Over my career as a patent attorney, both in-house for a multibillion-dollar technology company, and now, for nearly two decades, as the founder and managing partner of my own firm, I have had the privilege to navigate the complex landscape of intellectual property alongside numerous innovators and technology companies. In my experience, clients often encounter a common set of challenges when it comes to articulating their IP effectively through invention disclosures. These challenges, if left unaddressed, can pose significant hurdles to the protection and value realization of their pioneering inventions.

It’s easy to imagine the case of a software engineer who develops a cutting-edge algorithm that could revolutionize data analytics. Excited about their creation, the engineer faces the task of conveying the intricacies of their invention in order to not only secure legal protection but also to communicate its value comprehensively. Unfortunately, despite their technical prowess, the challenges in translating complex algorithms into clear, patent-worthy disclosures become apparent.

This scenario is not unique to software engineers. It reflects a broader issue within innovation-driven companies. The potential of groundbreaking ideas is often hindered by inadequate invention disclosures, impacting the strength of ensuing patents and, consequently, the overall success of the company.

In response to these challenges, I put together this guide to best practices surrounding invention disclosures tailored to the needs of technology companies. Recognizing that intellectual property is by far the primary driver of value in this space, I want to provide practical insights, strategies, and solutions for crafting effective invention disclosures. By addressing the specific pain points encountered by engineers, developers, and executives, I aim to empower innovators to maximize the potential of their intellectual property as the foundation of their success. 

What Is An Invention Disclosure?

An invention disclosure is a comprehensive document that outlines the details of an invention and demonstrates its potential patentability. It serves as groundwork for the subsequent drafting of a patent application by your IP counsel, and equips department leads, your legal team, and executives with the pertinent data they need to evaluate the feasibility of investing further in development and the patent application process.  

A typical invention disclosure includes a detailed description of the invention, covering its composition, manufacturing requirements, and practical applications. It also discloses any existing technology relevant to the invention, any aspects of the prior art that this new invention improves upon, and the ways in which it is different from that prior art. Finally, an invention disclosure will make the case from a business standpoint about the potential fiduciary advantages to pursuing patent protection and development. 

Well documented invention disclosures also play a pivotal role in defeating legal challenges to a patent. When disputes arise, having a well-drafted invention disclosure can serve as evidence of your inventive process and contribute to the defense of your intellectual property rights.

Who Should Complete an Invention Disclosure & Why Is It Important?

R&D Team: Guardians of Intellectual Property

Your Research and Development (R&D) team are the custodians of confidential information integral to your company’s intellectual property, and therefore your company’s overall market share and value. These individuals handle the day-to-day operations involving the most critical aspects of your innovations. It is paramount for these team members to understand the significance of this material, engage in proper handling procedures, and be well-versed in the steps required to safeguard any patentable inventions.

Driving Innovation: Equipping the R&D Team

Equipping your R&D team with the necessary knowledge and resources is a pivotal priority. However, a common challenge arises when R&D teams may not be fully aligned with your company’s mission and strategies. Valuable innovations might inadvertently slip through the cracks due to the misconception that developers’ ideas are too basic or straightforward to merit legal protections like patents. Establishing a culture of IP awareness within the R&D department, coupled with organized protocols for identifying and capturing potential IP assets, is among the most critical operational structures a company can establish.

Collaboration with IP Legal Team

To fortify the process employed by your R&D team in capturing valuable IP, and to provide direction for their ongoing innovation efforts, an experienced IP legal team becomes an indispensable resource. Collaborating with legal experts helps optimize the growth of your IP portfolio, ensuring that valuable innovations are adequately protected.

Crafting a Solid Invention Disclosure

An invention disclosure has multiple audiences, beginning with internal stakeholders, and reaching out through the application process to patent examiners and beyond. The principle of “garbage in, garbage out” here holds true. By distilling complex data and results into a clear document, a scientist or engineer can convincingly convey to management and executives that it’s worthwhile to invest in filing a patent application. 

