Tufts Medical Center

INVENTION DISCLOSURE FORM

Introduction

The purpose of this Invention Disclosure Form is to record an invention so that the Office for Technology Licensing and Industry Collaboration (OTL&IC) can evaluate its patentability and commercial potential. Appendix A contains an explanation of the legal standards for patentability and inventorship.

Examples of inventions include but are not limited to new and improved devices, systems, circuits, and compounds; novel biological materials such as proteins, genes, DNA constructs, cell lines and transgenic animals; diagnostics, immunoassays, therapeutics, and new uses of known articles or substances; new methods of producing or manufacturing any articles or substances; or algorithms and software. Inventions also include any novel variety of plant which is or may be protected under the Plant Variety Protection Act. In general, anything that appears to fall within this broad definition of an invention should be reported using this form.

It is essential that this form be filled out completely so that the OTL&IC can accurately assess patentability and commercial potential. The information requested also enables the OTL&IC to fulfill certain reporting obligations to the U.S. Government or other sponsors of research. Because public disclosures impact the ability to obtain patent protection, inventions should be disclosed to the OTL&IC as early as possible, that is, prior to presenting or publishing research results.

PLEASE NOTE: Sections 1 – 12 are required. This form needs to be completed and signed before evaluation of the invention can begin. The OTL&IC will make the final determination as to whether a patent application is filed on the invention.

Contact/Submission Information

Please address all questions and return both a signed original andan electronic copy of the completed form to the OTL&IC:

Frederick M.Frankhauser. J.D., M.B.A., R.Ph.

Director, Grants & Contracts

Tufts Medical Center, Inc.

800 Washington St

Boston, MA 02111

E-mail:

Phone: (617) 636-2892

Tufts Medical Center Ref. No. :

ASSIGNMENT

I/we agree to do everything reasonably required to assist the Office for Technology Licensing and Industry Collaboration in the evaluation and possible commercialization of the invention described in this Invention Disclosure Form. In particular, as personnel of Tufts Medical Center, I/we hereby assign all right, title and interest in this invention to Tufts Medical Center in accordance with its Intellectual Property Policy. All statements made herein are true and complete to the best of my/our knowledge.

♦ Tufts Medical Center ♦ Office for Technology Licensing and Industry Collaboration ♦ Confidential ♦ 1

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Tufts Medical Center Ref. No. :

  1. Title of Invention

  1. Brief Description of the Invention
Please describe in a few sentences, to the extent known at this time, the nature, purpose, and operation of the invention, including technical characteristics.
  1. Category of Invention

Please check all that apply.
Small molecule/compound
New use of existing drug
Improvement to existing
drug / Device
Algorithm/software
Database
Array/expression patterns
Improvement to existing
device / Biological material
Gene/protein sequence
Animal/organism / Method/process
Therapeutic/prophylactic
Diagnostic/prognostic
Drug screening tool
Research tool
Other:
  1. Inventors
Please see Appendix A for explanations of inventorship vs. authorship and liability associated with incorrect or incomplete statements regarding inventorship. Please identify all persons who have contributed to this invention, indicating the contributions made by each person. If an inventor is a visiting scientist or student, a permanent contact address is required.
Contact Information / Personal Information / Contributions to Invention
Lead Inventor
Name:
Ms./Mr. PhD MD MD PhD
Other:
Affiliated with Tufts Medical Center?
Yes
Status:
Clinician/Staff Intern/Resident
Post-doc Visiting scientist
Other:
No
If No, please list institutional affiliation:

Institution:
Department:
Work Address:
Work e-mail:
Work phone:
Work fax: / Soc. Security no. XXX-XX-
Citizenship:
If not US Citizen, visa type:

Nonresident alien
Resident alien
Home address
Street:
City:
State & Zip:
Country:
*REQUIRED:
Cell Phone:
Alternative e-mail: / Brainstorming: Yes No
Theory: Yes No
Experiment design: Yes No
Laboratory research: Yes No
Please explain:

(Please make copies of this page as needed)

Contact Information / Personal Information / Contributions to Invention
Contributor Inventor
Name:
Ms./Mr. PhD MD MD PhD
Other:
Affiliated with Tufts Medical Center?
Yes
Status:
Clinician/Staff Intern/Resident
Post-doc Visiting scientist
Other:
No
If No, please list institutional affiliation:

Institution:
Department:
Work Address:
Work e-mail:
Work phone:
Work fax: / Soc. Security no. XXX-XX-
Citizenship:
If not US Citizen, visa type:

Nonresident alien
Resident alien
Home address
Street:
City:
State & Zip:
Country:
Optional:
Home Phone:
Home e-mail: / Brainstorming: Yes No
Theory: Yes No
Experiment design: Yes No
Laboratory research: Yes No
Please explain:
  1. Stage of Development

