How does the TTO assess the Invention Disclosure Form?
The TTO, often with the help of inventors and/or a literature search specialist, will examine each invention disclosure to review the novelty of the invention, competing technologies, options for protection, marketability of potential products or services, relationship to related IP, size and growth potential of the relevant market, amount of time and money required for further development, pre-existing rights associated with the IP, and potential competition from other products/technologies.
This assessment may also include consideration of whether the IP can form the basis for a new business start-up.
If my conviction is that all IP should be licensed non-exclusively to all potential users for the public good, will TTO agree to my request?
The TTO will work with you to develop the appropriate commercialisation strategy for your invention. Some technologies lend themselves to non-exclusive licensing (licensing to multiple third parties), while others will only reach the commercial marketplace, and therefore the public, if they are licensed on an exclusive basis. We will try to accommodate inventors’ commercialisation wishes consistent with the objectives of co-inventors, co-researchers, and with governmental or institutional policies together with obligations to sponsors or other third parties, and the final decision will be determined by our assent of which strategy will be most beneficial to the general public.
How do we decide whether to commercialise with a traditional or an “open source” licence for software?
The TTO will consider support to those software developers who choose to distribute or release their programs or developments through open source mechanisms, provided the institution or enterprise where they are based retains the right to distribute the program freely and that “open sourcing” is consistent with obligations to third parties, such as sponsors.
However, since there are many different modes of “open sourcing,” it is recommended that you contact the TTO to obtain advice on appropriate notices to be placed on your open-sourced software.
Open Source is defined by the Open Source Initiative as software complying with the following criteria (See http://opensource.org/osd-annotated
for a more detailed definition.)
1. Free Redistribution
2. Source Code must be included
3. Derived Works must be allowed to be redistributed freely
4. Integrity of the Author’s Source Code
5. No Discrimination against persons or groups
6. No Discrimination against fields of endeavour
7. Distribution of the licence with redistribution of the program
8. License must not be specific to a product
9. License must not restrict other software
10. License must be technologically-neutral
Is an invention ever reassigned to an Inventor?
Yes. An inventor can request that the TTO transfers rights to an invention back to the inventors(s).
If the TTO does not pursue protection of IP that has been assigned to it and/or chooses not to actively market the invention, it will inform the inventor who may then request a reassignment (i.e., transfer of ownership) back to the inventor(s). Reassignment of inventions funded from Government sources may require prior approval. Upon reassignment, the inventor(s) may be responsible for payment of prior patent costs and further development, patenting and marketing expenses incurred by the TTO.