NOTE: Once publicly disclosed (published or presented in some form), an invention may have restricted or minimal potential for patent protection outside of the United States. Be sure to inform the OTC of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal submission, dissertation/masters thesis, publication, or other public presentation including the invention!
Filing an Invention Disclosure Form
What is an invention disclosure?
At Duke, an Invention Disclosure Form, or “IDF” for short, represents the first recording of an invention, and the “kick-off point” for the office to begin working with you on the best way to protect, market, and license to a commercial partner. It begins by establishing the key dates around the conception of an invention, as well as its scope.
Information provided in the invention disclosures describe what the invention does, what makes it novel with respect to existing research, practice, or technology, who made an inventive contribution to the invention and the contribution percentage provided by each contributor to the invention’s development, any use of third-party materials to develop the invention, and, if applicable, how that invention was funded (generally government, industry, or foundation resources).
Why are Invention Disclosure Forms (IDFs) important?
IDFs are the first step in documenting and ultimately protecting and licensing your invention. Based on the technology area and previous relationships, the office will first assign the IDF to a licensing manager who will begin the process of evaluating the invention for IP protection and commercialization.
Invention Disclosure Forms and related documentation are the baseline for establishing an intellectual property strategy, and, in the case of patentable inventions, can be useful to determine the patent strategy in light of any prior art by the inventors or third parties and to confirm inventors to be listed on any filed patents.
In the case of software inventions or copyrighted work, invention disclosures also serve to identify any third-party materials used, as well as openly licensed dependencies used to develop an invention that could affect how the invention can be protected or licensed.
When is the right time to file an invention disclosure?
The office prefers to receive invention disclosures as early as an idea stage such that we may work with you to determine strategy for protection and marketing and also to identify potential resources for moving the invention forward. However, we also can react quickly in case of an “emergency publication” in order to protect the patentability of the invention.
To maximize the invention’s strategic success, it’s best to file an invention disclosure form at least three months before any external disclosure concerning a potentially patentable invention, or in anticipation of confidential interactions regarding an invention with external institutions. This can give the office enough time to meet with the team, evaluate how the invention could be protected under IP rights, request a Technology Fellows report, and coordinate any applicable agreements.
It’s important to note that once publicly disclosed (published or presented in some form), an invention may have restricted or minimal potential for patent protection outside of the United States. Be sure to inform the office of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal submission, dissertation/master’s thesis, publication, or other public presentation including the invention.
If you are unsure if you should file an invention disclosure, or need support, please reach out to the office staff at firstname.lastname@example.org.
How can Duke inventors file Invention Disclosure Forms with the Office for Translation & Commercialization?
Our online Invention Disclosure Form is available at https://otc.duke.edu/disclosure-form/
The link will take you to our office’s online platform, where you will need to sign in with your DukeID. Upon reaching the Invention Disclosure Form, you will find the following fields:
Invention Title – The title should generally explain what the invention does for a non-technical audience. Ideally, the title itself should not reveal unique or proprietary details of how the invention works. Examples: “Methods for Detecting Lymphoid Tissue in Tumor Progression” or “Device for Imaging Breast Cancer” or “Mobile App for Symptom Monitoring”.
Though acronyms, creative naming, and non-technical titles may be used upon commercialization, the office does not recommend using these for your Invention Disclosure titles.
Date of Conception – The date that the invention was first conceived or ideated. Conception means the formation, in the mind of the inventor(s), of a definite and permanent idea of the invention.
Description – Here you should describe, as thoroughly as reasonably possible, what your invention is, the stage of development of the invention (e.g., idea stage, reduction to practice, proof-of-concept, prototype, lab experiment, field experiment, etc.), its advantages over other technologies in the field, its characteristics and components, unmet needs it fulfills, problems it solves, different ways of making or using the invention, and how you envision the technology being used by potential licensees. Please explain clearly what is new and novel about your invention in this field. Especially if you are a regular submitter, please point out what is new compared to your previous, very similar invention(s).
