INVENTION DISCLOSURE REPORT & ASSIGNMENT

Transcription

1 INVENTION DISCLOSURE REPORT & ASSIGNMENT NEW YORK STATE DEPARTMENT OF MENTAL HYGIENE OFFICE OF MENTAL HEALTH OFFICE FOR PEOPLE WITH DEVELOPMENTAL DISABILITIES OFFICE OF ALCOHOLISM AND SUBSTANCE ABUSE SERVICES AND RESEARCH FOUNDATION FOR MENTAL HYGIENE, INC. The purpose of this form is to disclose potentially patentable inventions. Please return completed form to: Ashley M. Hart, Esq. Technology Transfer Associate Research Foundation for Mental Hygiene, Inc. 150 Broadway, Suite 301 Menands, NY Phone: (518) Fax: (518) LEAD INVESTIGATOR: NAME: TITLE OR POSTION: Degree INSTITUTE: DEPARTMENT: ADDRESS: PHONE: F AX: 1

2 CONTRIBUTOR(s) If the contributor has a joint appointment with an affiliated organization, please name the organization. NAME: INSTITUTE: Degree DEPARTMENT: PHONE: NAME: INSTITUTE: Degree DEPARTMENT: PHONE: NAME: INSTITUTE: Degree DEPARTMENT: PHONE: NAME: INSTITUTE: Degree DEPARTMENT: PHONE: NAME: INSTITUTE: Degree DEPARTMENT: PHONE: 2

3 1. Title of the Invention: 2. Please briefly describe the invention. If possible, attach a manuscript, research proposal, sketch, drawing or any other materials that would assist in the understanding of the invention. 3. Has the invention been reduced to practice? If so, approximately when? 4. Identify and describe the closest technological development, either in the U.S. or abroad, that you are aware of. S uch technology may have been described in any patent, publication, or presented at a public talk or trade fair, or be on sale now or in the past or near future. 5. Do you know if anyone else has invented something similar which is not yet publicly available, as defined in paragraph above? 3

4 6. Please distinctly specify the differences between your invention and the closest prior technology, as defined in paragraph 4 and 5 above. What advantages does your invention provide over the prior technology? What defects does it overcome? 7. What are all of the possible uses for the invention? Please reasonably speculate on any additional uses that your invention may have, either by itself or in combination with other known, or as yet unknown, technology. 8. What is (or are) the best way (or ways) of carrying out your invention? I f a product (chemical or otherwise), what are the optimum materials and proportions? If a process, what are the optimum conditions and parameters? 9. Are there any disadvantages or problems with your invention? Can they be overcome? How? 4

5 10. Did research leading to this invention involve collaboration with other institutions? If so, please identify the institution(s) and collaborator(s). 11. Have you or any of your collaborators described this invention or a similar invention in whole or in part in manuscripts, reports, grant applications, theses, abstracts, oral presentations, demonstrations or sales catalogues? If so, describe each event with dates and authors. Have any patent applications been filed on closely related inventions? Has there been a public use or an offer for sale? When? 12. Did research leading to this invention make use of materials (e.g., biological materials, reagents, etc.) obtained under a Materials Transfer Agreement (MTA) or Materials Use Agreement (MUA) with a company or other third party? If so, please identify the material(s) and the provider(s). 13. Are there any written records, such as laboratory notebooks, etc., in which the invention is described? Where can they be found? D o not enclose any material now; simply indicate location, custody, etc., of the records, starting with the earliest ones. 5

6 14. Are there any witnesses who can corroborate the making of the invention, from the early days of conception to the reduction of practice? P lease give their names, addresses and/or telephone numbers. 15. Are you planning any disclosure of the invention in the future? Is there any imminent publication, oral presentation, showing, offer of sample or sale of the invention? Please give approximate dates and locations. 16. Who was (or were) the individual (or individuals) associated with the making of the invention? Please give his/her name(s), address(es) and telephone number(s). P lease indicate their contribution(s): proposal, conception, experimentation, useful or crucial suggestions, etc. Please indicate each inventor s percentage of contribution to the overall invention (should equal 100% between all inventors). If in doubt, include the name(s). 17. Who sponsored or paid for the work that led to the invention or part thereof? a. U.S. Government Agency(ies): Contract or Grant number(s): 6

7 b. Industrial Sponsor(s) (Please enclose relevant patent section from the contract if available): c. Other (self, university, private foundation or individual, etc.): 18. Has there been any commercial interest in this invention? If available, please name companies and specific persons. 19. Can you think of any other commercial firms who may be interested in your invention? 20. Would your invention be of particular use in countries other than the U.S. (e.g., the invention is a drug for a tropical disease, etc.)? 21. Name(s), address(es), and telephone numbers of person(s) who may be contacted further about the invention: 7