Concept only
Initial data
Full set of data, or prototype made Date: / In vitro data
Animal data
Clinical data
Please check all that apply:
A)Do any of the inventors named in Section 4 intend to continue working on the subject matter of the invention?
Yes If Yes, how will the work be funded?
Have any inventors applied for or received a grant? Yes No
Have any inventors approached or been approached by any companies interested in funding
the work? Yes No
No If No, please explain:
  1. Primary Contact Person
From the inventors listed in Section 4, please identify the person the OTL&IC (and eventually a patent attorney) can contact with general questions about the invention. If a different person should be contacted regarding experimental details, please identify separately.
Primary contact person / Contact person for experimental details
  1. Documentation of Invention

  1. Was the lead inventor or contributor inventor, named in Section 4, the first person to conceive of the invention?
    Yes No
If No, please identify the first person to conceive of the invention:
  1. When was the invention first conceived (approximate date)?
  2. Was the invention first conceived at Tufts Medical Center? Yes No If No, please explain:
  1. Please describe where and how the invention is documented:
Lab notebooks Computer files Photographs, charts, other visuals Correspondence
No documentation other than this Invention Disclosure Form Other:
  1. Earliest date of documentation:
  2. Is all documentation currently in the possession of the lead inventor or contributor inventor and his/her lab?
Yes No If No, please explain:
  1. Funding Sources
If the invention was created under research funded by a government agency, nonprofit, or commercial entity, Tufts Medical Center may have obligations to report the invention or convey certain rights to the sponsor. Please carefully consider all sources of funding used in the research leading to the invention, including funding used for salaries of all inventors, reagents, supplies, equipment and services, and provide the information requested below. For federal funds, please provide specific grant numbers. Tufts Medical Center must report inventions arising under each grant to the U.S. government.
  1. Federal Support: Please check all that apply and provide details below:
NIH NASA USDA Other: None
Name of agency/institute / Contract or grant no. / Title / Project period dates / Principal investigator
  1. Non-Federal Support: Please check all types of relationships and provide details below:
Sponsored research agreement SBIR/STTR/ATP Gift Consulting Other: None
Name of sponsor / Title / Project period dates / Principal investigator
  1. Internal Support: Please check all that apply and provide details below:
Department/division funds Lab sundry funds Other: None
Sponsor of funds / Contract no. / Title / Project period dates / Principal investigator
  1. Nonprofit or Foundation Funding: Please provide details below:

Name of sponsor / Contract no. / Title / Project period dates / Principal investigator
  1. Publication and Public Disclosure
Actual or intended public disclosures, use, or sale of the invention affect patentability as well as options for filing. Answers to the questions below will assist the OTL&IC in determining when and where a patent application might be filed.
a)If unpublished/undisclosed, is there an anticipated publication date or public oral disclosure date? / Yes No / Date of publication:
Publication/journal name/website:
b)Has the invention been described, in whole or in part, in a printed or online publication (including abstracts, theses, GenBank or other public database submissions)? / Yes No / Date of publication:
Publication/journal name/website:
c)Has a manuscript describing the invention, in whole or in part, been submitted for publication, or will it be? / Yes No / Actual or expected date of submission:
d)If a manuscript has already been submitted, has it been accepted for publication yet? / Yes No / Expected date of publication:
Publication/journal name/website:
e)Has the invention been described, orally or in writing, in whole or in part, in any grant application? / Yes No / Actual or expected date of submission:
Actual or expected date of award:
f)Has the invention been disclosed, in whole or in part, by any of the inventors in a public setting such as a poster session, meeting or seminar? / Yes No / If Yes, when, where, and under what circumstances?
Poster Talk Seminar Other:
Date: Location:
g)Has the invention been disclosed orally, in whole or in part, by any of the inventors in a private setting such as a conversation with colleagues outside Tufts Medical Center or meeting with a company? / Yes No / If Yes, when, where, and under what circumstances?
Date: Location:
Was a Confidentiality Agreement in place?
Yes No
h)Has the invention ever been used or tested outside of Tufts Medical Center or on members of the general public, or offered for sale in any way, by any of the inventors? / Yes No / If Yes, when, where, and under what circumstances?
Date: Location:
Were any human subjects involved, at Tufts Medical Center or elsewhere?
Yes No
i)Has any biological material relating to the invention been deposited in a public repository such as the ATCC, EMBL, or Jackson Lab? / Yes No / If Yes, when, where, and under what circumstances?
Date: Repository:
  1. Use of Information, Materials, Equipment and the Like Obtained from External Sources