Any documentation related to the invention that may help non-experts in the field understand your invention, such as manuscript drafts, invention write-ups, schematics or flowcharts, PowerPoint presentations related to the invention, etc. is especially helpful and can be uploaded in the “Supporting Documents” section. If you attach information, please still fill the description field thoroughly.
Potential Partners and Competing Labs – In this section you should list any companies or investors that might be interested in your invention. Students, entrepreneurs, or relationships with companies that might be interested in your idea should also be listed.
In regard to competing products/technologies or companies, it is useful to list companies or institutions working in the same space.
If you have been in contact with any of the above, please state it. This will help the office contact potential licensees as part of a marketing campaign.
Use of Third-Party Materials – In this section you should list any materials used, their source, and the date the materials were received. Any materials transfer agreements related to the invention should also be listed.
In the case of software or hardware inventions, please list, and include links if available, to any datasets, programming kits, third-party hardware, software libraries, and open-source software used to develop the invention.
In the case of copyrightable work, such as instruments or training material, please list any outside or previously existing copyrighted work that was used or incorporated to produce your invention.
Disclosure Status – This section enables the office to quickly determine if publicly displayed posters or electronic presentations, conference talks, published abstracts or manuscripts, meetings with companies or investors, software uploads, product demonstrations, YouTube videos, or presentations within Duke that are open to the public (e.g., Ph.D. dissertations, grant rounds, or other instances that are not internal Duke events) require a quick decision on filing for IP protection.
If you have shared information related to the invention to any entities or persons outside of Duke, please mark “Yes” on “The Invention has been Disclosed”.
The “Disclosure # N” sub-sections refer to the dates your invention was publicly disclosed. In other words, the date of a past dissertation, presentation, grant round, etc.
If you have “Anticipated Disclosures” that have not yet occurred, please mark “Yes” on “Are there Anticipated Disclosures?”.
The “Anticipated Disclosure # M” sub-sections refer to the dates your invention is planned for a potential publication. In other words, the date of a future dissertation, presentation, grant round, etc. Please make sure you add all anticipated disclosures in this section. If you don’t have a specific date, please consider the status and dates carefully. Misrepresenting the disclosure status can result in loss of patent rights.
Contributors – A contributor is any person (at Duke or outside of Duke) who has made a significant intellectual and creative contribution to either the conception of the invention or its reduction to practice.
Inventorship on any patents filed will be determined in accordance with US patent law and are defined as someone who “contributes conceptually” to the idea.
For software inventions and copyrightable work, authorship on any copyrights filed will be determined in accordance with US copyright law and are persons who “contribute creatively” to the work.For example, someone who provided testing, manufacturing, or development services as a work-for-hire contractor would not be considered an inventor.
Please make sure to describe each person’s contribution to the invention to help with the determination in the “Contribution to Invention” section.
The order in which the names are listed has no legal significance, however it is important to pick a primary contact for the IDF. This is the person that, absent other direction from the group, the office will generally work with directly and expect to communicate with the other inventors.
All Duke employee contributors submitting the disclosure should discuss and agree on what contributions they made in advance of the IDF’s filing and indicate how revenue should be divided in the Royalty Share boxes such that the total share is 100% for contributors who are Duke employees (or were Duke employees at the time of the invention creation).
If contribution percentages are not indicated, the assumption will be that all inventors made equal contributions.
Note on IDFs with non-Duke contributors:
In the case of inventions created in collaboration with non-Duke contributors, agreeing on contributor distributions among all inventors/authors in advance of IDF filing is often encouraged, as many technology transfer offices often work with the inventors’ previously agreed percentages.
You can optionally include any agreed distribution percentages across multiple parties in the non-Duke contributor’s notes, as well as in the “Description” field for the IDF. This is useful to the office as inter-institutional agreements are usually needed for IP management among the joint owners.
