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Office of Intellectual Property Administration

OIPA

Invention Disclosures

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About OIPA

Faculty Manual on Intellectual Property

Invention Disclosures

The Invention Disclosure Requirement

According to §F of the Faculty Manual "employees shall disclose patentable inventions and discoveries to OIPA for review. The Executive Director of OIPA will provide assistance in filling out forms for disclosure. Invention Disclosure forms may be found at http://www.wsu.edu/~oipa/agreements.htm."

When should I submit an invention disclosure to WSU’s Office of Intellectual Property?

There are no hard and fast rules for when an invention disclosure should be submitted. However, following these two rules will avoid the submission of a late invention disclosure in most situations:

1) Submit your invention disclosure well in advance of any publications; and

2) Submit your invention disclosure when you have conceived the idea of the invention and have either proven the concept, or determined how it can be accomplished (preliminary data indicating utility and/or an actual reduction to practice is most helpful, but the disclosure need not wait for the data in some situations).

In addition, a basic understanding of certain patent laws will provide a better understanding of when to submit an invention disclosure form and why it is important. There are three general reasons for submitting an invention disclosure form on time: 1) to beat the “bar date” 2) to document the conception of your invention, and 3) to move your invention from your lab bench to the marketplace.

1) Beat the “Bar Date”: The bar date is the date beyond which patent rights are lost due to a prior "enabling" public disclosure. In the U.S., the bar date is one year after the first date of public disclosure. In most foreign countries, the bar date is the day that the invention was publicly disclosed.

Bar dates can be created not only printed publications, but also oral disclosures, offers for sale of the invention, public uses of the invention, and other events. Under US patent law, a public disclosure includes any description of the invention that would allow another to duplicate it or put it to use. This includes journal publications, graduate dissertations submitted to the library shelves or microfilm, posting on the web, submissions of abstracts for books, poster presentations, oral presentations at public meetings, and sometimes grant proposals[1]. Hence, faculty should submit an invention disclosure prior to any publication or public disclosure in order to beat the bar date.

2) Document the Conception of Your Invention: Invention disclosures not only allow you to avoid the adverse effects of a bar date, but they also provide an excellent way of documenting the conception of your invention. In fact, other Universities often entitle their disclosures forms as both “invention disclosures” and “invention recording forms.” The questions on the invention disclosure will prompt you for all of the most relevant information to properly document the conception of your invention. Documentation of your invention is important in case certain issues arise, such as when another inventor claims to have invented the invention before you did.

However, keeping a good lab notebook should provide adequate documentation as well.[2]

Hence, you can submit a disclosure when you conceived the idea of the invention and you wish to have it documented in a formal fashion or when you have either proven the concept with data or determined how it would be accomplished with data. Preliminary data indicating utility and/or an actual reduction to practice is most helpful, but the disclosure need not wait for its completion.

3) Move Your Invention From Your Lab Bench to the Marketplace: An invention disclosure provides an opportunity to explore the possibility of private sponsorship and industrial collaboration on your research. It raises the possibility that your work may eventually enjoy commercial reality, which allows you to enjoy the satisfaction of contributing to the practical use of technology and directly benefiting humanity. Moreover, if a transfer to the marketplace is successful, you may enjoy a portion of the royalties and fees generated from your invention.

The process of transferring your invention to the marketplace does not start until you submit an invention disclosure. The invention disclosure allows our office to examine the patentability and market potential of your invention. A candid and complete invention disclosure will greatly facilitate the process. Hence, your invention disclosure can be the most critical step in the process of commercializing your invention.

[1] A grant proposal can also result in a loss of patent rights, if certain precautions are not taken. To avoid the adverse effects of a research proposal, the researcher should take the following steps: 1) mark each page as confidential and include a confidential legend on the front page, 2) accompany the grant proposal with a cover letter that provides the rational and conditions for confidentiality, 3) avoid direct and definite predictions concerning the results of the research (i.e. use statements like “Our research may show that”) 4) include an additional disclaimer at the top of the specific aims section, saying “The following information is proprietary and confidential and may not be released without the prior written approval of the principal investigator.” For additional information on how to protect your invention when submitting an invention disclosure and sample draft letters, please contact our office.

[2] Keeping good records of the invention process can maximize the protection of your interest for several reasons. First, the United States awards patent rights to the “first and true” inventor. An inventor can establish that they are the first and true inventor by showing they first conceived of an invention first and diligently reduced it to practice. Second, the United States will not award patent rights if another has already published the invention. In some circumstances, however, an inventor can eliminate the prior publication by showing prior conception and reduction to practice. Third, the United States will only award a patent to the inventors that actually conceived the invention. It may become necessary to establish which persons in a group are inventors or to prove that someone else stole your invention. And Fifth, the USPTO generally recognizes the inventors as the owners of an invention. However, it is recognized that inventors may assign their rights to inventions through employment agreements. It may be necessary to establish whether an invention was conceived prior to a change in employment, to determine whether the new employer has an interest in the invention.

It can be difficult to convince a judge or the USPTO to believe your testimony on the above issues. After all, you may have a stake in the outcome. Hence, it is critical to establish credibility by using collaborative evidence. A properly kept laboratory notebook can greatly increase your credibility with the judge. The notebook should include the conception of you invention (clear written descriptions of your ideas) as well as experiments and results. Notebooks should be in ink, clear, without lengthy spaces. The notebook should also be signed, dated, and witnessed by an unbiased and competent person often. A notebook kept in this way can be strong evidence to convince a judge or the USPTO that you are the first and true inventor.

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