Invention Disclosures & Technology Transfer Offices

By November 9, 2022 News

Tech Transfer offices have a wide range of responsibilities, but everything starts with receiving an invention disclosure. The quality of the invention disclosure can have a significant impact on the chances for developing a successful licensing program. As such, this post combines our direct experience with and in a tech transfer office and as outside counsel to provide guidance, particularly for those in research and academia.

While writing a research article may be second nature, writing a high quality invention disclosure requires a different skill set, and includes vastly different information. While writing an invention disclosure may sound tedious, it is anything but.

Before getting to some tips to make the process as painless as possible, it first helps to understand what a high quality disclosure is not. First, it is not a published peer-reviewed article or a finished grant application. While including such documents as an appendix can be helpful, they are not needed, and perhaps might come too late in any event. The invention disclosure is not merely a marked up version of an article. Rather, the audience and purpose of an invention disclosure requires a dedicated document, and might come even before all of the data and experiments or tests have been completed.

What a quality disclosure does need is a description of the background (state of the art), a description of the concept of the invention and how it solves technical challenges.

In other words: what is the invention? how is it made? and how is it used? In addition to a few sentences, any type pictures from a photo to a 3D rendering to a rough sketch in a lab notebook are all very helpful here. It’s okay if the invention hasn’t been made or used yet, just describe how it could be done.
The description should also include how the invention solves a technical challenge. For example, why was the invention invented? It may be a large problem or a small specific problem. Describe why the already available solutions couldn’t solve the problem, thus necessitating the invention.
Finally, a quick review of the market and potential applications for the invention can help guide a review of the disclosure so that the Tech transfer office can consider the commercial applicability (and licensing potential) of an invention.

That’s all! A tech transfer office can take the invention disclosure and start the work of evaluating, drafting, licensing, among other tasks associated with managing intellectual property.

McCoy Russell has substantial experience in assisting tech transfer offices in any and all of the steps from training sessions regarding invention disclosures to drafting and prosecution and licensing.