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Invention Disclosure

FITT

(Fostering Interregional Exchange in ICT Technology Transfer)

2 | 31.03.2010 Invention Disclosure Partner Logo

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


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.


Three main sections


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


When?

Timing

Implemented at INRIA in July 2008


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


Pros & Cons

PRO’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

An effort to go beyond administrative facts 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

CON’s

For some, the template can be seen as too lengthy


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


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


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


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

www.fitt-for-innovation.eu invention disclosure fitt (fostering interregional exchange in ict...

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