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Management Guide to Intellectual Property for State Departments of Transportation (2015)

Chapter: Appendix D - Invention Disclosure from the Virginia Department of Transportation

« Previous: Appendix C - Sample Invention Disclosure Document
Page 122
Suggested Citation:"Appendix D - Invention Disclosure from the Virginia Department of Transportation." National Academies of Sciences, Engineering, and Medicine. 2015. Management Guide to Intellectual Property for State Departments of Transportation. Washington, DC: The National Academies Press. doi: 10.17226/22190.
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Page 122
Page 123
Suggested Citation:"Appendix D - Invention Disclosure from the Virginia Department of Transportation." National Academies of Sciences, Engineering, and Medicine. 2015. Management Guide to Intellectual Property for State Departments of Transportation. Washington, DC: The National Academies Press. doi: 10.17226/22190.
×
Page 123
Page 124
Suggested Citation:"Appendix D - Invention Disclosure from the Virginia Department of Transportation." National Academies of Sciences, Engineering, and Medicine. 2015. Management Guide to Intellectual Property for State Departments of Transportation. Washington, DC: The National Academies Press. doi: 10.17226/22190.
×
Page 124
Page 125
Suggested Citation:"Appendix D - Invention Disclosure from the Virginia Department of Transportation." National Academies of Sciences, Engineering, and Medicine. 2015. Management Guide to Intellectual Property for State Departments of Transportation. Washington, DC: The National Academies Press. doi: 10.17226/22190.
×
Page 125
Page 126
Suggested Citation:"Appendix D - Invention Disclosure from the Virginia Department of Transportation." National Academies of Sciences, Engineering, and Medicine. 2015. Management Guide to Intellectual Property for State Departments of Transportation. Washington, DC: The National Academies Press. doi: 10.17226/22190.
×
Page 126
Page 127
Suggested Citation:"Appendix D - Invention Disclosure from the Virginia Department of Transportation." National Academies of Sciences, Engineering, and Medicine. 2015. Management Guide to Intellectual Property for State Departments of Transportation. Washington, DC: The National Academies Press. doi: 10.17226/22190.
×
Page 127

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122 A P P E N D I X D Invention Disclosure from the Virginia Department of Transportation Agency _________ Code ________ No. Title Date Time of Filing OFFICE OF THE SECRETARY OF ADMINISTRATION INVENTION DISCLOSURE Instructions This form is for reporting all inventions in accordance with the Intellectual Properties Policy. Any classified, exempt, full-time, part-time, or hourly employee of an executive branch agency who has invented any potentially commercially valuable intellectual properties, such as processes, devices, techniques, or methods, during the working hours, within the scope of employment, or when using state-owned or state-controlled facilities is required to disclose that fact. When the form is completed, please send it to your agency head who will forward the form to the Secretary of Administration for review. Expeditious processing of the invention is very important. It is essential that the inventor(s) complete this report promptly in order to meet critical patent deadlines* and to facilitate an evaluation by parties interested in financing or furthering its development, patent coverage, or use by industry. If unable at this time to answer one or more of the questions, so indicate on the form, but do not delay submitting your report for that reason. *Any prior publication and sometimes public use or placing “on sale” before the application is filed may prevent the Commonwealth of Virginia from obtaining a patent in most foreign countries and, if more than one year, in the United States.

Invention Disclosure from the Virginia Department of Transportation 123 Comments and recommendations by agency’s Intellectual Property Representative: 1. Title of the invention: 2. Brief description of the invention: (Use additional sheets to elaborate; attach descriptive material including reports, sketches, drawings, photographs, and blueprints that help illustrate the description. If a model, prototype, or film has been made, please indicate where it may be seen or obtained.) 3. How does the invention differ from present technology? What problems does it solve, or what advantages does it possess? 4. If not indicated above, what are possible uses for the invention? In addition to immediate applications, are there other uses that might be realized in the future? 5. Does the invention possess disadvantages or limitations? How can they be overcome? TO: Secretary of ________________________________________________ Administration Post Office Box 1475, Richmond, VA 23212 FROM: Name (s) (Please print or type) (Agency or Institution): Agency ___________________________________________________ (Address): Phone:

