CHILDREN’S HOSPITAL MEDICAL CENTER OF AKRON

INVENTION DISCLOSURE FORM

Please complete this Invention Disclosure Form as completely as possible. It is important to provide as much information as possible to facilitate the review, analysis and protection of your invention. Though certain signatures are required for processing, sending an electronic copy of the disclosure to helps facilitate processing efforts.

This is a confidential, proprietary, non-public document. Except with respect to obligations to the sponsor(s) of your research, its contents will not be communicated in any way outside of CHMCA.

Send the completed, signed form and all attachments via internal mail toIP Administrator,Rebecca D. Considine Research Institute.

For Internal Use by CHMCA:

Date Received:
CHMCA Case Number:

TITLE OF INVENTION

DATE OF INVENTION (earliest conception date)

INVENTOR DETAILS

List all persons who have directly contributed in developing or conceiving the invention (including students, fellows, residents, post-doctoral associates, clinicians, scientists, non-CHMCA personnel, etc.). All individuals who have made any inventive contribution must be listed in order for a valid patent to be filed.

Total number of inventors _____

List of inventors (use a separate sheet if more space is required):

Name / Title, Department, Affiliation and Dept. Chair (if applicable)

INVENTION DETAILS

Please describe the invention in as much detail as possible (please be sure to attach any drawings, diagrams, photographs, lab book sheets, or other material that will help us understand the invention and its use). If a device or other product, describe the elements of the product; if a method, describe each step of the method. Please note any variants or different embodiments of the invention, so that we can seek broad protection. Please see a summary of questions we seek to answer during the initial processing of an invention in Appendix A.

What are the immediate and/or future applications of the invention, and what problem does it solve?

What are the advantages of the invention over other current/anticipated technologies? Be concise, specific, and comprehensive.

DEVELOPMENT OF INVENTION

Please describe the current state of development of the technology.

Has the invention been reduced to practice? Does a prototype exist? Is there experimental data supporting the invention? Please describe developmental milestones that are expected to be reached within 18 months, and whether you have access to the necessary tooling, expertise or other needed resources

Is there funding available for the next 18 months? If so, please identify the source of funding. If not, please estimate amount of funding needed, and use.

TAXONOMY

What research / clinical / business area(s) is the invention in? (eg. Imaging, Cancer, Orthopedics, etc.)

Select one or more invention types that best characterizes your invention:

Device
Technique/Method
Software
Reagent
Diagnostic
Therapeutic
Other

THIRD PARTY INVOLVEMENT

CHMCA is required to report inventions made using government funds to the relevant government agency, including providing them with a confidential copy of the disclosure. If an invention is made using industry or foundation funds, we will be obligated to report such inventions to the sponsor, in accordance with the associated research grant/contract. Please identify the sponsor of the work resulting in the invention, as well as the relevant grant/contract numbers.

Please list any agreements that are in place or are being processed or drafted that might be related to the technology, such as Materials Transfer Agreements, Consulting Agreements, Confidentiality Agreements, Sponsored Research Agreements, and Fee-for-Service Agreements. Please include company/institution name and agreement date. It is critical to identify any encumbrance on the technology as early as possible.

MARKETABILITY

Please describe competing technologies or procedures (include names of products, software components, manufacturers, methods, etc.) and their deficiencies, as well as those making or selling such products.

If the device is to be used for a clinical procedure, please estimate the current cost and volume (per month or per year) of the procedure at CHMCA. If there is a cost savings or increase in procedure volume (or similar benefit), please attempt to quantify here.

Please list any industry contact(s) that may be interested in licensing or sponsoring future research (include name, company/affiliation, title, phone/email information).

PUBLICATIONS AND PRIOR ART

Please list the titles and dates of relevant publication(s) made by you or colleagues related to the invention – including publication on websites, or publication of abstracts or poster presentations, and presentations at conferences. Please attach copies of published or submitted versions. Valid patent protection depends on accurate dates of public disclosure.

Please list dates of all disclosures (whether verbal, written or electronic) you have made to individuals or entities NOT employed by CHMCA, and identify the recipients of such disclosures. Please include informal discussions either held on or off CHMCA premises (please indicate if a Confidentiality Agreement was in place or if an agreement is needed for upcoming discussions).

Please list any literature and/or patent searches done by the inventors or other individuals or entities conducting research/development in the field related to this invention (patents can be searched at and ep.espacenet.com).

Please identify Key Words used for the searches.

Please list any publications of third parties that are similar to the invention, or disclose elements of the invention, and that therefore may be relevant prior art.

Please list prominent individuals or researchers in this field (including any CHMCA employees).

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AGREEMENT

The following information will be used for assessment purposes and potential patent applications and revenue distribution. Please note that % Contribution indicates the percentage that each inventor should receive from the inventor share of the commercialization revenue. If unspecified on this document, all inventors will equally share all such revenue. Individuals contributing to the invention should discuss and agree on the distribution of commercialization income before submitting an Invention Disclosure Form.

