Previous sections of this book have dealt with the management of the research and development / innovation processes using both traditional stage-and-gate processes as well as a lean / agile processes. It is during those processes that IP creation and documentation occurs.
Invention Disclosure has to be conducted real time to be effective and efficient. For ongoing research or serendipitous ideas and discoveries, most corporations require personnel to enter ideas into a notebook (electronic or hardcopy) daily. Some also require these entries be read and understood by another technically qualified person and that this reading and understanding be documented as well. This process is quite uniform across most organizations. Below is an example of the process taken from the University of Texas that is found to be effective and efficient in for-profit organizations as well.
An inventor’s first step in the commercialization process is to submit an invention disclosure. This is the beginning of a relationship between a researcher and the employer. By submitting an invention disclosure, the inventor enables the employer to offer assistance and support throughout the commercialization process if the employer asserts its interest in the technology.
An invention disclosure is a confidential description of an invention submitted by the inventors to the employer to initiate the commercialization process. The invention disclosure addresses technical aspects of the technology, such as the science behind the invention, its advantages over prior art, its potential drawbacks, and its scope of use. In addition, the invention disclosure addresses legal matters (such as IP ownership and encumbrances). By submitting a disclosure, the inventor enables the employer to offer assistance and support throughout the commercialization process if the employer asserts its interest in the technology.
An invention disclosure should be completed and submitted for any inventions, discoveries, research tools, processes, know-how, or software that may solve a significant problem and/or have significant value. The invention does not have to be “market ready.” An employer’s rules often require that an inventor of intellectual property disclose any invention subject to ownership by the employer if he or she believes that there may be commercial potential.
Invention disclosure forms and instructions are available in electronic format from both employers and generic forms on the web. Inventors should save the appropriate electronic document to their computer, complete it, and send to the employer in electronic form, followed by a hard copy with inventors’ signatures. It’s important to fill out the invention disclosure completely—especially inventor information.
It is common and best-practice to submit an invention disclosure as soon as you believe your invention is potentially patentable or may have commercial value. Many employers require inventors to submit an invention disclosure “before it is disclosed to any party outside the employer, to the public generally, or for commercial purposes, and before publishing same.” If in doubt, contact a licensing specialist at the employer to discuss the invention. In any case, submit an invention disclosure at least 60 days before publishing or presenting the invention. Inventions that are publicly disclosed before a patent application is filed may lose patent protection outside the United States. Note that anything that is readily available to the public (a journal paper, abstract, conference presentation, poster session, publication on the Internet, non-confidential research proposal, press release, even a dissertation indexed at the library) that describes the basic ideas in enough detail that someone of ordinary skill in the field would be able to make and use the invention, will limit the IP rights available.
Showing or telling ideas to a person who is not an inventor of the technology and not bound by a non-disclosure agreement may also constitute disclosure, as does selling or offering for sale a prototype of the invention. Be aware that public disclosure of an invention before submitting an invention disclosure may compromise patent rights. Most foreign rights are lost upon first public disclosure or publication. In the United States, the U.S. Patent and Trademark Office allows one year from the date of first publication or public disclosure in which to file for a patent.
All contributors to the ideas leading to an invention should be listed in the disclosure—including the principal investigator, research assistants, students, staff, visiting scientists—whether or not they are not employees.
On jointly owned inventions with other research entities, if there is not already an agreement in place governing how the invention will be handled, the employer will typically enter into an “inter-institutional agreement” with the other institution that covers who will take the lead in prosecuting the patent and marketing the invention, how patent expenses will be handled and how commercialization proceeds will be shared between the entities.