Was any aspect of the invention made possible, in whole or in part, by the use of information, materials, equipment, software or the like obtained from individuals other than the inventors listed above, or from organizations other than Tufts Medical Center?
Yes No
If Yes, please check all that apply:
Information / Tangible Materials / Software
Please describe:
Was this information:
Publicly available
Obtained under a confidentiality agreement or any other form of contract? Please explain:
Obtained in the course of consulting or scientific advisory activities, or another relationship with a company?
Please explain: / Type of tangible material:
Biological material Equipment
Animal Device
Drug or chemical Other:
Please describe:
Was this item:
Purchased?
Obtained as a gift or by informal agreement? Please explain:
Obtained under a material transfer agreement or any other form of contract? Please explain: / Type of software:
Open source Proprietary
Other:
Please describe:
Was this software:
Purchased?
Obtained as a gift or by informal agreement? Please explain:
Obtained under a Software Agreement or any other form of contract? Please explain:
Please provide copies of all relevant contracts and evidence of any informal agreements.
  1. Required Information for Literature and Patent Search

  1. Please list keywords relevant to the invention:

  1. Please identify other academic or industry researchers working in the field of the invention (your close competitors):

  1. Please attach manuscripts and copies of all inventors’ papers and abstracts that are relevant to the invention, either as background to the invention or as disclosures.

  1. Detailed Description of the Invention

Please attach a detailed description of the invention. Please follow the outline below:
  1. Technical description of the invention (may be a draft manuscript; electronic version is helpful)
  2. Problem(s) addressed by the invention
  3. Existing solutions to the problem(s)
  4. Key aspects of the invention that make it unique and provide advantages over existing solutions
  5. Potential or consumer base for such products, processes, services or research tools
  6. Patient or consumer base for such products, processes, services or research tools
  7. Companies and/or institutions that may be interested in developing such products, processes, services or research tools

Please note: If the OTL&IC determines that patent protection should be sought, the completed invention disclosure form, including any supplemental documentation, will be provided to a patent attorney and form the basis of a patent application.
  1. Other Obligations

  1. Do other organizations have any rights to this technology? Yes No
  2. Do you consult with any other companies that may claim rights to this technology? Yes No
  1. If so, did you sign a Confidentiality Agreement (CDA) with the company before discussing the invention?
Yes No
  1. Please include copies of any relevant agreement(s) that are in place.

  1. Additional Information and Comments

  1. Please List Any Companies or Potential Investors That May Be Interested in This Invention

SIGNATURES

Lead Inventor Date

Contributor Inventor Date

Contributor Inventor Date

Technology disclosed to and understood by:

Signature Date

Department Chair:

Signature Date

Witness:

Name and Title Date

APPENDIX A

Explanation of Legal Standards for Patentability and Inventorship

In the U.S., patents on inventions are granted by the Patent and Trademark Office (PTO) under U.S. Patent Law, through a legal process known as patent prosecution. Patent prosecution begins with the filing of a patent application at the PTO, usually by a patent attorney. A patent application consists of two parts: the “specification” sets forth a description of the invention, methods for actually making and using the invention (“enablement”), and supporting data, if any; the “claims” define the exact scope of the invention and, if the patent issues, are the basis on which a patent owner may sue infringers.

To be patentable in the U.S., an invention must cover particular subject matter (“any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof”). In addition, the invention must have “utility,” and be “novel” and “non-obvious.” Each of these words has a specific meaning under U.S. Patent Law. In the simplest terms, to have “utility” the invention must have credible uses. To be “novel” the invention must not have been disclosed in a publication by anyone anywhere in the world, or used or sold in the U.S. more than one year prior to the filing of a patent application, and must not have been the subject of an earlier patent application; any such disclosure, use, sale or earlier patent application is referred to as “prior art” against the invention. To be “non-obvious” the invention must not be immediately apparent to a person with average skills in that particular technology area. The same basic standards of patentability exist in most foreign countries, with the notable difference that there is no one-year grace period, as there is in the U.S.: disclosure by publication, use, sale, and, additionally, oral disclosure, anywhere in the world, immediately renders the invention unpatentable outside the U.S..

An “inventor” is one who makes a material contribution, as defined under U.S. Patent Law, to the subject matter of at least one claim of the patent. Since the patent claims are not definitively set until the end of patent prosecution, full determination of inventorship is not possible at the outset. Section 4 of this form requests a list of those persons who contributed in various ways to the invention, for consideration by a patent attorney, who will apply legal standards to determine inventorship. Please note that failure to name an inventor or purposely naming an incorrect inventor can invalidate a patent, and that inventorship disputes occur with some frequency. It is therefore essential that Section 4 be filled out completely and accurately.

Please also note that inventorship and authorship are not necessarily interchangeable. Authors who may be listed on publications are not necessarily considered inventors under U.S. patent law.

♦ Tufts Medical Center ♦ Office for Technology Licensing and Industry Collaboration ♦ Confidential ♦ 1