Navigating intellectual property: the invention disclosure

Patents, copyright or non-disclosure agreements: different legal instruments enable the protection of intellectual property (IP). By recognizing the ownership of some immaterial items produced by the human intellect (like an invention), IP is intrinsically linked to technology transfer. The Technology Transfer Office (TTO) has put together a series of articles aimed at better understanding the existing legal implications when bringing a technology to the market from academia.

What is an invention disclosure?
The invention disclosure (ID) is an internal declaration, needed at EPFL, to start the effective work for technology transfer. It includes a detailed description of a new and inventive technology, with respect to known approaches and solutions, and its potential uses. It also contains the complete list of inventors as well as possible projects and contracts related to the new technology, such as collaboration agreements with third parties or external funding agencies (e.g industrial partners, European projects or national bodies). EPFL inventors can find the ID forms on the TTO website.

What happens once the ID form has been filled by the inventors?
A technology transfer manager and the scientists jointly assess the possibilities of protecting and commercializing the technology (patentability, commercial potential, industrial partners, etc.). On the basis of this assessment, a decision is taken to file (or not) a patent application and the possible commercialization strategy of the invention is explored.

Why is it a crucial step in the technology transfer process?
It is the first step required in the patent filing process. The information provided in the ID form are of key importance when assessing inventorship and preparing a patent application.

Defining whether a publication of the research results has already been made (for example in a scientific paper or during a conference presentation) is important since a public disclosure prevents protection by patent. Once made public, the invention loses its novelty value, which is a condition for its patentability. Filling the ID form and contacting the TTO before publicly disclosing any valuable results which may end up in a patent is therefore highly critical. Once a patent has been filed then the publication of such research results is possible.

Are there different types of ID (e.g. by research fields)?
ID are not differentiated by field of research but, depending on the nature of the invention, two kinds of invention disclosure forms are available. One is specifically dedicated to inventions that can be patented (molecules, proteins, methods, prototypes, etc.) and the other is used for software. In the case of a software, an intellectual property protection already exists (through the copyright on the software). The aim of the software disclosure form is to “declare” the software, enabling its licensing to third parties. It also includes a complete description of the software features, all the details on the authors, and references to related projects and contracts.

What is being analyzed in a software disclosure form?
There are two main elements analyzed by the TTO in a software disclosure form. The first ensures that all the authors are EPFL employees (a requirement) and that no external contribution exist in the software. In case of external contribution, appropriate agreements must be established with the authors outside EPFL. The second verifies the “dependencies” of the software. The goal is to understand if the software is derived from a pre-existing open source software, or any other software not owned by EPFL, and check if external libraries (collection of pre-existing functions) are needed as these “dependencies” may prevent the software’s commercial exploitation.

To go further: you will find more information on how to disclose and protect an IP on the EPFL TTO webpages.