How Detailed Should Your Invention Disclosure Form Be?

Your IDF (Invention Disclosure Form) needs to be as detailed as needed by your organization. Balancing the length and content of the IDF is crucial, and insights into streamlining invention disclosures can help in achieving this balance.

“If the form is too long, your innovators might disengage from the disclosure process. And, if the form is too short, you might not get enough information to evaluate the innovations”

But there is no one-size-fits-all solution either. Some innovators, such as people in academic or research settings, might be comfortable with longer disclosure forms since they can copy-and-paste information from their academic articles. Other innovators, such as those in private industry, might balk at anything longer than one page due to their busy workloads.

To get the right level of detail from your innovators, you need to balance the competing interests of your developers, your business, and your patent counsel. Here are some factors to consider in creating your invention disclosure form.

Details Matter More Than You Think

Your goal in creating an invention disclosure form is to capture everything your innovators have created. This includes leveraging the value of patent mining in idea management to ensure comprehensive coverage. This obviously includes the IP embodied in your products. But it also includes the other inventions, variations, and embodiments that were set to the side.

For an invention disclosure form to have value in patent mining, you need maximum engagement with your disclosure process. This favors an invention disclosure form that requires inventors to provide a minimal level of detail. Such a form will be less time-consuming and less burdensome to your inventors.

On the other hand, the details of the invention will help your management and your patent counsel do their jobs. Without the details about the invention’s marketable and patentable features, your invention disclosures will not provide the necessary information to evaluate whether to patent the invention.

Must Read: The Ultimate Guide to Choosing the Best Invention Disclosure Software

Various Options for Invention Disclosure Forms

Taking these considerations into account, an organization can customize an invention disclosure form to their own needs. These needs could include:

  • The volume of invention disclosures
  • The personalities of the innovators
  • Whether patent counsel is in-house or at an outside firm
  • The experience level of the innovators with the patent process
  • The experience level of management with the patent process

These needs can be designed to develop an invention disclosure form that performs all the functions described above and meets the needs of the organization. Generally, invention disclosure forms fall into three general categories based on the level of detail requested from the inventors. Choosing a form may be an iterative process with developers providing feedback on what works and what does not work.

Short Invention Disclosure Forms

A short invention disclosure form collects the bare minimum of details from the inventors. One example is provided by Triangle IP. In the default form template provided in the Triangle IP management system, the form has mandatory fields for the title of the invention and the inventor emails and an optional field for a summary of the invention. It also includes fields for use by management, including an idea number, a manager’s email, and scores for evaluating the submission.

This short form will produce maximum engagement from your organization’s innovators. By providing a simple form, the innovators will only need a few minutes out of their busy schedules to prepare and submit the form. If additional details are required later, your management or patent counsel can speak to the inventors.

Short Form As Designed at Triangle IP

Here is how the idea capture form at Triangle IP looks like:

Short Invention Disclosure Form

This form includes fields for an internal tracking number, which we informally call an Idea Number. The inventors choose a title that provides a shorthand for stakeholders to refer to the invention. The title should be detailed enough to summarize the purpose of the invention disclosure.

Quick Update: The inventors can upload this offline form back into the TIP Tool to have all their ideas in one place.

The inventors and the manager(s) responsible for reviewing the invention submission include their contact information. This also provides a way to track who submitted the idea and who are the stakeholders of the idea.

The inventors write a summary of the invention. The level of detail in this field will reflect your organization’s philosophy on invention submissions. At a minimum, the summary should provide enough information for a non-inventor to understand the invention and its most significant features.

Management and patent counsel fill in the remainder of the form. The value of the invention is a subjective rating given by management based on the business need for the invention. Tags identify the subjects covered by the invention and provide a way to categorize and search for the invention disclosure.

The prosecutor email provides contact information for the patent attorney responsible for the case. The patentability rating is a rating given by patent counsel based on the distinctions between the invention and the prior art. The filing deadline is assigned based on legal bars to patentability, such as product releases.

Pros:

  • Invention disclosure forms that are light on detail have two primary benefits:
    • First, a short form minimizes the barriers for inventors to prepare the form.
    • The form will not consume much of the innovators’ time or effort to prepare.
  • Second, a short form allows management and patent counsel to take a broad view of the invention. That is, reducing the amount of detail will allow management and patent counsel to think about the invention conceptually rather than focusing on a specific embodiment.

