Guidelines for Completing the Penn State Invention Disclosure Form

The Intellectual Property Office promotes Penn State technology by protecting, marketing, and licensing University inventions to companies for further development and commercialization. This disclosure is valuable because it familiarizes the technology licensing officer with technical and industrial/business aspects of the invention while establishing a legal record of the technology. When all parts of the invention disclosure are complete, a technology licensing officer contacts the inventor to discuss possible protection strategies or commercial applications. Below is an explanation of requirements for each paragraph of the form.

Section 1. An invention title summarizes the invention in a way that is non-enabling yet meaningful to other people in the inventor’s field.

Section 2. An inventor is someone who contributes to the invention concept and/or the reduction to practice of the invention. A “pair of hands” who carries out the orders of another person is not an inventor, even though such a person may be considered a co-author or contributor in a scholarly sense. Inventorship is a legal determination, and inventors should be able to provide documentation demonstrating contributions. Since correspondence, patent application materials, and royalty checks are sent to the inventor’s home, the inventor must provide and maintain a current home address with the Intellectual Property Office.

Section 3. By signing here, the inventor indicates approval of the disclosure, attesting that the disclosure is true, accurate, and fully describes the invention to the best of his/her knowledge. The witness must not be involved with the invention. The disclosure form should be submitted via the department’s research dean or administrative unit complete with the research dean’s or administrator’s signature.

Section 4. Indicate the percent (%) contribution of each inventor to the conception of the invention and/or the reduction-to-practice of the invention. All inventors who sign this invention disclosure form must agree and be able to provide supporting material for his/her contribution as stated here.

Section 5. a.) An inventor is obligated to a third party if, during the research pertaining to the invention, he or she used resources, facilities, staff, funding, or material of another institution, whether it is a corporation, university, foundation, or government agency. This rule applies to University faculty, staff, wage-payroll employees, graduate students and visiting faculty.

b) An agreement may have been entered into by the inventor with a company before the submission of the invention disclosure. If this has occurred, the inventor should complete Section 5(b) including all the relevant information pertaining to the agreement.

Section 6. After recording the date of each event, indicate where records of the event may be located.

a.) State how and when the invention was first conceived and what records may exist of the event.

b.)  “Reduction to practice” is the point at which a drawing, prototype, model, or strain exists that fulfills its intended purpose.

c.)   Development of the invention includes the stages of trial and error, testing, and revision to the invention.

Section 7. The detailed description of the invention must answer the questions posed in section 7. Such information will most likely be enabling, meaning that it would allow someone else to reproduce the invention. This disclosure is kept in strictest confidence at the Intellectual Property Office.

Section 8. To disclose is to tell. Please include both public and private disclosures including those to coworkers, funding bodies, and corporations. A public disclosure is the sharing of enabling information in a medium legally accessible to the public. If you have disclosed the invention in writing, please attach a copy of the disclosure.

In the United States, a patent application must be filed within one (1) calendar year of public disclosure; however, in most other countries, a PCT patent must be filed before public disclosure. Any enabling public disclosure has immediate and irreversible effects on patentability. An inventor who publicly discloses his/her invention unwisely before obtaining protection can lose rights to his/her invention anywhere else in the world. It is therefore requested that inventors contact the Intellectual Property Office for assistance prior to public disclosure.

Many journals publish online, sometimes weeks before publishing a given issue in print. The inventor must be aware of the potential for online publishing and indicate it in 8. This helps to ensure adequate protection for the invention.