Invention Disclosure – Protecting Your IP

The first step towards protecting intellectual property is to file a technology disclosure with us. NTUitive will then kick-start the process to evaluate the disclosure for IP protection. The technology disclosure filing and evaluation process is as follows:

The inventor submits a Technology Disclosure Form to NTUitive, thus creating a record of the invention, the inventor(s) involved, the collaborating parties involved, and other public disclosures and publications, etc.

Disclosures received by NTUitive are logged in, assigned a file number, and assigned to a specific IP case officer for management. A separate technology development officer will be assigned to assist in the commercialisation of the technology. The IP case officer is responsible for all subsequent actions relating to the disclosure.

Both IP and technology development case officers will meet with the inventor(s). Together they will discuss the invention and make a preliminary evaluation of patentability, feasibility, novelty, potential applications, and possible markets, etc.

The case officers will defend the case for patenting at the NTUitive’s Patent Committee meeting. Committee decides the IP strategy and recommends the best form IP protection for the invention. There may be times where the decision is not to pursue patent protection, but to keep the invention as a copyright, trade secret, etc.

If patenting is pursued, a preliminary filing will be made in Singapore or the US depending on the Patent Committee’s recommendation. The committee also recommends certain developmental milestones for the next review at conversion stage.

The inventors will have up to 12 months to work with the technology development officer to develop a commercialisation strategy. If the invention is deemed not to have commercial potential, no further conversion of the patent will be pursued.

Based on the commercialisation strategy, the Patent Committee will determine whether or not to convert a provisional filing into a regular/PCT patent application for the invention. The committee also considers whether the inventors has met the milestones that were recommended at the preliminary filing stage.

NTUitive does not file patent applications for all invention disclosures it receives due to the high cost of filing. It is desirable to have an interested potential licensee before committing to patent filing.

The filing and prosecution of patent applications are done by outside patent attorney firms.Technical competence and prior experience in similar cases, are considered by the officer in his selection of the appropriate patent firm.

The inventor's cooperation is essential in patent filing and prosecution. The chosen patent attorney will be familiar with the field of the invention, but he is unlikely to be an expert at the level of detail that makes the invention novel, useful, and non-obvious. The inventor, by providing both information, will make a significant difference in obtaining meaningful patent protection. The patent attorney will work with the IP case officer and the inventor to write and review patent applications and respond to actions from the patent office.

Concurrently with making the patent decision, the technology development officer develop a commercialisation plan in discussion with the inventor. If found suitable, begin license negotiations with potential licensees. Companies likely to be interested are approached and given an opportunity to evaluate the invention (if required, on a confidential basis). Inventor's suggestions of companies and contact person details to be approached are extremely valuable at this stage.

If a company shows strong interest, a term sheet is prepared. Negotiations which follow may require flexibility and creativity by both parties to arrive at a mutually satisfactory agreement. Every license has circumstances that necessitate special considerations. For example, start-up companies typically cannot afford large initial payments but are able to compensate with equity in the company and/or payments once products are on the market

All royalty payments are collected by NTUitive. After the conclusion of NTUitive's financial year (31 March), royalties received are distributed as follows:
● Up to 20% is deducted for costs; and
● The Net Royalties are then divided three ways:
    ○   50% to the inventor(s);
    ○   25% to the inventor's department(s); and
    ○   25% to NTUitive
NTUitive may at times accept equity in lieu of cash as part of the license issue fees. After 20% is deducted inventors receive their proportional share (per #10 above).