Cons:

  • A short form that is light on detail will give less information for the commercial and legal reviews. As a result, management and patent counsel might fail to appreciate the essence of the invention when evaluating it.
  • Patent drafters will need more time to understand the invention. They will be required to gather details manually. More time equals more money. 
  • Decision making might not be based on the full picture of the value.

Also read: 7 Surefire Ways to Get More Invention Disclosures

Medium Invention Disclosure Forms

A medium invention disclosure form builds on the short form. It adds some additional information that might help both management and patent counsel evaluate and analyze the invention. Some other relevant information that could assist both includes:

  • Problem: A short statement of the problem that the invention solves. An organization may prefer to have a problem statement as a separate field instead of having it in the summary section.
  • State of the competition: The closest competing products or product features.
  • Alternatives: A description of the variations and alternate embodiments the inventors have conceptualized.
  • Public disclosures: Any past or upcoming disclosures that might create a bar to patentability. For example, product releases, presentations, speeches, and marketing material could all be relevant to patentability.

The invention form may also suggest that the inventors attach white papers, diagrams, photographs, or other descriptions of the invention that may provide additional detail.

At Triangle IP, we also facilitate customization of IDF within the TIP tool itself. You can add up to 10 new fields. There is also a functionality to edit, delete, or hide certain fields from the existing form. You can do all this very intuitively and easily from within the TIP tool – an intellectual property management software by Triangle IP.

The major benefit that organizations receive by this customization is seamless adaptation to their internal nomenclature.

Customizable Invention Disclosure Form (Medium in Length)

Pros:

The form captures high level information necessary for a review without needing to query the innovators for additional detail. Reviewers often need more information to approve the innovation for patent drafting. Such a level of information capture can help reviewers save some project resources.

Cons:

Additional details require more time from the innovators that have other tasks. They often don’t understand what many of these additional fields mean. You can expect to receive many fields not filled up.

Long Invention Disclosure Forms

Long invention disclosures are usually used in academic settings or in research labs. Longer invention disclosure forms provide the organization the ability to track the use of grant money and other resources and monetize the products of those efforts. Since innovators at academic settings and research labs often publish their findings; a long invention disclosure form can usually be filled out using information already prepared for publication.

Long invention disclosure forms might include the following and more:

  • Prior art: A discussion about the prior art by the inventors and others. This is often included in academic articles as background.
  • Future research efforts: A discussion of how the invention may evolve into other embodiments or other inventions.
  • Commercial uses: A discussion about the potential uses for the invention in products and service offerings. The discussion might also touch on potential licensing partners to exploit the invention.
  • Resources used: A discussion of the grants or other resources used to develop the invention.

Pros:

A high level of detail provides the greatest volume of information to thoroughly assess the invention.

Cons:

In non-academic settings many innovators may feel intimidated by such long forms. As a result, decreasing the number of overall inventions disclosures received.

Also read: Fields in the Invention Disclosure Form | The Master List

On a side note: Would you want to know how your patent application is progressing at the USPTO compared to other applications in the same domain? 

The TIP tool offers statistics of the law firm and the examiner handling your case. Once the application is filed at the USPTO, and an examiner is allotted to your case, the tool indicates the relative performance of the law firm handling your case. The statistics revolve around the number of arguments, grant rate, and grant time. The tool also indicates the case health, for instance, it can tell you if a case needs your attention. There is a whole bunch of insights that you can gather from the TIP tool for strategic patent prosecution.

Request insights for any of your cases at the patent office using the form below.

Choosing an Invention Disclosure Form Wisely

With careful consideration of your organization’s needs and feedback from your innovators , you can design an invention disclosure form that fits your organization. Short forms provide the broadest view of the invention for management and patent counsel to evaluate the invention. At the same time, you may find that the level of detail provided in medium forms can be collected without discouraging inventors from filling them out. And highly detailed long forms can serve multiple purposes by collecting information about the development and commercialization of the product.

