Saturday, December 16, 2017

What is an invention disclosure?

The Invention Disclosure is  a description of an invention and what it will do.  The disclosure must also be sufficiently full and clear to teach a person of ordinary skill in the field of the invention to make and use it. 

The NOAA invention disclosure consists of two parts.  First, there is a Form CD-240 which is the Invention Rights Questionnaire.  This form allows Department of Commerce attorneys to make a legal rights determination - in other words, decide who legally owns the invention.  Secondly, there is the Disclosure Statement, which describes the invention and the timeline.

Taken together, the NOAA invention disclosure process is the first step in protecting intellectual property developed by NOAA. It can also expedite the prosecution of a patent application, if the scientist or lab chooses to pursue one.  See the following NOAA Guidance for more information or contact us to discuss.

I’ve never had to submit an invention disclosure before.  Why now?

The America Invents Act has changed U.S. patent law from a first-to-invent system to a first-to-file system.  In essence, this means it is no longer sufficient to maintain good lab records of new technology development.  NOAA must actively protect operationally critical new technologies to ensure they are not patented by others, which could result in labs paying royalties for something they invented!  

We are strongly encouraging all NOAA scientists who are working with a non-federal partner to sign Cooperative Research and Development Agreements (CRADAs) at the beginning of any new activity that may result in a new technology or capability and to file an invention disclosure PRIOR to publishing findings in the peer reviewed literature.  For more detailed information, contact us or see the NOAA Recommended Technology Transfer Process

How do I submit an Invention Disclosure?

The process for submitting an Invention Disclosure is simple.  You can download instructions and disclosures statement, along with the CD-240 Invention Rights Questionnaire from our site. 

Please send both the Rights Questionnaire and Invention Disclosure outline to:

NOAA Technology Partnerships Office
SSMC4 Room 7602
1305 East West Highway
Silver Spring, MD 20910

What happens to the disclosure?  Is this public information?

Upon receipt of the Invention Disclosure, our office will confirm receipt, then create a copy of the file for our records. We will then forward the documents to the NOAA/NIST attorney for the rights determination.   The attorney then provides our office their official rights determination for the file.  We notify the scientist/lab that filed the Invention Disclosure and conduct a follow-up interview to see if the lab has any interest in filing a patent, if appropriate.  We also track the Invention Disclosure for the annual reporting of NOAA technology transfer statistics to the Federal Laboratory Consortium.  While we publicize the total number of Invention Disclosures, we do not make the content of the disclosures public.  If the lab director and inventor choose to either publish information related to their discovery, or have successfully secured a provisional patent application,  our office make the information publicly available through our website and newsletter.