Best Practices for Drafting Invention Disclosure Forms | Saul Ewing LLP
An invention disclosure form is a document used to capture detailed information about a new invention or discovery. The first step in the patent application process, the form plays a crucial role in protecting intellectual property. A well-crafted invention disclosure form will create an accurate record of the invention, enable an assessment of patentability and market potential, and facilitate decision-making on issues including patent application drafting, the timing of application filing, inventorship, resource allocation, and commercialization efforts. Below are guidelines for drafting clear and complete invention disclosure forms.
I. What is an invention disclosure form?
- An invention disclosure form is a confidential document in which an innovator (e.g., an employee of the entity seeking a patent) records their discovery, including any supporting data and results.
- Invention disclosure forms ideally provide sufficient information (1) to permit decisionmakers to assess whether the discovery in question has merit and/or commercialization potential, and (2) to permit patent counsel to prepare a detailed patent application concerning the invention.
- Historically, invention disclosure forms have served as evidence of the date of invention, together with other data such as signed notebook entries, emails, etc. It is worth noting that since March 16, 2013, the U.S. is a “first inventor to file” system under the Leahy-Smith America Invents Act. As such, the date of patent application filing has become much more relevant than the date of invention. That said, invention disclosures are useful for addressing charges of derivation (i.e., when the invention created by an innovator is used to file a patent application by others).
II. What information about the invention should be included in the invention disclosure form?
- A title of the invention.
- A description of the invention with sufficient information such that a skilled person in the same field could understand why the discovery is novel, inventive, and important compared to what is already publicly known in the art (i.e., the “prior art”). Such a description should include:
- A brief background and description of the problem that was solved.
- A thorough description of the elements of the invention, and how they relate to solving the problem.
- A description of the materials and methods, if any, used to reduce the invention to practice.
- A description of any elements of the invention that are believed to be novel, inventive, surprising, unexpected, and/or unusual compared to what is already known in the field (including the innovator’s own work that has been publicly disclosed).
- A description of any advantages of the invention over what is already known and/or existing solutions to the problem, including economic advantages.
- Known relevant prior art.
- In accordance with the duty of disclosure, if the innovators know of relevant publications in the field which are directed to the same or closely related technologies, those publications should be identified.
- Relevant prior art includes the innovator’s own work that has been published or otherwise publicly disclosed.
- Ideally, a description of key elements that differentiate the invention from the related prior art should be included.
- A description of any disadvantages or limitations of the invention.
- A description of any planned future directions, in particular over the next 12-18 months.
- A list of any support that funded the invention, in particular U.S. government funding including the funding agency and the grant / contract number.
- Any posters, presentations, abstracts, draft manuscripts, theses, etc., associated with the invention should be included for review and for use in drafting the patent application.
- A description of any potential commercial interest in the invention, including if the innovators have been approached by any companies or investors with interest in the technology.
- A description of the invention’s relation to any prior invention(s), if applicable.
III. What information regarding public disclosure(s) of the invention should be included in the invention disclosure form?
- Any types of public disclosure, whether past or planned, including the exact date of disclosure.
- Disclosures include any presentations at scientific meetings, job talks, public seminars, websites, publications, and oral disclosures to anyone outside of the inventive entity who has not signed a confidentiality agreement.
- Intradepartmental presentations are usually not considered public; however, Grand Rounds might be.
- A listing of relevant grant applications should be included as a precaution. Although grants themselves are generally considered confidential, abstracts may publish if the grant is funded.
- If the invention has already been publicly disclosed, patent rights may still be pursued in certain jurisdictions, including the U.S., within given time limits from the date of disclosure.
IV. What information about the innovator(s) should be included in the invention disclosure form?
- An inclusive list of each person (i.e., “innovator”) who made a contribution to the conception of the invention and/or to the reduction to practice.
- A brief description of each innovator’s contribution.
- Each innovator’s address, citizenship, and contact information.
- Note that inventorship is a legal determination based in part on the claims of the patent application and thus the innovators themselves do not determine who is (or who is not) an inventor.
V. What information regarding rights to the invention should be included in the invention disclosure form?
- It is best practice to include assignment language that transfers rights from each of the innovators to the employer / relevant entity (e.g., the company or university).
- All innovators should sign and date the “assignment block” of the invention disclosure form.
