Offices of Biotechnology and Business Development

Submitting an Invention Disclosure

Background

Albert Einstein College of Medicine has an Official Policy on Patent and Licensing Agreements (established on December 3, 1985, and revised on April 18, 2007), as required by federal law of all institutions where individuals are applying for federal funding. Einstein encourages and supports research relating to the advancement of medical knowledge and the publication and the use of the results of such research, and it also recognizes that research conducted by its faculty, technical staff and students may lead to inventions and discoveries that may be patentable and commercially applicable.

In order to comply with federal and campus policies, all individuals applying for sponsored research must sign an Acceptance Agreement. This document verifies that each individual has read and agrees to abide by Einstein’s Patent Policy, including promptly disclosing and assigning all related rights in any resulting inventions to Einstein.

Purpose

As stated in the Patent Policy, an Einstein Inventor has the “obligation to file an invention disclosure statement with Einstein as soon as it is possible to do so simultaneously with or prior to the submission of a paper for publication disclosing the Intellectual Property.  In all events, the Inventor shall disclose his or her invention to Einstein a minimum of 90 days in advance of any printed or oral public disclosure.”

The Invention Disclosure Form requests that sufficient information be provided, which serves several important purposes, such as:

  • the establishment of a legal record of your invention;
  • the evaluation of your invention by management and patent counsel;
  • the assessment of the potential market value of your invention; and
  • the preparation and filing of a patent application, if that route is chosen.

 

Instructions

These instructions are intended to assist you in creating a factually and legally sufficient record.

The Invention Disclosure Form is available for downloading online or may be obtained from the office of the committee on patents (Belfer 908).  All Invention Disclosures must be submitted in typewritten form to be considered by the committee.  Please attach to the completed Invention Disclosure Form a "detailed description" (e.g., publications, manuscripts, articles, abstracts, drawings, photographs) that relates to the invention.

Upon completion of the Invention Disclosure Form, please have it signed by three witnesses (members of your department, laboratory technicians, faculty members from other departments, etc.) and return it to the Committee on Patents, Room 908, Belfer building.  Please leave the "Date of Receipt" line blank since the date will be entered when your disclosure arrives at the committee office.

Also note that a U.S. patent application must be filed within one year after an invention has been published or presented at a conference, seminar, etc.  Therefore, if possible, please submit your Invention Disclosure Form prior to publication.  Please inform the committee office if a manuscript has been accepted for publication and the date of publication, if available.

When submitting your disclosure to the committee office, attach the names of four faculty members at any of our affiliates whom you believe can evaluate this research.

If you have any questions regarding the above, please call the committee office at 718.430.3357.


FAQs about the Invention Disclosure Process



"Licensing Einstein Technology: The Inside Story" (Sept. 24, 2009)  Video 

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