FITT Toolbox: Invention Disclosure


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Invention disclosure can be formalised by using a template, filled in by inventors with the help of a TT officer. The template presented in the Toolbox includes administrative and contractual information, invention description and transfer strategy foreseen and the latter to be adapted in respect of the patent policy implemented by the public research organisation. The procedure being clear and supervised by TTO, it allows to better trace inventions and identify transfer opportunities.

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FITT Toolbox: Invention Disclosure

  1. 1. Invention Disclosure FITT– Fostering Interregional Exchange in ICT Technology Transfer – www.FITT-for-Innovation.euExcept where otherwise noted, this work is licensed under a Creative Commons Attribution 3.0 License.
  2. 2. Invention disclosure template An invention disclosure template:  To be filled in by inventors with the help of a TT officer (to go past purely administrative forms)  With respect to the patent policy implemented by a PRO  With a focus on the transfer strategy foreseen2 | March 2010 Invention Disclosure
  3. 3. Common definition Common definition An invention disclosure, or invention disclosure report, is a confidential document written by scientists or engineers for the use of organisation’s patent department, or by an external patent attorney, to determine whether patent protection should be sought for the invention.3 | March 2010 Invention Disclosure
  4. 4. Three main sections Administrative and contract information on IPR • Standard inventorship information • Publication foreseen, publications already done and their impact on the invention • Contract information if invention is coming from collaborative research Invention description • Standard questions on invention description + new, inventive and industrial application criteria • Software association (and its importance)4 | March 2010 Invention Disclosure
  5. 5. Three main sections Transfer strategy • Formalised strategy of building up a patent portfolio in an INRIA strategic domain • Start-up project • Identified standardization target • Identified and concrete opportunity of transfer through a partnership ➔According to the PRO patent policy5 | March 2010 Invention Disclosure
  6. 6. Obligations at INRIA  Researchers being civil servants, they are obliged to disclose their invention to their employer  The decision to patent or not belongs to the PRO  If they contribute to a patent without informing their employer, they do not receive the patent bonus (introduced by a French law in 2005)  Conversely, the Transfer and Innovation department puts a lot of efforts to transfer the patents, with income being partly distributed to inventors (see Practice Financial incentives – Income distribution)  Strong recommendation to work collectively6 | March 2010 Invention Disclosure
  7. 7. When?Timing  Implemented at INRIA in July 20087 | March 2010 Invention Disclosure
  8. 8. Who?Stakeholders  INRIA headquarters, in particular Transfer and Innovation Department – set up the new policy, follow-up some part of requests  INRIA regional centres: TT officers, researchers  More recently, technology transfer associates (in a given domain) are involved in the analysis of invention disclosures8 | March 2010 Invention Disclosure
  9. 9. Pros & Cons PRO’s CON’s  Building researchers’ awareness of IP protection issues and on the necessity of having a transfer strategy  Implementation of the patent policy  A way to trace inventions  For some, the template can be seen as too  An effort to go beyond administrative facts lengthy and to have a transfer oriented view with the involvement of transfer staff since the beginning  Audio conference to analyse the invention  Collective effort where the researcher is not left alone9 | March 2010 Invention Disclosure
  10. 10. Why ? (1/2) Rationale:  Researchers at PROs were quite often left alone to fill in invention disclosures focusing mainly on technical details  The process was not clear and not sufficiently supervised:  Invention disclosure are now, for some technologies, a first step in identifying transfer opportunities  Transfer strategy is to be foreseen soon in the process, possibly changing or letting it evolve over time  It is now a collective effort which starts from the beginning10 | March 2010 Invention Disclosure
  11. 11. Why ? (2/2) Impact:  Building researchers awareness of IP protection issues and on the necessity of having a transfer strategy  An implementation of the patent policy  A way to trace inventions  An effort to go beyond administrative facts and have a transfer oriented view with the involvement of transfer staff since the beginning  A collective effort where the researcher is not left alone11 | March 2010 Invention Disclosure
  12. 12. Outcome  The process has been formalised and implemented in INRIA activities; every invention disclosure should be done using the new template (with possible iterations)  An audio-conference is organised with the TT officer, the Transfer and Innovation department and the inventors to analyse precisely the invention and its potential12 | March 2010 Invention Disclosure
  13. 13. Suggested Readings  Link to bibliography:  Link to code book: Invention Disclosure Patent Intellectual Property Protection Confidential Information Know-how  Link to related websites: | March 2010 Invention Disclosure