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About
MIHR
PIPRA
Fiocruz, Brazil
bioDevelopments- Institute
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Why This Topic Is Important
This section approaches questions of inventorship and how to document and disclose inventions in order
to support applications for intellectual property protection. Institutions need clear policies on laboratory
record keeping, disclosure of inventions, and rights of inventors. This section may be helpful in educating
scientists at your institution about issues of intellectual property.
Key Implications and Best Practices: Setcion 8
- Arguably, the minds of scientists operate differently from those of bankers, politicians, and licensing executives. Similarly, those engaged in managing intellectual property in public sector institutions face different challenges than do scientist-inventors. The differences can be a source of much tension, but such tension can be preempted if scientists are given an opportunity to learn the basics of IP management, including best practices, in terms of data and information management related to inventions. Public sector institutions and companies alike should offer and require limited, but essential, training to every scientist, student researcher, and technician when he or she joins a research program.
- Such training programs can be provided as a series of short seminars or even half-day orientation courses. And they are most effective if the institutions have clear IP policies that include matters related to ownership of inventions, the duty to disclose inventions, and laboratory notebook keeping. The latter is common practice in any private sector R&D center. Comprehensive research records are fundamental to good research practices in science, IP management, and regulatory areas.
- University faculty, staff, and students do not have to become patenting experts. Keep any such training programs simple and practice oriented. Generally, the intricacies of patenting legislation is not what motivates a scientist; rather, it is a vision of how his or her invention can eventually make a difference in people’s lives. The IP management training programs should thus be practical and offered by technology transfer personnel that will be interacting with scientists rather than by lawyers. Contractors can be useful as facilitators. Part of the aim of such training is team building that encourages communication between your office and the scientists in your institution. It is part of creating a culture of IP awareness.
- It is good practice to include senior management as participants in the training sessions. This is especially useful when the training program includes case studies.
- Prepare simple brochures and Web sites that encourage scientists to contact you with their questions and inventions. Similarly, make an effort to attend seminars given by the researchers in your organization. It is a great way to show your interest in their activities and to build a good understanding of what the researchers actually do. Overall it helps to get scientists involved in all phases of protecting and marketing their inventions.
 Abstract
Documentation of Inventions
by W. Mark Crowell
Abstract:
Documentation of research is a critical aspect of best practices in IP management. This is true because research and development activities that give rise to inventions must be thoroughly documented in order to successfully manage patents, including determining patentability, drafting and prosecuting patent applications, and later, if the need arises, protecting patents against third party challenges, for example, a patent interference proceeding. Maintaining, for each invention, a complete record of who made the invention, when it was made, and how it was made, must therefore become a formal component of a university’s policy and training programs and must be carried our according to specific protocols. An organized and methodical approach to documentation will support patent management, provide a readily accessible source of critical information, ensure the capture of maximum value of inventions, and protect patent portfolios against challenges when, and if, the need arises.
Abstract
How to Start–and Keep–a Laboratory Notebook: Policy and Practical Guidelines
by Jennifer A. Thomson
Abstract:
A laboratory notebook is an important tool that goes well beyond research management and can have important implications for issues ranging from intellectual property management to the prevention of fraud. This chapter discusses the key elements of a laboratory notebook, types of notebooks, what should be included in the notebook, ownership issues, archiving, and security. The chapter provides sample notebook pages that illustrate some of the recommended practices.
Abstract
Invention Disclosures and the Role of Inventors
by David R. McGee
Abstract:
This chapter is intended to assist intellectual property professionals, in working with inventors, to develop a high-quality invention disclosure and, eventually, to prosecute a patent application. Major topics include the importance of data records, utility and reduction to practice of inventions, understanding prior art (including the inventors’ own art), and determination of inventorship.
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