A short form template can be downloaded from Triangle IP. This template is available in Microsoft Word and Excel formats. This template is free to use even if you are not a Triangle IP customer. The bonus is this offline form shall soon be readable back into the tool. The new release of Triangle IP’s TIP tool is just a few weeks away. Register for exclusive early access.

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This means that if you choose to use the TIP tool in the future, you will be able to import these forms for entry into the system.

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

Fields in an Invention Disclosure Form: The Master List

“Fields in an invention disclosure form must be chosen to maximize the engagement from inventors.”

What is an Invention Disclosure Form (IDF)?

An invention disclosure form (IDF) records important technical information and facts relating to an invention. In this context, comprehending the intricacies of invention disclosure forms becomes crucial for both inventors and innovation managers. IDF acts as a business record for your company to decide whether to invest in patent protection. It also provides critical information to patent practitioners for preparing patent applications around inventions. It also provides information that can implicate patent issues such as publication and sales activity.

For an inventor, filling out an IDF can be a daunting process. As an innovation manager you need to make sure that the IDF template is:

  • Inventor friendly
  • Suits your organizational needs

Balancing these requirements is easier with advanced innovation management tools that cater to diverse organizational structures.

If there are multiple inventors, any one of them can be designated to fill out the IDF. However, all of the inventors should review the IDF for accuracy and to be sure it has plenty of details on the innovation.

Fields in an Invention Disclosure form – What to include?

There are many variations of IDFs. Some are short while others are lengthy with many more questions. This diversity reflects the broad spectrum of innovation types that organizations engage in, necessitating different information for each form. The reason why different IDFs request different information lies in the preferences of different organizations. Presented below is a master list of fields commonly included in IDFs and the reasons behind them. In designing your IDF, choose the fields that best suit your preferences after reviewing this article. 

Tip: The various fields in an invention disclosure form must be carefully chosen based on their purpose.

Common Fields in an Invention Disclosure Form and Their Purpose

For easier understanding I have categorised the fields in an invention disclosure form into following:

  1. Invention Details
  2. Disclosure/Publication of the Invention
  3. Product/Commercialization
  4. Market Information
  5. Collaborators
  6. Miscellaneous

Also checkout: Filled Invention Disclosure Form Sample!

Invention Details

Invention Details | Fields in an Invention Disclosure Form

Title

The IDF needs a title to differentiate it from other submitted IDFs. The title should be descriptive enough to identify the nature of the invention. Identifying the right idea management tool can significantly aid in crafting effective titles and descriptions for IDFs. Also, aim for conciseness. For example, “Method and Apparatus for Signal Interference Processing.” Or, “Prokaryotic-Eukaryotic Hybrid Viral Vector.”

Field or Area of the Invention

Patent law is specialized by technology area. Therefore, this field can be used to sort IDFs by field, which could include the product name, business area and/or technology area.


Patents typically start with a statement describing the field of art to which the invention pertains. The patent attorney will ultimately determine the best way to describe the field or area of the invention. However, input from the inventor can be useful. 

List of Inventors

Nearly all IDFs request a list of inventors. However, it is important to note that inventorship is a legal determination. Accordingly, some IDFs will instead request a list of “contributors” or the like instead of “inventors.” The goal is to list people who have actively participated in developing the invention. If the organization decides to file a patent application, the actual inventorship will be legally determined by the patent prosecutor. 

The consequences for failing to get the list of inventors correct are dire. A patent can be invalidated for either including someone as an inventor who did not legally qualify or failing to list someone who did.

State of the Art

When a patent application is examined, the claimed invention is assessed in terms of whether it is novel and non-obvious. Prior art is any published information relevant to assessing your patent before the filing date of the patent application. Examples of the prior art include research publications, patents, marketing materials, and presentations at scientific conferences. 

It is assumed that inventors are familiar with other work going on in their field in relation to their invention. Therefore, IDFs will often request any prior art that the inventors are aware of. Inventors should identify anything that could potentially be relevant to the novelty and/or obviousness of the invention. 

There is no duty for the inventor to conduct a literature search. However, if an inventor has done so and is aware of relevant prior art then it must be disclosed to the USPTO. 

Detailed Description of the Invention

This section might also ask for a summary, the problem solved by the invention, and/or the advantages of the invention.  Often this is the longest part of the IDF with the most technical detail.

