Home > Topics > Inventors and Inventions > Invention Disclosures and the Role of Inventors > Editor's Summary, Implications and Best Practices

This chapter is intended to help IP professionals work with inventors in order to develop high-quality invention disclosures.

An invention disclosure is a description of something novel and nonobvious in such a manner that anyone of ordinary skill in the art in question could reproduce the invention. It irrefutably establishes the date and scope of an invention, as well as the identity of the inventor. Properly written disclosures are essential for IP management, preserving IP assets, and eventually harvesting inventions and securing IP rights protection for those assets. Improperly written invention disclosures, however, have caused losses of patent rights.

Before filing a patent for an invention, it is necessary to file an INVENTION DISCLOSURE FORM. It is important to disclose an invention as soon as an invention has been reduced to practice. The chapter explains where to file a disclosure, the required content of a disclosure, and possible confidentiality issues related to disclosures.

The chapter closes by discussing the general format of the INVENTION DISCLOSURE FORM. It touches upon such topics as the importance of data records, the utility and reduction to practice of the invention, the term “prior art,” and how to market intellectual property through an invention disclosure. Carefully kept laboratory notebooks can be used in place of an invention disclosure. An example of an Invention Disclosure Form is provided at the end of the chapter.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

• Invention disclosure is the first step toward obtaining IP protection. Encourage public-sector institutions to establish systems and protocols for proper invention disclosure.

For Senior Management (university president, R&D manager, etc)

• Invention disclosures can help public-sector institutions manage, organize, protect, and exploit IP assets. They are a important component of best practices in IP management.

For Scientists

• Know what an invention is and when you should inform the technology transfer office that an invention disclosure should be made. This may sound obvious but scientists are generally quite bad when it comes to knowing they have an invention. You have many more inventions that you ever think you do.
• Invention disclosures help to protect discoveries made in your laboratory because they record the date that inventions were created and establish inventorship.
• Your technology transfer office can inform you about your institution’s policies regarding invention disclosure and provide you with invention disclosure forms.

For Technology Transfer Officers

• One way to gauge the effectiveness of technology transfer in your organization is to track the number of invention disclosures filed with your office.
• Maintain a filing system for invention disclosures and keep track of your files so that you can determine when or if patent applications should be filed for particular inventions.
• Invention disclosures can be used to develop patent portfolios.
• Invention disclosures can be used to prepare high-quality patent applications.
• Conduct mandatory training sessions on proper invention disclosure.