Invention Disclosure: Everything You Need to Know
An invention disclosure is the completion of a form that represents the first recording of the invention and establishes the date and scope.8 min read
What Is an Invention Disclosure?
An invention disclosure is the completion of a form that represents the first recording of the invention and establishes the date and scope.
Invention disclosures should include a comprehensive description of something novel and nonobvious explained in a way that allows anyone of ordinary skill in that particular field or industry to reproduce the invention on their own.
Invention disclosure documents have been used to defeat challenges to dates of invention, inventorship, invention scope, and prior art. If you improperly write your invention disclosure, it can result in a complete loss of your patent rights down the road.
What to Include in an Invention Disclosure
Invention disclosures should include:
- The title of the invention
- The inventor's name, address, and phone number
- When and how you thought of the invention
- Date of the actual reduction to practice (this may be the same as the date of invention)
- Date of public disclosure of the invention
- A description of the invention which should include:
- What makes it novel, useful, and better than any prior art
- The purpose of the invention (what will it be used for?)
- Drawings, sketches, or photos of the invention with all the parts labeled
- How the invention is used
- What features of the invention are different from prior art and how do they offer better results?
- The advantages of this invention over other prior art
- Any results you have from testing the invention
- A set of keywords to help the patent attorney find the right classification for the patent
- Research funding sources if there were any
- References to related patent searches done by the inventor
- A list of potential competitors
- Witnesses who are scientifically competent and understand the details of the invention
- Signatures of all inventors involved
- An electronic receipt of the filed invention disclosure form
How to Prepare Your Staff For Invention Disclosures
- Educate inventors before they disclose
If you have a business where people are inventing, researching, or creating new products that may eventually require a patent, you should be sure to educate your staff on the invention disclosure process from the beginning. You should have a program that explains the policies, practices, and practical understanding of the patent process. The program is not a one-off explanation but a continuous education process.
- Duty to disclose
Make sure that all of your employees are aware of and follow the policy related to duty to disclose and invention. Most companies have a policy that says employees need to disclose all inventions that they make during the course of their employment with that company.
- Support your inventors
Inventors need to feel confident that their inventions are going to be thoroughly evaluated for their patentability and commercialization potential. You do not want to alienate your inventors by treating them as unimportant. Be sure that you give careful attention to each invention disclosure, no matter what the content.
- Understand your company's intellectual property policies and your country's intellectual property laws
The Intellectual Property (IP) official at your company needs to be the expert on all IP policies and practices. They then need to explain these policies to each inventor.
- Understand the inventor's timing of public disclosures
A common complication of invention disclosures is a publication or pending publication. If a publication is about to happen, you need to file a provisional patent application to avoid loss of patent rights.
It is important that you completely understand the nature and content of the intended publication so that you can figure out whether it will contain a disclosure of the invention. It's also vital to know when the invention will be disclosed. You can do this by questioning each inventor to find out when a publication or abstract might happen.
- Inventorship versus ownership
Disclosure of an invention means that the invention has been described in complete detail. Assignment means that the ownership and legal title to the invention have been given to another party.
Companies generally combine the duty to disclose and the assignment of inventions on one form that is then signed by any new employees when they first report for work.
- When an invention is co-owned
Projects between two separate companies or organizations are a common way to collaborate on ideas and inventions. These projects should be clearly described in a contract, grant, or inter-institutional agreement. The document should address co-inventorship and co-ownership of any intellectual propertyi developed during the term of the project.
Never assume that ownership will be shared without expressing it in writing. If something ish invented by co-inventors from two different companies and there was no contractual agreement, then a decision has to be made about how the invention will be disclosed.
When to Disclose an Invention
You should disclose an invention as soon as it is deemed an invention. Even if a patent application never gets filed, an invention disclosure can often offer the invention some protection against other patent applications. This is particularly helpful in the U.S. where first-to-invent takes precedence over first-to-file.
Keeping Invention Disclosure Forms Updated
Usually, when an invention disclosure is submitted, it represents continuing research. This means that it might not meet the standards of patentability or commercialization potential to call for a patent filing. If research continues and the invention changes in any way, you need to make sure that you complete and updated invention disclosure form; otherwise you risk your first form becoming obsolete. If the original disclosure no longer represents the current state of the invention, there is no protection.
If the second invention disclosure has the best method of practicing the invention, then the date of invention will change to become that of the second invention disclosure form and not the first.