This section should take the most time. Important elements include stating the challenge or problem to be solved, describing the invention’s physical / technical features, describing how the invention is made, and explaining how it works. Accentuate how the invention is different from the prior art.

Any alternative approaches in the prior art that solve the same problem can also be discussed, along with explanations for why they do or don’t work. Other elements to include are ways the invention is more advanced and technologically sound when compared to the alternatives. 

Any terms that readers may be unfamiliar with should be defined. Include any test data and relevant findings that demonstrate the effectiveness of your invention. Any graphs and drawings that have been created should be included. Significant findings should be called out and their importance explained.

Alternate Embodiments

In a patent application, it is advantageous to describe any alternative embodiments, even if they are not currently of commercial interest. It is not uncommon to focus on the preferred solution while discounting others.  Including such alternative embodiments can prevent others from securing a patent on similar, yet distinct, variations of the invention that you already thought of. The description of alternative embodiments will become prior art against the patent applications of competitors. This can block those competing alternatives to the invention from entering the marketplace.

Furthermore, the inventor may consider certain embodiments to be less desirable now, but this could change in the future. By including alternative embodiments in the specification, the option of claiming these embodiments later is preserved.

Tags/Keywords for the Invention

Tags or keywords are sometimes used by organizations to filter and find invention disclosures within their databases. Underlying technologies, product lines, product names, or any other descriptors that are common in your enterprise.  For example, innovation managers may wish to find all invention disclosures related to the tag “blockchain” and adding that will save grief when later searching and sorting the portfolio.

Also Read – 7 Surefire Ways to Get More Invention Disclosures!

Disclosure/Publication of the Invention

Variations of this field include: 

  • Have you described or shown your invention to anyone (within the organization, other than the inventors)?
  • Has a verbal or written description been given to a person outside of the company? 
    • If yes, to whom?
    • If yes, was the person under any requirement to keep the information confidential or secret (e.g. NDA)?
  • Have you described or do you propose to describe the invention in a technical paper or other printed publication, in marketing material, or in any other form of media, including the Internet?

Public disclosure of the invention has serious implications for some jurisdictions. Examples of public disclosures are the publication of a research paper or the presentation at a scientific conference. In most countries around the world, any public disclosure before a patent application is filed is fatal to the patentability of the invention. Some countries provide grace periods in which applications can be filed up to 6 months or a year after such disclosures. Accordingly, it is critically important to know the dates of any public disclosures in order to determine what patent rights are still available.

Where a public disclosure has occurred, the inventors should provide copies of any materials relevant to the disclosure. These can include manuscripts, handouts, posters, electronic presentations, and slides. In some cases, what seems like a public disclosure does not actually qualify as one in light of the claiming strategy in the patent application. This is because the invention in the publication was not described in a way that would enable someone who works in the field to make or use the invention. Providing these materials allows the patent attorney to make a determination regarding their impact.

Providing an anticipated disclosure date also provides a timeframe for determining whether to pursue patent protection and for preparing and filing a patent application. 

Product/Commercialization

Commercialisation Related Information in an Invention Disclosure Form

Variations of this field include: 

  • Have any attempts been made to commercialize or sell the invention (e.g., have you approached any outsiders about purchasing or manufacturing the invention) or otherwise offered it for sale?
  • Have you used the invention already publicly, manufactured or designed it into a product or do you plan to use the invention in commerce?

Any offer to sell the invention before a patent application has been filed has enormous implications. In many countries, the sale of an invention prior to filing a patent application precludes the ability to obtain a patent. However, some countries offer a grace period. For example, the US allows an inventor up to a year, after the commercial activity has started, to file a patent application around an invention.

Note that an offer for sale is sufficient to constitute commercial activity – no actual sale needs to have occurred.

Market Information

Market Information | Example - Foreign Patent Filings

Variations of this field include:

  • Market information for innovation to either sell or increase sales of an existing product
  • Additional margin or profit for offering a product or service with the invention exclusively protected by patents
  • Contacts to confidentially learn about market potential
  • Please indicate any foreign markets in which you would suggest that a patent application should be filed and why
  • Who are the major competitors and what products do they offer
  • Provide names of possible licensees, if any monetization is contemplated

It is assumed that inventors are familiar with other work going on in their field in relation to their invention. IDFs may therefore often request information about domestic and international markets for the invention. IDFs may also request information about potential licensees. This information also helps identify potential competitors and prior art.