Conversely, a poorly crafted disclosure creates confusion for everyone involved, including the attorney tasked with drafting the patent application. This can lead to a subpar application, potentially causing friction with a patent examiner. In the event of post-grant review, inter partes review, reexamination, or litigation, competitors may exploit any weaknesses identified in the granted patent. Crafting a meticulous and well-articulated invention disclosure is, therefore, the keystone in securing robust and defensible patents.

Train Your R&D Team On Invention Disclosures

Using structured invention disclosure forms is crucial for capturing innovative ideas from the start. However, the effectiveness of these forms depends on your developers knowing how to identify patentable innovation. Instituting a culture of IP awareness not only strengthens your company’s intellectual property portfolio but also minimizes the risk of overlooking valuable inventions. 

To ensure your R&D team isn’t letting any assets slip through, it’s essential to establish an ongoing IP awareness education curriculum. This program should consistently raise awareness, reinforce the guidelines for documenting inventions, and support the incentive programs designed to motivate their valuable contributions. Here are a few broad subjects to cover with your R&D teams on a regular basis:

Recognizing Patentability

Developers and engineers will often overlook inventions because they don’t recognize that a novel combination of known technologies or processes could be patentable. In some cases, their advanced understanding of their field actually works against them. 

It’s important to underscore that the patentability of an invention isn’t actually up to them, but rather a question for expert IP counsel to determine after a thorough examination of their invention disclosure and subsequent research like patent searches and landscape analysis. If developers can recognize and document their inventions properly, even seemingly elementary work can become a valuable asset. 

Understanding the Anatomy of a Patent

To help them recognize their work when it’s potentially patentable, inventors stand to gain significantly from an understanding of the various sections of a patent. You may want to underscore the purpose and function of patents as instruments of legal protection. By emphasizing the ways in which a patent guards their invention against infringement or misappropriation, and outlining how a patent claim works in the legal arena, developers gain an holistic awareness which allows them to contextualize their technology more broadly and enables them to focus on and precisely define their invention. This, in turn, contributes to the development of a stronger and more comprehensive patent.

Navigating Best Practices in Invention Disclosures

Beyond covering the best practices surrounding the completion of the disclosure itself and the level of technical detail you expect on a completed form, your IP education curriculum will also want to emphasize the optimal timing for submitting an invention disclosure – as soon as possible! – and how to prepare for a patent review committee’s evaluation. Providing your team with a thorough understanding of these practices ensures a streamlined and effective internal review process, paving the way for successful patent applications.

Unlike some employee professional development programs, this is not a “one-and-done” endeavor. It’s important for you to reinforce this knowledge on a consistent basis through regular training sessions. Consider working with expert IP counsel to help design and execute your IP education curricula, for engineers as well as other stakeholders across the innovation ecosystem.

Invention Disclosure Form Example

A properly designed invention disclosure is a complete narrative that describes the details of the invention, its novelty, and its feasibility as a patentable asset. An invention disclosure serves as a roadmap for counsel, management, and executives seeking to answer key questions that are critical for decision-makers to determine the prudent next steps for the invention.

While your invention disclosure template will cover information specific to your field and industry, there are some high-level items that all invention disclosures need to include in as much detail as possible:

  1. Bibliographic Information: The initial section of an invention disclosure offers basic administrative details such as the names of the inventors, the circumstances of any work with third parties, existing agreements related to development like joint development agreements or government contracts, and any ongoing commercial activities.
  2. Prior Art: Among the most important portions of an invention disclosure, this section summarizes the extant technology relevant to the invention, including details about existing products or ideas that play a role in shaping or inspiring its development. Include any competitive analysis or patent research, and be sure that disclosure of prior art is very thorough. 
  3. Value Statement: Here, inventors highlight the advantages and potential applications of the invention, articulating how the invention will be put into practical use and providing an illustration of its real-world applications. They’ll want to detail the novelty of the invention and how it offers advantages over the prior art from which it draws. This aspect is vital for assessing market potential and demand. 
  4. Description of the Invention: This section is the heart of the document, and depending on the complexity of the invention, will likely also be the longest. Inventors will offer an in-depth description of the intricacies of their invention, and further illustrate its novel aspects they believe may be patentable. Include as much descriptive information about the invention’s features, functionalities, and unique aspects that set it apart, including any drawings or diagrams, manufacturing requirements, or other performance data.

