Invention disclosure

WIPO's Patent Drafting Manual describes the invention disclosure form as a tool researchers or engineers can fill out to describe in brief a potentially patentable invention¹. Some organizations have a patent review committee that periodically assesses invention disclosures and makes recommendations on what the organization should be patenting¹.

The WIPO manual's sample form (its Annex B) has 13 numbered sections, and the manual advises adapting it to the legal requirements of your own jurisdiction¹. The sections cover the following¹:

• The proposed title and the field of the invention¹.
• Background and related art: the technical problem addressed, the closest related art and the advantages of the invention¹.
• Drawings and a written description of the invention, with other related documents attached¹.
• The inventors, with name, residence address and citizenship, in a section that must be completed¹.
• Dates of product testing and release, including general release or sale and offers for sale¹.
• Disclosures: any public disclosure or use and whether it was under a nondisclosure agreement, the first internal disclosure, published articles, advertisements and press releases, disclosures outside the company, and upcoming trade shows or conferences¹.

The manual explains why the dates and inventor details matter: certain key dates are needed to verify that the invention is still patentable, and information on the inventors lets the drafter identify the possible universe of inventorship for the application¹.

• Time bars. Because of potential time bars to filing, for example after a public disclosure of the invention, the manual says the patent drafter should accept the form whatever its condition on arrival and then determine whether a time bar has arisen or is about to arise¹.
• Evidence. A disclosure form provides evidence of inventorship, especially when co-signed by a non-inventor, and may offer secondary evidence if the inventor has assigned the rights to a third party such as an employer¹.
• Deciding what to patent. Whether an invention is patentable cannot be determined without an understanding of the prior art, and the drafter explores with the inventor the problem solved in light of the prior art¹. See patentability search.
• Risk. The manual warns that a defendant in infringement litigation might use the form as evidence for a particular construction of the claims, or to argue inequitable conduct if the form mentions prior art that was not disclosed. It recommends training so staff complete forms properly¹.

In the US, an invention disclosure can also be a legal obligation. Under 35 U.S.C. 202(c), each funding agreement with a small business firm or nonprofit organization must provide that the contractor discloses each subject invention to the federal agency³. A subject invention is any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement².

• Time limit in the statute. The contractor must disclose within a reasonable time after the invention becomes known to contractor personnel responsible for the administration of patent matters, and the Government may receive title to any subject invention not disclosed within such time³.
• Time limit in the standard clause. The standard patent rights clause in 37 CFR 401.14, which is part of the rules on inventions made by nonprofit organizations and small business firms under government funding agreements, sets two months after the inventor discloses the invention in writing to contractor personnel responsible for patent matters⁴.
• Content of the report to the agency. A written report that identifies the contract and the inventors, is sufficiently complete in technical detail to convey a clear understanding of the invention, and identifies any publication, on sale or public use and whether a manuscript has been submitted for publication⁴.
• Inventor to contractor. The contractor agrees to require its employees, other than clerical and nontechnical employees, to disclose each subject invention promptly in writing, in a format suggested by the contractor, which should require as a minimum the information needed for the report to the agency⁴.
• Election of title. The contractor elects in writing whether to retain title by notifying the agency within two years of disclosure to the agency. Where a publication, public use, sale or other public availability has started the one-year statutory period, the agency may shorten this to no more than 60 days before that period ends⁴.

Two documents are therefore involved: the inventor's written disclosure to the contractor, and the contractor's written report to the agency⁴.