Corporate IP Counsel: Advocate of IP Alignment in the Enterprise – An Overview of Effective Invention Disclosures
Editor’s Note: Bob Crawford continues, in this series, to share his experiences and insights into how Corporate IP Counsel can be facilitators and leaders in creating a culture of IP awareness and alignment for companies to best leverage their valuable IP assets.
As corporate IP counsel, providing your R&D team with both the know-how and the resources to best capture and protect their innovations is an important aspect of your role as an internal advocate for IP alignment. One critical link in that chain is developing and fostering best practices for invention disclosures. In addition to supporting the innovation efforts of your R&D counterparts through “lunch n’ learns” and other educational opportunities, providing specific guidance for invention disclosures, including working with the technical team to develop a company-wide invention disclosure form, will both strengthen the ties between legal and R&D and vastly improve the quality and, likely, frequency of submissions for patent review.
The Importance of Codified Invention Disclosure Protocols
The initiation of the patent process occurs when an inventor drafts an invention disclosure. You always want to put your best foot forward when starting a new journey, so a well-written, comprehensive invention disclosure describing an inventor’s invention is critical.
An invention disclosure is used to first convey the details of the invention to an Innovation or Patent Review Committee. Such committees generally consist of a technical expert, a program manager, and IP counsel, among others, and function to decide whether a patent application should be prepared and filed.
Secondly, the invention disclosure provides the technical description to the patent attorney or agent assigned to draft the patent application.
The importance of a well-written invention disclosure can be summed up by “garbage in, garbage out,” so it’s essential that inventors understand and appreciate the expectations when drafting an invention disclosure. A “lunch n’ learn” meeting with a small group of members of the technical team is well suited for this discussion. In addition to discussing the details of the information needed for an invention disclosure, IP counsel should also be prepared to answer procedural questions about the internal patenting process or questions about patent eligibility.
How to Write an Invention Disclosure: Four Sections to Include
In general, an invention disclosure includes four basic sections. Laying out an invention disclosure in a templated form that clearly outlines these four areas allows for easy use by the inventors and will lead to better quality disclosures.
- Basic Information: The first section simply provides administrative information that includes, for example, the names of the inventors, the dates and circumstances of any disclosure to a third party, any agreements covering the development (e.g., joint development agreements, government contracts), and any commercial activity.
- Prior Art: A second section describes the related prior art that informed the development of the invention.
- Value Statement: A third section includes identifying the value and novelty of the invention, for example, providing advantages over the prior art and the commercial use and value.
- Detailed Description: Lastly, a fourth section provides a detailed description of the invention including figures, flow charts and data.
Common Questions About Invention Disclosures
- “How do I know if something is patentable?”
- One answer is, “When you solve a problem, the solution may be patentable.”
- Engineers tend to think most of their designs are not novel and may not appreciate that a unique combination of known elements is patentable. Engineers may also be reminded that patentability is a legal question to be determined by IP counsel after reviewing the results of a patent search.
- IP counsel may caution engineers not to rely on their gut when they believe a design is not patentable, but encourage them to rely on their gut when they think something is patentable.
- “When should I submit an invention disclosure?”
- The clear answer is, “Not when you are about to publish or disclose the invention at a conference!”
- This is actually a very important question that depends on a company’s patenting strategy. This part of their IP strategy considers many factors, such as the technology of the invention, business strategy, contractual obligations, public disclosures of the invention, and cost.
- For example, a company may have an aggressive patenting strategy that looks to file multiple provisional applications during the design before filing a non-provisional patent application. In this case, invention disclosures would be filed at multiple technical milestones or design changes/alternatives.
- “How much information do I have to include in the invention disclosure?”
- This is a loaded question. At times, inventors push back about the amount of time it takes to draft an invention disclosure because this effort takes away from their “real” job. The extremes in drafting an invention disclosure range from a high-level summary invention at one end, and a complete data dump with no context on how the information fits together on the other end. The obvious answer is somewhere in between.
- The information provided should be enough to describe the invention in order to enable one skilled in the art to practice the invention. They should also compose their disclosure with the understanding that a patent attorney or agent will use this information to draft a patent application.
- IP counsel may also have to field a complaint by engineers that drafting invention disclosures may be a waste of time when the Patent Review Committee may reject their invention for filing a patent application. If this is an issue, IP counsel may consider having a two-tier or iterative invention disclosure process.
- For example, an initial invention disclosure may be drafted at a less detailed level sufficient for members of the Patent Review Committee who are familiar with the invention’s technology. Once approved, the inventor would be expected to expand upon the initial invention disclosure with a more detailed version.
Invention disclosures require considerable time and effort from an inventor, but this time is well worth the expense if it results in a well-drafted, stronger, and comprehensive patent application to protect your company’s valuable intellectual property. Well-crafted invention disclosures by a well-informed R&D team will contribute to enhancing your company’s standing as leading innovators in your market. As IP counsel, creating an open dialogue around invention disclosures with your R&D colleagues will strengthen those relationships, and aid you in your efforts to align your company’s business strategy with IP goals.
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.