important component of a patent

because they describe the scope of the patent holder's exclusionary rights. The purpose of the specification and drawings is to fully disclose and enable the

invention to the public upon issuance of the patent. US Patent applications are filed with the U.S. Patent and Trademark Office (USPTO), which office

assigns applications to different “art units.” The patent examiner, who is assigned to each application, reviews the application to determine if the invention

meets the legal criteria for patentability. The time and effort required for the prosecution of a patent application depends on the nature of the art claimed in the

application and the complexity of the invention. In general, it is more difficult and time consuming to obtain patents in the chemical and biotechnology arts

than in the mechanical arts. Also, more data is typically required to support patent applications in the chemical or biotechnology arts.

IV.

Criteria For Patentability (in addition to full disclosure and enablement of the invention)

Novelty: The invention must be different from the prior art. It cannot be described in a single reference, such as a patent or article which, for

US applications, was published more than one year from the filing date of the patent application. In addition, the invention cannot have been

publicly used or offered for sale more than one year from the filing date of the application. It should be noted that any publication of an

invention bars patentability in most foreign countries. In accordance with provisions of the Patent Cooperation Treaty (PCT), an applicant is

entitled to claim priority to their U.S. filing date in foreign applications. So long as a U.S. application is on file prior to publication, foreign patent

rights may be preserved by filing a PCT application within one year of the U.S. application.

Non-Obvious: The invention cannot be obvious to a person of ordinary skill in the art. A patent examiner may combine several references in

attempting to establish that the claimed invention is obvious and therefore not entitled to patent protection.

Utility: The invention must be useful.

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Revised 04/10/2013