Collaborators

Collaborators

Variations of this field include:

  • Manager email / phone number
  • Prosecutor email / phone number
  • Law firm / attorney

It is critical that the IDF include complete contact information for each individual listed. Decision-makers and patent attorneys need to be able to get in touch with relevant individuals to ask questions and/or clarify issues.

Additional Details/To Be Filled By Managers

Variations of this field include:

  • Value or ranking
  • Tracking or docket number
  • Patentability score (i.e., likelihood of a patent issuing)
  • Filing Deadline with any explanation of what is triggering that deadline

Like many forms, some fields are not for those filling out the forms. Some IDFs undergo internal review. As part of that process, IDFs may get assigned a value based on factors such as the invention’s usefulness, commercial potential, and/or how it aligns with the organization’s business and policies. Tracking / docket numbers may also be assigned. IDFs may also be assigned to a specific outside law firm to assist with the patenting process. Notations regarding such designations are sometimes marked in IDF fields for internal use only. The filing deadline is often driven by a public disclosure or offer for sale and when that would push the innovation into the public domain.

Assignment to Confirm Ownership by Enterprise

Some IDFs may also include assignment provisions, which largely confirm your ownership that your enterprise already secured. An assignment is the transfer of legal title to an invention and may be required by the patent office. Co-owners of a patent can separately practice an invention or license it without the other co-owner’s permission so control should be in a single entity. Obtaining a clear assignment of an invention is extremely important. Typically, inventors are asked to execute assignments at the time the patent application is filed again with a version suitable for recording at the patent office.

Miscellaneous

Future Research to Further Commercialization

Plans for the future development of the invention should be described in the IDF. This information can be valuable for determining whether to proceed with a patent application. It also allows the patent attorney to ensure that the patent application describes variations that include inventors’ future plans. 

Sources of Funding and Biological Material Deposits

It is very important to know whether the invention has been funded by an entity other than the inventors’ employer. Such sponsorship may have implications for ownership/licensing rights and reporting obligations. This applies whether external funding of the invention was in whole or in part.

For some inventions, a sample of biological material must be deposited with a public repository to satisfy statutory requirements for patentability. For example, has any biological material relating to the invention been deposited in a public repository such as the ATCC, EMBL, or Jackson Lab? 

Third-Party Code in Software

If a software invention incorporates third-party code, it raises ownership and licensing issues that must be addressed.  Open source software used in the code base can also have implications.

University / Lab Resources (With Details) Used in Invention

Sometimes the ownership of an invention depends on whether the invention was made using an organization’s funds, resources, or facilities. Many government labs and universities require submitting all innovations to their technology transfer department to decide if the innovation is of interest to them and within the scope of your employment.   

On a side note: Would you want to know how your patent application is progressing at the USPTO compared to other applications in the same domain? 

The TIP tool offers statistics of the law firm and the examiner handling your case. Once the application is filed at the USPTO, and an examiner is allotted to your case, the tool indicates the relative performance of the law firm handling your case. The statistics revolve around the number of arguments, grant rate, and grant time. The tool also indicates the case health, for instance, it can tell you if a case needs your attention. There is a whole bunch of insights that you can gather from the TIP tool for strategic patent prosecution.

Request insights for any of your cases at the patent office using the form below.

Also read about the top 5 invention disclosure software options to choose the best for your enterprise.

Conclusion

An IDF is a business record that helps organizations decide whether to invest in an idea’s patent protection. It also helps patent practitioners prepare patent applications. Filling out an IDF can seem intimidating to inventors if it’s long and complex. To make sure inventors engage with your invention disclosure process you must choose a suitable IDF template or put the suitable fields in an invention disclosure form.

At Triangle IP, we have designed a simple and engaging invention disclosure form. Here is how it looks:

Invention Disclosure Form Template

The best part is this electronic invention disclosure form shall soon be readable back in the tool. And, the online invention disclosure form already exists within Triangle IP innovation management software.

Quick Update: The inventors can upload this offline form back into the TIP Tool to have all their ideas in one place.

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.