The University of Utah's Technology Licensing Office (TLO) plays a crucial role in helping researchers protect their innovations while meeting federal compliance requirements. Understanding when and how to disclose inventions, along with navigating grant obligations, can significantly impact both your research trajectory and funding opportunities.
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Understanding the Disclosure Process
When to Disclose Your Invention
The golden rule: disclose early and often. While you shouldn't rush to disclose every shower thought, waiting too long creates unnecessary complications. Early disclosure allows the TLO to:
- Monitor your technology's progress over time
- Identify and address potential issues before they become problems
- Ensure compliance with grant requirements
- Protect your patent rights before publications or presentations
The TLO team includes relationship managers who check in periodically on early-stage disclosures, providing guidance as your research develops.
Critical Timing for IP Protection
Before any public disclosure, contact the TLO. This includes:
- Journal publications: The clock starts when the article publishes, not when you submit it. The peer review process remains confidential, giving you time to file patent protection.
- Conference presentations: Both the presentation itself and any published abstracts count as public disclosures. Alert the TLO well in advance of conference deadlines.
- Thesis and dissertation defenses: These are considered public disclosures by law, even if only university personnel attend. This counterintuitive rule stems from Supreme Court precedent - the event's public nature matters, not actual attendance.
- Grant proposals: These remain confidential until funding is awarded. Once funded, they become subject to Freedom of Information Act requests, making them public.
- Online preprint servers: Unlike journal submissions, these create immediate public disclosure the moment you upload.
The One-Year Grace Period
If you've already disclosed your invention publicly, don't panic. U.S. patent law provides a one-year grace period to file a patent application after public disclosure. However, this safety net has limitations:
- Most international jurisdictions offer no grace period - disclosure immediately forfeits foreign patent rights
- The loss of international rights can significantly impact licensing opportunities
- After one year, even U.S. patent rights are permanently lost
Provisional vs. Non-Provisional Patents
Understanding the two-stage patent process helps researchers plan their publication strategy:
Provisional applications are informal placeholders that can be filed quickly - often within days. The TLO can file your manuscript, poster, or even PowerPoint slides directly with the USPTO to establish your priority date. These applications:
- Aren't examined or published
- Provide one year of protection
- Allow immediate publication or presentation
- Cost less than formal applications
Non-provisional applications are formal patent applications that:
- Require professional drafting by patent attorneys
- Undergo USPTO examination
- Can mature into issued patents
- Must be filed within one year of the provisional
Note: Initial rejections from the USPTO are standard - nearly every application receives objections that can be addressed through amendments and arguments.
The Bayh-Dole Act: Your Obligations and Opportunities
Historical Context and Current Requirements
Before the 1980 Bayh-Dole Act, the federal government owned all inventions arising from federally-funded research. This system left approximately 30,000 government-owned patents languishing unused. The Bayh-Dole Act revolutionized technology transfer by allowing universities to retain ownership of federally-funded inventions, provided they meet specific requirements.
Does Bayh-Dole Apply to Your Work?
Your invention falls under Bayh-Dole if federal funding supported the work when the invention was either conceived or reduced to practice. This includes situations where grants only paid for graduate student salaries - if that student worked on the technology, Bayh-Dole applies.
Notable exceptions:
- Pure educational grants (fellowships without research components)
- Core facility grants
- Copyright-only materials (not patentable)
- Some software (depends on patentability)
Critical Compliance Deadlines
Once you disclose an invention with government funding, strict timelines begin:
60 days to notify the funding agency of the disclosure
2 years from disclosure to elect title (decide to pursue patent rights)
1 year from election to file a patent application
60 days notice before abandoning any patent rights
*If the work has been publicly disclosed, the title election and patent filing deadlines fall under the USPTO's default of one year.
Critical: Missing the first two deadlines can result in the government claiming ownership of your invention permanently.
Manufacturing Requirements
Products resulting from federally-funded inventions must be manufactured in the United States unless a waiver is obtained. The TLO tracks this through utilization reports, collecting:
- Product names
- Manufacturer information
- Manufacturing locations
This requirement has gained increased attention in recent years and affects licensing agreements.
Best Practices for Researchers
Maintain Clear Records
Document all funding sources that support your research, even tangentially. This helps the TLO ensure compliance and can actually attract future funding - agencies track which investments yield commercial outcomes.
Communicate Early and Often
When planning publications or presentations:
- Notify the TLO during manuscript preparation, not after acceptance
- Provide conference dates and abstract deadlines
- Share your publication timeline
Understand Joint Inventorship
Collaborating with researchers at other institutions doesn't constitute public disclosure, but it does require inter-institutional agreements. The TLO handles these arrangements to clarify ownership and patent cost responsibilities.
Common Questions and Scenarios
Can I refile an expired provisional?
Yes, if no public disclosure occurred, you can file a new provisional application. However, you lose the original priority date, risking that someone else might file first.
What about state funding?
State and foundation grants have varying requirements. We review each award individually to ensure TLO compliance obligations are met.
What if I published last week?
Contact us immediately. We may be able to file same-day provisional applications to preserve your rights.
Take Action Today
The disclosure process starts with a simple online form asking four key questions:
- Who are the inventors?
- What is the technology?
- What problem does it solve?
- What competing solutions exist?
Ready to protect your innovation?
For questions about the disclosure process, contact the Technology Licensing Office directly.