124 Management Guide to Intellectual Property for State Departments of Transportation 7. Please list publications pertaining to the invention. Include theses, reports, preprints, reprints, manuscripts for publication (submitted or not), news releases, feature articles, and items for internal publications. Please include publication dates and provide copies whenever possible. 8. If laboratory records and data are available, please provide reference numbers and physical location, but do not enclose the records or data. 9. Please list any related patents or other publications of which you are aware. 10. Please indicate the date and place the invention was conceived (identify persons and records to support date and place). 11. If the invention has been disclosed in public (meeting, conference, etc.) or published, or such public disclosure or publication is planned in the next 12 months, please indicate the date, place, and circumstances. 6. If further research and development are necessary or desirable before this product can be marketed, please discuss, indicating the estimated cost and length of time, if possible.

Invention Disclosure from the Virginia Department of Transportation 125 12. If the work that led to the invention was sponsored, please provide the following information: a. Name of Sponsor b. Grant or Contract Identification (if any) c. Title of Project d. Principal Investigator 13. Please indicate any known commercial or market interest in the invention at this time. Please provide company names and names and titles of persons interested. (Under no circumstances are employees to seek marketers without the specific authorization of the Secretary of Administration.) 14. Please suggest any other firms that might be interested in the invention. 15. In the opinion of both the inventor(s) and his or her immediate supervisor, was the invention conceived, actually reduced to practice, constructively reduced to practice, or developed during a time when the inventor was an employee of the Commonwealth of Virginia other than an employee of an institution of higher education? (In the event that there are multiple inventors, the supervisor of the employee with the largest percentage of interest in the invention should respond where indicated below, and if there is equal interest shared among two or more inventors, the supervisor having the most seniority should respond where indicated below.) Yes/ No (Employee) Yes/ No (Employee’s Immediate Supervisor) 16. If the answer to Question 15 was “Yes” (for either respondent), please answer the following: a. Did the invention result from a specifically assigned project? Yes/ No (Employee) Yes/ No (Employee’s Immediate Supervisor)

126 Management Guide to Intellectual Property for State Departments of Transportation Question 16, continued b. Was the invention conceived, reduced to practice, or developed (1) during working hours, or (2) within the scope of the inventor’s employment, or (3) when using state- owned or state-controlled facilities? Yes/ No (Employee) Yes/ No (Employee’s Immediate Supervisor) 17. In the event that the Commonwealth decides not to seek protection on this invention, would the employee want the Commonwealth to surrender any of its intellectual property rights to the invention? a. Yes/ No b. If yes, please describe the intellectual property rights that the employee desires (e.g., full rights, partial rights, or a license). 18. By signing below, the inventor(s) certifies that the answers herein are accurate to the best of his or her knowledge and that he or she will give all further assurances and any further information required by the Secretary of Administration. If there is more than one inventor, please indicate the percentage of interest they recommend for allocation among themselves of any income accruing to them on the invention. Inventor(s) % Interest a. Name Title Date Address Phone and Signature b. Name Title Date Address Phone and Signature (If there are additional inventors, they should be shown on an attached sheet.)

Invention Disclosure from the Virginia Department of Transportation 127 19. Witnesses* This invention was disclosed to and understood by me: Signature Date Signature Date *Witnesses should be persons who are able to understand the technical aspects of the invention. Reviewed and Approved: (Employee’s Immediate Supervisor) (Agency Head)

Next: Appendix E - Non-Disclosure Agreement (NDA) from the New York State Department of Transportation »
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TRB’s National Cooperative Highway Research Program (NCHRP) Report 799: Management Guide to Intellectual Property for State Departments of Transportation documents guidance on how agencies can manage the copyrights, patents, and other intellectual property that may be used or produced as a byproduct of the agency’s usual business activities.

In addition to the report, a PowerPoint summary of the research is available online, as well as a webinar that was held on this topic.

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