CHMCA Personnel: By signing below, I acknowledge that I have read, understood, and hereby agree to the policies and procedures outlined in the CHMCA Intellectual Property and Commercialization Policy as amended from time to time. The current version of the CHMCA Intellectual Property policy can be found at url..

Inventor 1:

Full Name
CHMCA Employee number: / Birth Month / Day:
Country of Citizenship: / % Contribution:
Home address:
Email address: / Phone:
Signature: / Date:

Inventor 2:

Full Name
CHMCA Employee number: / Birth Month / Day:
Country of Citizenship: / % Contribution:
Home address:
Email address: / Phone:
Signature: / Date:

Inventor 3:

Full Name
CHMCA Employee number: / Birth Month / Day:
Country of Citizenship: / % Contribution:
Home address:
Email address: / Phone:
Signature: / Date:

Inventor 4:

Full Name
CHMCA Employee number: / Birth Month / Day:
Country of Citizenship: / % Contribution:
Home address:
Email address: / Phone:
Signature: / Date:

(Please copy form or attach additional pages if there are more than 4 inventors.)

List individuals who assisted in the completion of this Invention Disclosure Form

Send completed, signed form and all attachments via internal mail to IP Administrator, Rebecca D. Considine Research Institute

APPENDIX A

Questions for Review When Processing a New Invention Disclosure

  1. Is the invention sufficiently differentiated from other products or services currently available?
  1. Does the invention disclosure describe each of the necessary components of the invention (if a product), or each of the necessary steps in performing the invention (if a method)?
  1. Does the invention disclosure describe how to make the invention?
  1. Does the invention disclosure describe how to use the invention?
  1. Does the invention disclosure describe possible variations of the invention (alternate designs or variations on a method)?
  1. Is experimental data demonstrating operability of the invention disclosed? How would you envision establishing efficacy of the invention?
  1. Does a prototype for the invention exist, or are there plans to develop one?
  1. Are there plans for additional research/development at CHMCA?
  1. Was the work resulting in the invention Federally funded? Please list the specific funding program.
  1. Is this invention an antibody, reagent, or software?
  1. Is the invention currently licensed or optioned, or otherwise committed under the terms of research funding agreement?
  1. Have any companies expressed an interest in licensing the invention?
  1. Have the inventors published papers or abstracts relating to this invention (including on the web)?
  1. Have the inventors submitted papers or abstracts for publication?
  1. Have the inventors received grants/contracts for research related to this invention, or applied for such grants?
  1. Have the inventors distributed materials/prototypes/products that demonstrate or comprise the invention?
  1. Have the inventors cited any products or references they consider to be prior art?
  1. Suggested key words/classes/ descriptors for use in patent searches.

APPENDIX B

Investigator and CHMCA Reporting Obligations to the Federal Government (for Federally funded inventions only)

Obligations of investigators:

  1. Promptly upon inventing, provide employer with a detailed written description of Federally funded inventions, together with associated grant/contract number (applies to subcontract under Federal contracts with industry partners), in accordance with institutional policy. The mechanism for fulfilling this obligation is completing and submitting an Invention Disclosure Form (IDF) to CHMCA.
  1. Report all Federally funded inventions annual reports and grant close out reports, in accordance with the relevant Federal grant or contract. These reports are submitted to the Rebecca D. Considine Research Institute (CRI). CRIand CHMCA coordinate reporting to ensure that no inconsistent reports of inventions are made to the Federal government.
  1. Assist employer with the patenting of Federally funded inventions, and executing all documents necessary to perfect employer’s rights in and to such inventions.

Obligations of institution:

  1. Report Federally funded inventions within two months after having received a detail description of such invention from the inventor(s). CHMCA manages this reporting obligation, in conjunction with CRI, and uses the NIH’s electronic reporting software (IEdison) to complete and update reports. Note that a confidential copy of the invention disclosure is provided to the Federal Government at this stage, in accordance with Federal statute.
  1. Elect or waive title to Federally funded inventions within two years of initial disclosure. CHMCA does not generally wait the entire two years to elect title (this is often done within several months of reporting the invention to the Government). If CHMCA decides to waive title, title to the inventions resides with the Federal Government.
  1. File an initial patent application on inventions to which it has elected to retain title. Such first filing must be made within one year of having elected title. Subsequent filings, including foreign filings, and prosecution progress reports are reported periodically.
  1. Provide the Federal Government with annual reports describing utilization of Federally funded inventions. Here, utilization is synonymous with commercialization – a report of royalties generated from commercialization of each Federally funded invention is made to the Federal Government annually.

Akron Children’s Hospital / Invention Disclosure Form / CONFIDENTIAL / DRAFT