Appendix 1: Important Forms

• Author: Joseph P. Kennedy/Wayne H. Watkins/Elyse N. Ball (With)
• Profession: Distinguished Professor of Polymer Science and Chemistry at The University of Akron/Associate Vice President for Research at The University of Akron/Project Manager for the University of Akron Research Foundation
• Pages: 139-176

APPENDIX 1

IMPORTANT FORMS

The following are sample forms and contracts you may encounter as an

inventor. They include:

A. Invention Disclosure Form—used when a researcher wants to reveal a

potentially patentable invention to his organization’s legal department,

technology transfer office, or research foundation

B. Material Transfer Agreement—used when unpatented products or

know-how are disclosed to a company by an inventor for purposes

of having these products or techniques tested or further research and

development

C. Employment Agreement—a typical agreement an employee might be

expected to sign when he is hired defining the employer and employee

relationship

D. Patent Assignment Agreement—gives an employer or another party

ownership over an inventor’s patent

E. Non-Disclosure Agreement—requires a party to keep information con-

fidential and allows an inventor to prevent a third party from discussing

an unpatented invention the inventor shares with him and is often used

to share trade secrets or ask a potential licensee about the value of

pursuing a patent

How to Invent and Protect Your Invention: A Guide to Patentsfor Scientists and Engineers,

First Edition. Joseph P. Kennedy and Wayne H. Watkins with Elyse N. Ball.

© 2012 John Wiley & Sons, Inc. Published 2012 by John Wiley & Sons, Inc.

139

140 IMPORTANTFORMS

F. Information Disclosure Statement—must be included in a patent appli-

cation to disclose any relevant prior art references

G. Inventor’s Oath—must be included in a patent application and states

that the inventor believes he and his co-inventors are the first to invent

H. Patent License Agreement—a patent holder allows another person or

company to make, use, sell, or import the invention in certain circum-

stances in exchange for a licensing fee

I. Sponsored Research Agreement—used by people or companies who

want to pay another person or company to do research on their behalf

J. Joint Ownership Agreement—establishes the relative ownership rights

of multiple co-owners of a single patent

INVENTION DISCLOSURE FORM 141

A. INVENTION DISCLOSURE FORM

Date:

Basic Information

1. Name:

2. Official title or position:

3. Title or brief description of invention:

4. Grant award or contract number under which work was done leading to

invention (if any):

5. If the work was done under a grant, contract, or consulting agreement,

attach a copy of any pertinent legal documents.

6. Name and address of facility in which invention was made:

Contributors

1. List the full name, home address, and citizenship of anyone who con-

tributed to the initial concept for the research leading to the invention:

2. List the full name, home address, and citizenship of anyone who con-

tributed to subsequent development and testing of the invention:

Conception of Discovery or Invention

1. What was the problem you sought to solve, and how did you attack it?

2. First oral disclosure

Date To whom

3. First drawings

Date Drawing numbers

Attach two copies of the drawings to this form