When Should I Disclose an Invention?

Disclose an invention as soon as the invention is clearly conceptualized, and or before you submit abstracts or while preparing manuscripts for publication that contain information about the invention, even if it only contains part of the whole invention. These abstracts, posters, seminar presentations, Internet publications of funded grants, or even an article in a local newspaper can all disclose enough of an invention to prevent the issue of a patent. If your public disclosure leads one skilled in the art to conclude what the invention could be used for, then this disclosure could be held against you in the prosecution of the patent filed later and prevent you from gaining an issued patent.

Conception of the invention does not need to include completed experiments and data supporting it, but it should include your best effort at explaining the experiments that would be done to show it works.

It is never too early to call the appropriate party at STC.UNM to discuss if it is the right time to disclose.

Figure 1. The commercialization process.

This section is intended to provide a basic overview of the commercialization process. The technology commercialization process begins with an idea and culminates with introduction of that idea as a product or service into the marketplace. This process diagram shows the general steps in the commercialization process, beginning with disclosure.

Figure 2. Step 1: Disclosure.

The technology commercialization process begins with the inventor disclosing his or her complete invention in writing by preparing an invention disclosure form (IDF) and submitting it to the UNM Patent Administration Office (PAO). The IDF should contain a complete description of the invention, dated signatures of all inventors, dated signatures of witnesses who understand the invention, and the dated signature of the department chair. This information is then used to develop a patent application.

Inventors should consider the possibility of protecting an idea when they are ready to make public presentations or publish an idea. So-called poster sessions and grant applications may constitute public disclosure and therefore may limit protectability of the idea. The best course of action is to talk with STC as soon as possible to discuss what options are available to protect the idea prior to public disclosure. Note that information about an invention included in research proposals should be labeled, "Proprietary Information of UNM."

Figure 3. Step 2: Evaluation.

The completed invention disclosure form (IDF) is forwarded by the UNM Patent Administration Office (PAO) to STC to ensure the completeness of the invention description and for evaluation of the technology for intellectual property protection. STC may request additional information from the inventors to fully understand the disclosed invention. The evaluation of the disclosed idea includes the protectability and commercial potential.

Figure 4. Step 3: Intellectual Property Protection.

Patenting is the most commonly considered method of intellectual property protection; however, confidentiality agreements, trademarks, copyrights, and trade secrets are other means of intellectual property protection.

Figure 5. Step 4: Marketing.

Marketing of an idea may begin as soon as it is disclosed or at least as soon as a provisional patent application or utility patent application is filed, or some other intellectual property protection has been initiated.

Once an idea has been disclosed to UNM, STC will undertake market research to evaluate the commercial potential of an idea. This market research will help identifiy potential licensees as well. We will include a non-confidential description of the idea on our website and include it in our technology portfolio (our published catalog of UNM inventions available for licensing. We will proactively approach potential licensees to determine interest, especially those identified by inventors. In addition, we will discuss the possibility of a start-up company being formed as a commercialization vehicle, of which the inventors are typically involved.

Bringing an idea to market through commercialization can be achieved by several avenues, the most common through licensing of an idea to an established company.