Invention Disclosures and Documentation

By F. Donald Paris

… a good beginning adds value to the patenting process.

While guidelines are never a substitute for legal advice, the following discussion will serve to acquaint inventors, both private and corporate, with the importance of good invention disclosures and also should serve as a reminder to all to be on the alert for patentable ideas.

Patenting can help maximize the protection of an important asset … technology. Technology that is not patented but still desirable of protection, is protected by maintaining it as trade secret. A patent is a legal limited statutory monopoly for a specified period of time depending on the country (20 years from filing an application in the U.S.) - granting the right to exclude others from practicing the claimed invention, while simultaneously providing a potential licensing asset on new developments. The issuance or publication of the patent also can prevent others from subsequently obtaining patent protection for essentially the same invention - often referred to as “freedom of operation.”

It is an inventor’s responsibility to bring to his/her new inventions, discoveries, and ideas, to the attention of his/her Patent Attorney. The principal way in which this may be accomplished is to document any invention or discovery in an Invention Disclosure (ID). Additionally, the ID when properly completed is a legal document which helps, inter alia, to establish inventorship, the date of conception, and often the breadth of the invention, all of which are important in the successful preparation and prosecution of a patent application, and obtaining a patent.

An ID is not a proposal to do research work or a suggestion to a laboratory to obtain supporting data. However, IDs can act as catalysts to initiate such actions.

An inventor typically prepares the ID and thereafter, works with his/her Patent Attorney to obtain maximum protection for the technology. Inventors also are expected to disclose all relevant facts and material that could bear on the novelty of the invention.

Inventions and ideas are an expression of engineering/research creativity, and when complete and operable they become valuable as proprietary assets, either as trade secrets or know-how or when protected by patents.

The ID is a record of your invention or idea.

The ID is a written disclosure and evidence of your invention at an early stage in its development or can disclose your completed invention. It constitutes a legal record of the conception and evidences what you believe to be the breadth and nature of your invention. When properly completed, it also serves to transmit your invention to an appropriate patent committee and/or Patent Attorney for review and further appropriate action. Laboratory notebooks for recording daily activities are an ancillary part of the patent process and are usually provided to company employees who are involved in research and development. The notebooks should be maintained in accordance with procedures and guidelines established by the company.

The ID should be written as soon as possible after you feel that you have a complete and operable invention (a mere thought or suggestion for research is usually too soon). Emphasis on speed in documenting your idea is well founded in many instances of close conception dates among different inventors within your Company and from other companies, especially in active technical areas. In accord with the U.S. Patent Law, the company files in the name of the inventor(s) who has the earliest documented conception date for the complete invention. Your Patent Attorney will determine proper inventorship pursuant to U.S. or applicable Patent Law. When appropriate, the successful reduction to practice of the invention will be considered by the responsible attorney in determining proper inventorship.

Do not be overly critical of your inventions or ideas when deciding whether they are worth writing up as an ID. Any process, product, or equipment invention, which you believe to be new or patentable and which strikes you as being valuable (especially where it has good technical or economic advantages over the prior art), should be the subject of an ID. If you are in doubt on the question of novelty or patentability, complete an ID and consult your Patent Attorney to decide whether there is a basis to seek patent protection. Good research and engineering practices dictate the inventor being familiar with the prior art, such as by having a search made for the invention. This is particularly desirable to have before starting a substantial research or development effort. Do not prejudge your inventions negatively - it could be the wrong decision and adverse to your and/or your company’s interests.

The ID should represent a complete disclosure of your invention.

What Goes Into the ID?

Keep the ID brief, but be complete, concise and accurate in describing your invention. Particularly describe or show data that supports your invention, to the extent available. Attach drawings or extracts from reports, etc., if available. If subsequently it is decided to file a patent application based on your ID, the attorney may ask for any additional data, drawings, etc. needed to prepare the application for filing in the U.S. Patent and Trademark Office.

The title should be descriptive and specific. The abstract, if provided, should clearly summarize the invention, its use, and its novelty and advantages over the prior art (that is, presently known conventional equipment or methods). In many cases, the people who evaluate your ID may be influenced by what your abstract says (especially if it is their first impression). A clear and definitive abstract, therefore, can be a real asset. It is important that the ID contain all of the facts available in a clear and accurate manner. And don’t omit the bad data - the attorney needs the complete story.

The ID should include a description of the invention, a brief discussion of all of the prior art that you are aware of, and an outline of the benefits you claim for your invention over the prior art.

Drawings or sketches should be included if the invention lends itself to illustration. And very important - if you have data to support the statements in your ID, include the data in your writeup or in a summary table. Your case is much stronger with data, particularly for chemical type inventions where data often is necessary to file a patent application. Also, if your invention is in use or has been disclosed or is included in a design or a study, note this fact in the ID. It will reflect a measure of interest in your invention. If the invention was made under a Government contract, also make note of that.

Mechanics of Preparing the ID

The final copy of the ID should be signed by the inventor(s) in ink on each page, including sketches, figures and tables, which are on separate sheets. The sketches and figures may be drawn freehand, but they should be made in ink. Each signature should be witnessed and dated by someone who has read and understands the invention disclosed in your ID but is not a co-inventor. The witness should always date his or her signature as of the day the witness (not the inventor) actually signs.

Copyright 2005, F. Donald Paris. All rights reserved.