Appendix B: Preparation and Submission of Invention Disclosure Statements and Rights Questionnaires (Form CD-240)

I. Invention Disclosure Statement

An invention disclosure is a description of an invention and what it will do, which is sufficiently full and clear to teach a person of ordinary skill in the field of the invention to make and use it.  A thorough and carefully prepared disclosure will expedite the prosecution of a patent application.  A suggested outline for an Invention Disclosure Statement is presented below in Section III.

II. Invention Rights Questionnaire (Form CD-240)

The form CD-240 provides information required to determine the rights of the inventor, the government, and third parties.  It must accompany (as the cover page) the Invention Disclosure Statement.

III. Suggested Outline for an Invention Disclosure Statement

Subject: (Invention title).

Contact Person: (person to handle all inquiries - one selected inventor to act as spokesperson).

Telephone Number:

Email Address:

Name, Address (both home and office), Citizenship of Inventor(s).

A. Abstract of the invention.  The abstract should briefly describe the invention and what it will do.

B. Background information.  Set the stage for the advantages and claims of the invention.  Include a summary of the closest known prior art.

C. Technical description of the invention.  Provide drawings, charts, equations, or whatever is essential in communicating the operation of the invention.

D. Detail major factors (structural and physical) that distinguish and differentiate the invention from prior art.  (Why is it different? What are the advantages and claims of the invention? Do you have test data supporting your claims? If so, attach to appendices.) E. Identify current and potential applications of the invention.

F. Critical Dates.

1. When was the idea first conceived?

2. When was the invention (or its components) first reduced to practice?

3. Publication dates of materials produced by inventors that are directly related to the invention and would enable another professional to reduce the invention to practice (or, alternatively, when was publication available if availability is different from the publication date.) Was the publication an enabling disclosure?

4. Date invention was publicly used (if applicable).

G. Inventor(s) Signature and Date.

H. Appendices.

A. Publications (or citations) on invention by inventor(s).

B. Publications (or citations) on closest relevant prior art.

C. Test data and results.

IV. Disposition

When the inventor has completed the Invention Disclosure Statement and the inventor's supervisor has completed the Supervisory Concurrence section of the CD-240, both are forwarded to the NOAA Laboratory Director.

The NOAA Laboratory Director reviews the CD-240 and the Invention Disclosure Statement and forwards both as follows:

Original CD-240 and Invention Disclosure Statement to:

In addition to the above, the Laboratory Director should provide his/her estimate of the commercial potential of the invention and a recommendation on whether the government should or should not file a patent application.  This recommendation and a statement that indicates whether the laboratory will or will not exercise its authority to license the invention if an application for a Government owned patent is filed shall accompany the copies of the Invention Disclosure Statement and CD-240 forwarded to the NOAA TPO.

NOTE: Use the current form CD-240 available at the DOC Forms web site.

Instructions

Inventors complete this form, obtain supervisor's certification, and send copies of the form and the complete Invention Disclosure to:

1. Your organizational director; and

    

2. NOAA Technology Partnerships Office;

    

Address

EXPLANATION FOR QUESTIONS 1 THROUGH 7

For 1 - For a U.S. Patent, the inventor(s) must file for a provisional patent before publishing.  Likewise, in most foreign countries, publishing before filing eliminates the possibility of patent protection.  Most, however, will accept an application once the U.S. patent application has been filed, and publishing following a U.S. patent application will not preclude a foreign application.

For 2 - It is important that a provisional patent application be filed before the invention is used outside or beyond the experimental stages.  An invention which is (in the U.S.) publicly used or offered for sale for a period of more than one year is barred from obtaining a patent.

For 3 - "Relevant prior art" refers to inventions which are closely related to the invention under consideration.  Knowing the relevant prior art makes the patent search process cheaper, more efficient, and quicker.  It will also aid in crafting the application's language and in identifying the unique attributes of this invention.

For 4 - Are there other agencies which might also have an interest or rights in this invention? If yes, please list the agencies and the names and phone numbers of relevant contact people.

For 5 - NOAA employees who intend to apply for patents totally unrelated to their official duties are still required to submit an invention disclosure for all patents they intend to file. This process establishes ownership rights and protects both the employee and the government.

For 6 - The questions under 6 (A & B) help define the government's interest (or the lack of it) in the invention.  (There may be cases where the government may decline to pursue a patent and develop the commercial potential for the invention.  In these situations, the rights may be assigned to the inventor(s).

For 7 - This information is helpful in evaluating the commercial potential of the invention.

For 8 through 10 - Self explanatory.