Contributors who are not Duke employees do not need to sign the Duke IDF form but may need to file a similar form with their respective employers.
Note on international contributors:
Please consider honestly and to the best of your knowledge, the status and nationality of the contributors. These questions are important for assignment rights and international patent laws. Each country has specific patent laws for their citizens, and improper filings can result in fines, loss of patent rights, and potentially even imprisonment. If a contributor’s nationality is unknown, please state it.
Funding Sources – In this section, please list any non-Duke funding sources used for the Invention. For example, federal, state, or foundation funding as well as funding through an industry funded sponsored research agreement or clinical trial. If there was any Duke internal funding used, please add a note in the description section describing such Duke funding.
In the case of grants or contracts, please include its number and source agency.
It’s often encouraged to upload any grant documentation to your “Supporting Documents” section, especially if the documents include intellectual property considerations.
Note on special considerations from funding sources:
Some funding sources may request partial or full access to the invention, making the invention openly available, obtaining a non-exclusive license to the invention, filing of a special form to evaluate the invention’s patentability, or other special considerations. If this is the case, please include any special considerations you are aware of in the “Description” section.
File – When ready, and after all fields have been reviewed, click Submit. Congratulations! Your IDF has been successfully filed!
What happens after I file my IDF form?
Please expect an office representative to reach out to you once the form has been validated. Your form will be assigned a technology reference number, often in the “T-00NNNN” format. This number is used by Duke, along with any applicable IP filing numbers, to reference your invention in any agreements.
If you have any additional questions regarding IDF forms, or if you should file one for your inventions and work developed at Duke, please don’t hesitate to contact our office at 919-681-7167 or by email at email@example.com
Best practices for filing an IDF
Are there any “best practices” when filing an IDF?
Over the years, our office has found patterns across experienced and beginner inventors alike. We have gathered “pro tips” below, in an effort to best support inventors. These include:
- Always try to provide a list of companies in the potential partners section, as well as contextual information about the disclosures listed. This can help our fellows team better understand your space, gather information, and provide a thorough prior art search report.
- Specify the maturity stage of the project whenever possible. Specifically: is the project an idea, a proof of concept, a reduction to practice implementation, an early or later stage experiment or development, a prototype, a fully-fledged or proven technology, etc.
- When describing the invention, try to specify how you conceived it being adopted by licensees. Do you expect it to be a product, service, process, or other? For example, will your invention be a drug intended for a treatment, software intended to run on a specific system, etc. This helps licensing managers and fellows understand your technology.
- Provide as much supporting information as you can provide that is relevant to the filed invention when filing. This includes unpublished manuscripts, research plans, internal presentation slides, technical descriptions of the technology, etc. Last minute provisional patent application filings may especially require this content.
- Despite the tip above, please do not just refer to the Supporting Documentation attachments in the Description field (e.g., empty description with a “See attached” message).
- Be clear on who should be considered an inventor and who should not, as well as each inventor’s nationality and status (see “Contributors” above). This clarity can help our team better structure Inter-Institutional Agreements and take international law precautions.
- Keep track of the “conception date” of your invention, as well as all your planned and past “publication dates” (see “Date of Conception”, “Past Disclosures”, and “Anticipated Disclosures” above)
- Consider that, in an effort to push the project forward, the office may reach out to the leading inventors for information and updates. This is especially true for inventions with multiple co-Inventors, or IDFs that include students, or non-Duke collaborators.
- Always list all funding sources. Even if the project was funded using internal resources over grants, understanding how the project was financed is still needed from the office. Moreover, if the project used infrastructure, labs, stipends, materials “already on the shelf”, or other forms of support, it is encouraged to include this information in your description.
- Give the office enough time to receive, validate, and assign your IDF to a Licensing Manager. This may take up to a week after your submission. If immediate action is needed, please don’t hesitate to reach out to our licensing managers and let them know in advance.
Having technical problems with your IDF?
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