8 22. Signature(s), date(s), and percent contribution(s) (note percent contributions should match item 16) of person(s) making this disclosure: Signature Date Percent contribution Signature Date Percent contribution Signature Date Percent contribution Signature Date Percent contribution Signature Date Percent contribution Signature Date Percent contribution 23. Signature of Institute Director or Deputy Director of Administration. I have read and understood the foregoing disclosure represented by paragraphs 1-22 above. Signature Date Title 8

9 INVENTION ASSIGNMENT WHEREAS, I/we, and, citizen(s) of the ; residing at (hereinafter referred to as ASSIGNORS ) are co-inventors of certain developed at the with support from and in collaboration with Collaborators, Patents, Etc. (hereinafter referred to as INVENTION(s) ); and WHEREAS, THE RESEARCH FOUNDATION FOR MENTAL HYGIENE, INC., a not-for-profit corporation having an address at 150 Broadway, Suite 301, Menands, New York, (hereinafter referred to as ASSIGNEE ), is desirous of acquiring the ASSIGNOR(S) s entire interest in, to and under said INVENTION(s) and in, to and under Letters Patent or similar legal protection which may be obtained therefore in the United States and in any and all foreign countries; and NOW, THEREFORE, TO ALL WHOM IT MAY CONCERN, be it known that in consideration of the payment by ASSIGNEE to ASSIGNOR(s) of the sum of One Dollar ($1.00), the receipt of which is hereby acknowledged, and for other good and valuable consideration, ASSIGNOR(s) hereby sell, assign and transfer to ASSIGNEE, its successors, legal representatives and assigns, the full and exclusive right, title and interest to said INVENTION(s) in the United States and its territorial possessions and in all foreign countries and to all Letters Patent or similar legal protections in the United States and its territorial possessions and in any and all foreign countries which may be obtained for said INVENTION(s) by said application or any continuation, division, renewal, extension, substitute or reissue thereof or any legal equivalent thereof in a foreign country for the full term or terms for which the same may be granted. I/WE, SAID ASSIGNOR(s), hereby authorize and request the Commissioner of Patents and Trademarks of the United States of America and any Official of any country or countries foreign to the United States of America whose duty it is to issue Letters Patent on applications as aforesaid, to issue any such Letters Patent for said INVENTION(s) to the said ASSIGNEE, as assignee of the entire right, title and interest in, to and under the same, for the sole use and behalf of the said ASSIGNEE, its successors, legal representatives and assigns, in accordance with the terms of this instrument. I/WE, said ASSIGNOR(s) hereby covenant that I/we have full right to convey the entire right, title and interest herein sold, assigned, transferred and set over; AND I/we, said ASSIGNOR(s) hereby further covenant and agree that the said ASSIGNEE, its successors, legal representatives, or assigns, may apply for foreign Letters Patent on said INVENTION(s) and claim the benefits of the International Convention, and that I/we will, at any time, when called upon to do so by the said ASSIGNEE, its successors, legal representatives or assigns, communicate to the said ASSIGNEE, its successors, legal representatives, or assigns, as the case may be, any facts known to me/us respecting said INVENTION(s), and execute and deliver any and all lawful papers that may be necessary or desirable to perfect the title to the said INVENTION(s), the said applications and the said Letters Patent in the said ASSIGNEE, its successors, legal representatives and assigns, and that it reissues of the said Letters Patent or disclaimers relating thereto, or divisions, continuations, or 9

10 re-filings of the said applications, or any thereof, shall hereafter be desired by the said ASSIGNEE, its successors, legal representatives, or assigns, we will, at any time, when called upon to do so by the said ASSIGNEE, its successors, legal representatives, or assigns, sign all lawful papers, make all rightful oaths, execute and deliver all such disclaimers and all divisional, continuation, extensions and reissue applications so desired, and do all lawful acts requisite for the applications for such reissues and the procuring thereof and for the filing of such disclaimers and such applications, and generally do everything possible to aid the said ASSIGNEE, its successors, legal representatives and assignees, to obtain and enforce proper patent protection for said INVENTION(s) in all countries, all without further compensation but at the expense of said ASSIGNEE, its successors, legal representatives and assigns. [The remainder of this page has been intentionally left blank] 10

11 IN WITNESS WHEREOF, I HAVE HEREUNTO set my hand and affixed my seal. ASSIGNOR s signature: Name Date State of ) ) SS.: County of ) On this day of, 20, before me, the undersigned authority, to me known, and known to me to be the individual who is described in and who executed the foregoing Assignment, and who duly acknowledged to me that executed the same as his own voluntary act and deed for the uses and purposes therein specified. Notary Signature 11

12 IN WITNESS WHEREOF, I HAVE HEREUNTO set my hand and affixed my seal. ASSIGNOR s signature: Name Date State of ) ) SS.: County of ) On this day of, 20, before me, the undersigned authority, to me known, and known to me to be the individual who is described in and who executed the foregoing Assignment, and who duly acknowledged to me that executed the same as his own voluntary act and deed for the uses and purposes therein specified. Notary Signature 12