By Rebecca Stoughton. Becky Stoughton is a Fuentek vice president, specializing in entrepreneurship and establishing/building TTOs. She played a key role in launching the Office of Technology Commercialization at the University of Texas at Dallas, serving as director for 5 years. She also has served on the board of directors for TeXchange and as assistant VP for strategic alliances for the Association of University Technology Managers (AUTM).
Article re-used under permission from Fuentek.
What makes an invention disclosure a high-quality invention disclosure?
This is an interesting question that has nothing to do with the quality of the technology.
Fundamentally, a high-quality disclosure includes enough detail for a patent attorney to identify novel aspects for patentability. It also includes the inventor’s perspective on the technology’s commercialization value. This helps the TTO to better evaluate the invention’s market potential and commercialization options.
Unfortunately, many invention disclosure submissions come up short. The possible reasons for this vary. But mostly it seems to boil down to a lack of researcher understanding of the importance and role of the invention disclosure.
Getting high-quality invention disclosures from researchers takes some work on the part of the technology transfer office (TTO). It’s a top priority to teach researchers that the invention disclosure is more than a burdensome piece of paperwork. In fact, it’s a never-ending effort, since new researchers join the university every year. Fortunately, we at Fuentek have found that time spent up front minimizes time spent later. Here’s what we recommend.
Offer Inventor-Focused Education
We have found that the biggest positive impact comes from training sessions specifically designed to appeal to researchers.
For example, we offered a successful entrepreneurship program through the Foundation for Polish Science. In it, we concentrated on the general fundamentals of commercialization. The researchers gained a solid understanding of such concepts as the Technology Overview and Value Proposition. This helps them prepare better, more informative invention disclosures.
The focus of the training depends on what will appeal to your institution’s researchers. Use “How to Secure Funding for Your Research” to teach them how to articulate the technology’s value in a compelling way. A “Useful Tips for Publishing Your Research” session can emphasize when to report their invention.
The bottom line: Offer researchers information that appeals to them to provide the skills and insight for high-quality invention disclosures.
Put It in Context
When engaging with researchers, help them understand why a solid — and timely — invention disclosure is important.
For example, during a roundtable at the Invention2Venture Conference, the University of Vermont’s technology licensing officer Kerry Swift explained that the invention disclosure provides crucial information to the patent attorney. She urged the researchers not to write simply “See attached paper” when asked to summarize the invention’s relevant aspects. The intent of the two documents is very different. A research paper is helpful background, but it is not written to convey the important points needed in the invention disclosure, such as its novel aspects and potential commercial applications. Why leave it up to the TTO and maybe a patent attorney to try to read between the lines?
Presenting the big picture of how the disclosure fits into the overall process puts researchers on the path to completing the form with more than a cursory effort and turning it in at the right time. Consider using Fuentek’s “Road to Tech Transfer” infographic to explain the overall process.
Provide Help When They Need It
The most powerful training is just-in-time training, where the learner is applying the new knowledge right away. So if you offer in-person or live web-based training sessions, Fuentek also recommends offering a recorded version for on-demand viewing via your website. For an example, check out this blog post about an inventor-outreach project we did for NASA, which included a 6-minute overview.
For longer trainings, Fuentek suggests breaking apart the full recording into short chapters. Clearly indicate which topics are covered in each segment so researchers can easily find the information they need.
Sometimes institutions help researchers fill out their invention disclosures. There are pros and cons to this. As a service organization, the TTO should be willing to help if needed. Plus such one-on-one support is an opportunity to improve a researcher’s abilities to complete future disclosures. But it can be time consuming, and some TTOs don’t have that time to spare.
However, if your TTO wants (or needs) to offer this type of support, consider ways to maximize efficiency. One example is to have an “office hours” session with multiple computers where several researchers can come in and work on their invention disclosures while a TTO staff member is on hand to answer questions.
Give Them an Example
Provide an example — either fictional or cleansed of any sensitive details — of a well-completed form so researchers can see the level of detail that’s expected. In fact, consider offering several examples that align with various technology areas so they resonate with the researcher’s expertise.
Think About What You’re Asking
Finally, take a hard look at your form:
- Is it easy to understand? Or would revising the fields/instructions make it more intuitive?
- Do you really need all of the information being requested now? Or can some of the details wait until after the initial triage/screening is complete?
- Is it easy to fill out via computer? Is there a way to pre-populate it with the individual researcher’s information?
Remember: The invention disclosure is a two-way communication tool. Before the researchers can communicate their inventions to you, you have to clearly and succinctly communicate to them what you want them to tell you.
SOURCE: Fuentek’s blog.