1.4 Managing the Invention Disclosure

1.4.1 The Invention Disclosure and Its Basic Elements

The invention disclosure is a document that formally reveals the invention to those outside of the inventor circle. For most institutions, this is the first step in the Tech Transfer process. The invention disclosure provides a detailed description of the invention in written form, beginning the process of building the invention into a specific and real entity. It enables the TTO to open a file and to begin to manage the invention, its IP, and the commercialization process. It also allows the TTP to learn and appreciate the true nature and value of the invention. From an administrative standpoint, the invention disclosure provides essential information about the inventors, associated funding, relevant publications, proprietary materials of others used to make the invention, and other critical details. The disclosure is typically the first and foremost method of establishing the invention as a real entity and is thus a document of potentially significant value. 

1.4.2 The Invention Disclosure Form

The invention disclosure form serves multiple purposes. Often TTOs require a great deal of information from the inventor at the time of submittal – this can be seen by busy inventors as nuisance bureaucracy. Some TTOs ask for too little information – risking future loss of IP rights, incorrect inventorship or failure to acknowledge funders’ rights. Many TTOs have developed their Invention Disclosure Forms over many years – improving their scope, content and user-friendliness in the process. 

1.4.3 Managing the Invention Disclosure Process

An effective invention disclosure form and process is like the roots of a tree. Done well, the IP and commercialization process will be successful. Done poorly, the process is fraught with problems and headaches at best, and complete loss of IP and potential legal problems at worst. Once a formal invention disclosure form has been created, the TTO must have a system for effective management of submitted forms. In tandem with this, the TTP must know how to orchestrate the invention disclosure process from start to finish. Of course, the TTP does not (and should not) need to handle all administrative aspects of the form – this is for the TTO staff. However, the TTP is the overall orchestrator of the process.

1.4.4 Quality Control of the Invention Disclosure

The invention disclosure form typically contains a lot of information, including the technical content of the invention, administrative and content for the legal basis of the IP. Some of the information is more important than others, depending on the stage of the overall process, and the issue to be addressed. Early on in assessing the invention disclosure, the TTP should be aware of key information, including inventor names and affiliations, funding sources, others’ biomaterials used to make the invention, publications, and potential commercialization concepts. 

1.4.5 Prior Art, Inventiveness and Market Relevance

The most critical discussion between inventors and TTPs is about prior art and inventiveness of a particular invention. A fundamental understanding of inventiveness (in the United States, the equivalent concept is “non-obviousness”) of an invention is necessary to determine the scope of potential patentability AND to assess the market relevance (and therefore commercial viability and economic value) of the invention. To understand inventiveness, TTPs must compare the invention with any patents and publications that are similar in any way (i.e., the “prior art”). Market relevance means that one or more of an invention’s inventive features have some importance in at least one commercial (market) application. Such importance almost always has an economic basis. Typically, an inventive feature of an invention confers some form of economic benefit that ultimately produces a more profitable outcome.