Basic Patent Law: VI. Effective Invention Disclosures
Sixth in a series of articles aimed at scientists, engineers, business managers, non-patent lawyers, and other professionals that desire or need to understand basic principles of patent law and practice. Check out previous editions of this series HERE.
What’s in a name? that which we call a rose,
By any other name would smell as sweet;
-Shakespeare, Romeo and Juliet, II, ii
When Juliet cursed her luck that Romeo was a dreaded Montague, she wasn’t talking about invention disclosures, which by any other name—record of invention, technical suggestion, patent memo—might be sweet or sour. Aside from the nature of the invention, what matters most in making a disclosure sweet is the degree of care taken to create it.
Why is it important to write a good invention disclosure? Ultimately, an invention disclosure will have many audiences, and “garbage in, garbage out” applies. By crystallizing data and results into a simple document, a scientist or engineer can convince management that it will be worth the effort and cost to file a patent application. However, a poorly crafted disclosure will confuse everyone, including the attorney or agent assigned to draft a patent application. The resulting application may be poor also, which will alienate a patent examiner. If you’re fortunate, the application will be allowed anyway. However, your competitors will identify any weaknesses in the granted patent—including the quality of your scientific showings—in the event the patent is subject to post-grant review, inter partes review, reexamination, or litigation.
The form of the invention disclosure is not critical. Some companies prefer a detailed document, while others are content with a free form. However, the best invention disclosures include a high proportion of these winning elements:
- Communicates facts without undue speculation (why or how an invention works is less important for patenting than knowing what works).
- Puts the invention in context. Explains what the state of the art is and how this particular idea improves on it.
- Identifies any relevant prior art known to the submitter(s).
- Thoroughly describes the inventive subject matter in terms of statutory classes of invention: composition, process, machine, article of manufacture.
- Includes detailed examples that show how to make and use the invention and comparative examples that demonstrate improvements vs. known technology.
- Explains completely how the invention will be put into practice, even if it’s “just an idea.”
- Justifies patenting the idea from a business perspective.
- Explains the best way to make the product or practice the process; includes ranges of effective conditions (temperature, pressure, pH, concentrations, etc.), suitable reagents, proportions, and choices for the reactive components.
- Identifies advantages of the invention.
- Describes relevant commercial activity. For example, has the inventive product or the product from the inventive process been sold or offered for sale?
- Identifies disclosures made to third parties and whether the disclosures were made under a secrecy agreement.
- Identifies possible inventors and explains what each person contributed.
- Includes signatures from the submitters and a disinterested witness.
The list is not exhaustive. However, if you pay attention to the bullets above, I’m confident that yours will be in the top 10% compared with invention disclosures I have reviewed in the past 20+ years. And whether you call it a “record of invention,” “technical suggestion,” or anything else, I promise it will smell just as sweet to your friendly neighborhood patent attorney.
Stay tuned for Part VII of our Basic Patent Law series!
– Jon Schuchardt
Check out Jon’s bio page
This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.