Elements Included in Invention Disclosures

Also listed in the disclosure should be:

• 1. The most relevant potential application of the invention. Usually a company will supply a checklist of its business units along with an option to specify uses outside the company’s current product lines.
  2. A concise description of the invention. A clear description which explains the idea and how it works, without the excessive use of jargon. This description is an “Abstract” of the invention. A more complete discussion of your idea can usually be attached to the Disclosure if you think it would be helpful in explaining your invention.
  3. From the above description, expand on the invention’s novel and unusual features: What makes the invention superior to the gold standard technology already in the marketplace?; What problem does the invention address and solve – i.e., what is the need?; What are other possible uses for the invention?
  4. Indicate how you envision the invention will be utilized by potential commercial partners. Please provide a brief description of the end product. Please provide a sense of the size of the market affected by the unmet need. For instance, estimate of the number of patients who have a disease who would need the invention.
  5. What is the unmet need and how will the invention satisfy the current unmet need?
  6. Please address present disadvantages or limitations of the invention? How can they be overcome?
  7. Please provide the date, place and circumstances of any actual or anticipated public disclosure of this invention, e.g. awarded grant abstract, oral presentation, poster session, meeting abstract or journal publication, conversation (e.g., have you had conversations with anyone regarding your invention at meetings, informal get-togethers, meals or other social encounters?).
  8. Please provide the supporting data (in vitro, in vivo and/or clinical data) and analysis as an attachment to the Invention Disclosure and also provide the dates and locations of the supporting reports and lab records.
  9. Please attach any photographs or diagrams or prototypes to the Invention Disclosure. If a prototype is available, indicate when and where it was made and who contributed to the manufacture and/or design, and any contracts/invoices for the work.
  10. Please indicate the further research and funding that will be necessary for commercialization of the invention. Generally, what is the future research plan to further develop and test invention? What other “enabling” technology would be necessary for the invention to work?
  11. Are there any known related patents, inventions or publications, either by any of the inventors or any other person? If so, please indicate here the names of these scientists or any patent application number, issued patent number or journal article information and attach any available information or copies.
  12. Please list ALL funding used to generate data for this invention (please indicate each grant that provided funding for the invention even if the grant aims were not specifically related to the invention). Such information should include any funding from federal organizations, state organizations, foundation, non-profit organizations, commercial entities, or gift from individuals or organizations. If you did not use any funding to generate the invention, please explain why.
  13. Please list ALL materials received from any third party(ies) with or without Material Transfer Agreements (MTA) that were used to generate data for this invention. Include any research reagents, chemicals, sequence information, or other proprietary information which was provided to you with a “Limited Label License” for research purposes only and used in the course of the invention or which are necessary to “make the invention work.” If you did not use any third party materials to generate the invention, please indicate “None”.
  14. Please list ALL types of human samples that were used to generate data for this invention. Please provide the respective IRB control number, IRB approval letter and patient’s informed consent for each type of human samples. If you did not use any human samples to generate the invention, please indicate “None”.
  15. What or who is a source of information on existing technology (e.g. reference books, colleagues, contacts in companies) to help us evaluate the advantages of the invention?
  16. Have any companies or persons expressed interest in the invention? For instance, at meetings, have any companies viewed your poster(s) or enquired after a presentation(s)? If so, please provide the name of the company and/or person and contact information and state whether you have a financial interest in these companies.
  17. Please provide any “key words” to conduct further technology and market research.

Once submitted, these invention disclosure documents should be catalogued and stored in a secure manner so as to preserve all potential IP rights (copyrights, trademarks, patents, trade secrets).  One way to do this is via a laboratory information management system (LIMS), sometimes referred to as a laboratory information system (LIS) or laboratory management system (LMS).  Such a software-based laboratory and information management system with features that include—but are not limited to—workflow and data tracking support, flexible architecture, and data exchange interfaces which fully support its use in regulated environments. The features and uses of a LIMS have evolved over the years from simple tracking systems to an enterprise resource planning tools that manage multiple aspects of laboratory and business development informatics.