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. www.FITT-for-Innovation.eu

1. Invention Disclosure
FITT
– Fostering Interregional Exchange in ICT Technology Transfer –
www.FITT-for-Innovation.eu
Except where otherwise noted, this work is licensed under a Creative Commons Attribution 3.0 License.

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 foreseen
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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.
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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)
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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 policy
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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 collectively
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7. When?
Timing
 Implemented at INRIA in July 2008
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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 disclosures
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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 alone
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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 beginning
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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 alone
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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 potential
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13. Suggested Readings
 Link to bibliography:
 Link to code book:
Invention Disclosure
Patent
Intellectual Property Protection
Confidential Information
Know-how
 Link to related websites:
www.inria.fr/valorisation/index.fr
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