Generating High Quality Disclosures and Managing Timing
By Joshua Goldberg, Co-Managing Partner
Research, discovery, and inventions are typically memorialized as the research is
ongoing, whether in a laboratory notebook or otherwise. Once the research is
sufficiently advanced, the question often turns to whether the results of the research
could or should be patented. The first step in this process is fully and adequately
describing the invention, which is typically done through the use of an invention
disclosure document or form.
Universities are no different. Most universities I have worked with require completion of
an invention disclosure form before the invention can be fully assessed for potential
patentability. Such disclosure forms or templates are used to ensure consistency and
scalability. Indeed, templates can guide submissions, but their effectiveness relies on
the inventor’s understanding of what information is required, including the problem
addressed, prior art context, and the inventive contribution.
In certain cases, further details are needed to conduct a full patentability assessment
and/or to prepare an acceptable patent application. These further details are often
obtained by conducting an interview with the inventor, whether by a TTO member or
outside counsel, in the two most common scenarios. These interviews allow
practitioners to extract important technical details from the inventor, including but not
limited to identifying alternative embodiments, clarifying experimental support, and the
like. This hybrid approach can be particularly effective, especially when considering the
varying levels of experience among academic inventors.
The quality of the invention disclosure can significantly impact the effectiveness of a
patentability search, if conducted, and resultant patent application drafting. High-quality
disclosures in academia depend on both structured processes and active engagement
with researchers in developing a quality invention disclosure. Ideally, the TTO, whether
directly or through outside counsel, will provide resources to the researchers to assist
them in memorializing the results of their research and completing a quality invention
disclosure, including but not limited to educational seminars and the like.
Another common challenge is timing. Early disclosures may lack sufficient data but
preserve rights, while delayed disclosures may provide robust support but risk a
pre-filing public disclosure. In academic settings, this tension is heightened by the
strong incentive to publish. This can often be addressed by encouraging early
disclosure followed by iterative supplementation. When needed, provisional applications
can be filed to secure priority dates, with subsequent filings incorporating additional
experimental data. This approach allows researchers to continue generating publishable
results while preserving patent rights.
