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Polytechnic University of Puerto Rico
Intellectual Property Disclosure Form
Introduction
This Intellectual Property Disclosure Form assists the Polytechnic University of
Puerto Rico (hereinafter PUPR or the University”) in the recording of
intellectual property generated by faculty, staff, or students of PUPR or by others
to whom PUPR’s Intellectual Property Policy (the “IP Policy”) may apply (PUPR’s
faculty, staff, or students, and others to whom the IP Policy may apply shall be
referred to collectively hereinafter as the Originators”). It provides the basis for a
determination of patentability, for the drafting of a patent application, and/or for
registering a copyright. It also assists in the evaluation and, when applicable,
commercialization of the inventions developed as part of the academic
endeavors of its faculty and students.
This document carries important legal ramifications, and thus, should be
prepared carefully.
This Intellectual Property Disclosure Form should be completed by any Originator
when something new and useful has been conceived or developed, or when
unusual, unexpected, or non-obvious research results have been achieved.
Where appropriate, the University may seek to patent University intellectual
property and license such intellectual property to industry for further development
and commercialization. Royalties derived from any such license will be shared
with the inventor(s) in accordance with the University’s Intellectual Property
Policy.
This Intellectual Property Disclosure Form should also be completed when other
forms of intellectual property are developed by an Originator, unless such
intellectual property is specifically excluded by the IP Policy from being disclosed
such as materials used solely by the Originator in the teaching of a course.
As with inventions, royalties from the commercialization of intellectual property, if
any, will be shared with the Originator(s) in accordance with the IP Policy.
Procedure
All inventions and creative works developed by the Originators either through
Sponsor-Supported Efforts, University-Assigned Efforts, University-Assisted
Efforts, or Individual Efforts, as such terms are defined in the IP Policy, shall be
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promptly reported to PUPR’s Director of the Sponsored Research Office through
the submission of this Intellectual Property Disclosure Form.
As per the IP Policy currently in effect, PUPR will determine if the invention or
creative work is a University-Assigned Effort, a University-Assisted Effort, or an
Individual Effort. To the extent that the invention or creative work is determined
to be a University-Assigned Effort or a University-Assisted Effort, PUPR will
evaluate the methods of protection applicable to the discovery, development,
design, creation, and/or invention object of the disclosure and may submit
recommendations to obtain legal assistance from internal or external counsel.
When an invention or improvement appears to have commercial and/or
economic value, assistance will be sought by PUPR from a patent attorney
and/or agent for applying for a patent. In furtherance of the foregoing, PUPR will
research the market and identify third parties for the commercialization of the
invention, discuss with potential licensees, negotiate all the appropriate
agreements, and monitor progress, among other efforts, all in order to pursue the
licensing and protection of the invention.
The foregoing notwithstanding, PUPR will not use economic or commercial value
as the only factor for determining, pursuing, and enforcing protection and, at its
sole discretion, may evaluate any other factors.
All assignments, licenses, or any other agreements involving the
commercialization of any intellectual property owned by PUPR, will be reviewed
by PUPR legal counsel, to ensure compliance with Federal and Puerto Rico
laws.
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1. Title of the Invention and/or Creative Work
2. Department / Research Group
3. Additional Departments, Universities, or Institutions Involved
4. Has invention been described in any publication? (Include details on
publication and date)
Attach copies of any publications, abstracts, poster presentations, etc., that you have
prepared relating to this technology.
Attach copies of any publications that others have prepared relating to this technology.
Attach copies of any slide presentations, visual aids or handouts that you have used
disclosing this technology to others.
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5. Has the invention been disclosed to any third party, orally or otherwise?
Include date if applicable
6. Date of Reduction to Practice, if applicable
* Reduction to Practice is the embodiment of the conceived invention. The date of this
embodiment is critical to the determination of priority between inventors. Conception is the
formation in the mind of the inventor, of a definite and permanent idea of the complete and
operative invention, as it is to be applied in practice.
The embodiment of an invention can either be:
Actual reduction to practice: this requires that the invention work for its intended purpose;
or
Constructive reduction to practice: this occurs upon the filing of a patent application on the
invention.
In some instances, such as the discovery of genes or chemicals, an inventor is unable to establish
a conception until he has reduced the invention to practice through a successful experiment.
7. Inventors or Contributors (Including any from other Universities and
Institutions)
1. ____________________________________
2. ____________________________________
3. ____________________________________
4. ____________________________________
5. ____________________________________
Add additional pages if needed
* Inventorship is a legal status that will be determined by counsel after patent claims are drafted,
and can only be finally determined after patent claims are allowed. Please list all contributors,
using additional pages if necessary, with the understanding that listing an individual on this form
does not necessarily mean that the individual will be listed as an inventor on a patent application
or be a legal inventor of a patent that may result. Deliberate omission of an inventor from a patent
may invalidate the resulting patent. If the work is not an “invention”, please also use this section to
list contributors to the creative work. Joint inventors need not have worked together or at the
same time, but they must have communicated and been aware of each other’s work. The
contribution of joint inventors need not be equal; the contribution may be partial, but must be
original.
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8. Funding or Sponsorship (Attach copy of the grant(s) or related
documentation)
9. Project Description (If you need more space, feel free to add more pages)
i. General Purpose
ii. Technical or detailed description and current state of development
iii. Advantages and Improvements
iv. List and/or enclose any patent and/or publication which discloses an
invention and/or discovery which may be similar to the Disclosed
Invention
v. Analysis of economic or academic value (commercial applications;
economic potential; interested companies)
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vi. Enclose any copies of results, photos, written descriptions,
prototypes, and/or any other tangible form of the invention
10. Software/Other Works
a) Is the invention considered software or is software implemented in the
invention? (If so, please ensure all software developers are listed as
contributors in part 7).
b) If the answer to (a) is yes, was any third party content used in the
software (open source, library code, etc.). If so, please list the source of the
third party content and any applicable licenses.
c) Is the invention or work a literary or dramatic work, musical work,
choreographic work, pictorial, graphic, or sculptural work, audiovisual work,
sound recording, or architectural work? Note: Intellectual property which
resides with the Originator need not be disclosed according to the IP Policy.
d) If the answer to (a) or (c) is yes, is the work derivative of another existing
work? If so, please explain the original work’s source and the modification.
e) If the answer to (a) or (c) is yes, please provide a full listing of University
resources, including advice of university employees, that were used in
creation of this work.
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11. Outside Activities / Consulting
Do any of the listed contributors have consulting or other relevant
relationships with entities other than the University? Please explain and
attach any consulting agreements or other contracts.
Inventor/Contributor information details (attach additional sheets when
necessary)
Name:
Address:
City:
Phone:
E-mail address:
Signature:
Date:
% of contribution:
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Name:
Address:
City:
Phone:
E-mail address:
Signature:
Date:
% of contribution:
Name:
Address:
City:
Phone:
E-mail address:
Signature:
Date:
% of contribution:
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Name:
Address:
City:
Phone:
E-mail address:
Signature:
Date:
% of contribution:
Name:
Address:
City:
Phone:
E-mail address:
Signature:
Date:
% of contribution:
Please use additional sheets as necessary. All contributors named in Section 7
should sign this form.