Where to Submit an Invention Disclosure
If an inventor is working for a company and has signed a duty to disclose, then the invention disclosure needs to be submitted where the employer's policy says to. You used to be able to submit an invention disclosure to the U.S. Patent and Trademark Office (USPTO). They had a program that allowed investors to submit invention disclosures directly to them. The USPTO decided that this program was no longer needed. Many inventors believed that filing an invention disclosure gave them the legal protection of a patent pending status.
If you are an individual investor, you can now simply file a provisional patent application instead of an invention disclosure, which actually gives your invention a patent pending status.
Confidentiality of Invention Disclosures
All invention disclosures should be submitted confidentially to avoid any potential undesired publication of the invention before you file the patent application. When the disclosure is made by an employee to another employee, it should be clearly understood that the disclosure is confidential.
In very large companies and organizations, the presumption of confidentiality might not exist. This means that if the disclosure is challenged by an outside party, it may be deemed a publication. To avoid this happening, it is always important to verify confidentiality before disclosing any information.
An inventor's certificate can sometimes be filed instead of a patent application and is similar to an invention disclosure form. The certificate includes a detailed description of the invention and a lot of the same components as a patent application.
Unlike an invention disclosure form, an inventor's certificate is part of a legal process that publicly recognizes the inventor for a particular invention on a specific date.
An inventor's certificate is not a patent and doesn't offer any of the intellectual property protection provided by a patent. Most countries use the certificate as a monetary award to the inventor when they don't plan on patenting the invention.
Sample Invention Disclosure Form
Name of Inventor(s):
Name of Invention:
- Give a short explanation of the invention.
Details of the Invention:
- What parts or steps make the invention?
- What does each step or part contribute to the invention?
- Which parts are new to this invention and which are old?
- How do the parts interact to make the invention work?
- For each part, explain if it is essential to the invention.
- Use labeled sketches if possible.
Consider the alternative ways of building or operating your invention. Explain them here.
- Discuss the structural alternatives such as ways the parts could be changed, substituted, or left out.
- Can the invention be used for something other than what you created it for?
- When will the invention not work?
- Are there any ranges of size, weight, or pressure that prevent the invention from working properly?
- Do certain parts need to be made of specific substances?
Frequently Asked Questions
- Why should I submit an invention disclosure?
In many institutions and companies, researchers are required to disclose all intellectual property that could constitute an invention or a copyrighted work. This is especially true if any part of the funding comes from that institution or company. Federal law requires you to disclose inventions that have been federally funded. If you do not disclose your inventions promptly, you could lose significant rights to your invention.
- How do I know if my discovery is an invention?
It is recommended that you submit disclosures for anything that you think might solve a problem or offer significant value. If you feel that it is something new, even if it is not a fully formed invention, you should consider disclosing it to your organization.
- What is the legal definition of an invention?
United States patent law defines an invention as something that meets the following three criteria:
- Novel: The invention needs to be different from ideas that already exist. This doesn't necesserily mean that every aspect of the invention needs to be novel.
- Useful: For an invention to be patentable, it needs to have a use or application or be an improvement on something that already exists.
- Non-obvious: The invention can't be obvious to someone of ordinary skill in the same field. It is usually demonstrated by showing that the practice of the invention yields surprising or unexpected results.
Should I list visiting scientists or collaborators from other organizations on my Invention Disclosure Form?
Anyone who contributed ideas that lead to a discovery should be mentioned in your disclosure.
Should I disclose my research tools?
Yes. Any research tools, including antibodies, vectors, plasmids, cell lines, mice, as well as any materials used as tools should be disclosed.
- When is the conception of an invention?
The conception of an invention is when someone has developed an idea that is novel, nonobvious, and exists in enough detail that another person could recreate it.
It doesn't necessarily need to exist in actual physical form yet, but it does need to be fully thought through.
- Can laboratory notebooks be used as an invention disclosure?
While most laboratory notebooks are relied on to figure out the actual date of invention and to determine the inventor, they can't usually be used as an invention disclosure. They don't contain enough information, they are often illegible, and they are not witnessed.
If the lab notebook is kept properly with enough information, proper witnessing, and is clear and easy to read, then it can be used as an invention disclosure. If you would like to use your laboratory notebook as an invention disclosure, make sure to include a detailed description of the invention and that those pages are dated and signed by the inventor and witnesses.
- What is considered a public disclosure of an invention?
Anything that makes it easily available to the public such as a journal, a conference presentation, a publication on the internet, or a dissertation indexed at the library. If the published work describes the basic ideas in enough detail that someone else would be able to make and use the invention, then this is seen as a public disclosure of the invention.
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