The more detailed the invention disclosure, the stronger the resulting patent application can be. Consider mandating further information on your template:

  • Effectiveness Data: Provide evidence that demonstrates the efficacy of the invention, including test results, performance metrics, or any other relevant empirical data to substantiate the innovation’s uses.
  • Comparative Analysis: Conduct a thorough examination of comparable products and existing patents to establish the uniqueness and improvements brought by the invention. This step is essential for determining the novelty and patentability of the innovation.
  • Business and Fiduciary Case: Articulating a compelling case from a business and fiduciary standpoint for further investment in the development and patenting of the invention. This involves projecting the potential market impact, revenue streams, and any strategic advantages gained through the patent.

The Duty to Disclose

Discussion of prior art isn’t just a mandatory part of an invention disclosure form. When filing a patent with the U.S. Patent Office (USPTO), applicants have a Duty of Disclose, a legal obligation to provide all relevant and material information related to the patentability of an invention. Applicants are required to disclose any information that is material to the patentability of their invention. Material information includes prior art references (existing patents, publications, or other relevant documents) and any facts that might impact the patentability assessment. 

Failure to fulfill the duty of disclosure can have serious consequences, including the potential for a patent to be declared unenforceable or invalidated if material information is deliberately or inadvertently withheld. The disclosure of prior art provided on a patent application is often sourced directly from the invention disclosure form, underscoring this document’s importance in creating strong, enforceable patents.

Using Pseudocode for Invention Disclosures

Conveying complex processes and algorithms through traditional means like words and illustrations can be a challenge. This difficulty in communication poses hurdles for both inventors trying to describe their innovations and attorneys aiming to draft robust patents. 

Pseudocode serves as a bridge between inventors and attorneys. Instead of relying on inventors to transform intricate processes and algorithms into words, pseudocode allows inventors to describe them using informal, technology-independent language. Subsequently, a skilled patent attorney can then translate this pseudocode into the description and claims of a patent application.

What makes pseudocode effective is its ability to blend plain language with mathematical notation. It captures the essential steps and intricacies of a process or algorithm without the constraints of strict syntax.

Where to Submit an IDF?

Once you have a well-documented invention disclosure, the next step is to file it through the appropriate channels. Along with educating your team on best practices around the completion of an invention disclosure, it is also important to make them aware of your protocols around the secure submission of the form for internal review. 

Utilize a Secure Submission Portal

It’s vital that you prioritize security around the handling of invention disclosures. These documents represent the first step in the creation of a valuable proprietary asset for your company and should be handled as such. Public disclosure of an invention, especially at this nascent stage, risks invalidating your ownership rights to the invention before it’s ever fully developed. 

Work with your IT team to develop a secure channel or portal for invention disclosure submission to safeguard this sensitive information. Also, map out a chain of possession for the disclosure so that there is a record of every person who accessed the document between its submission, the review process, and the filing of a patent application. This ensures that the details of the invention are protected and only accessible to authorized individuals within the organization.

Timing Matters: File When It’s an Invention

Invention disclosures should be submitted at a strategic juncture – specifically when the work can be definitively considered an invention. This is where the comprehensive training you’ve engaged your R&D team matters most. Their understanding of what is potentially patentable is the trigger for this crucial step. 

Regardless of whether the potential invention ever finds its way into a patent filing, submitting disclosures at the right moment offers a layer of protection against competing claims. This is particularly significant in areas where the principle of first-to-invent takes precedence over first-to-file claims.

Ongoing Protection: A “Living Document”

Invention disclosures are a “living document” that evolves with the progress of the invention. Inventors have the flexibility to file updated disclosures as their invention advances. The dynamic nature of disclosures offers continuous protection to the invention, even in the face of modifications or improvements. It serves as a proactive measure, ensuring that the documentation stays relevant and effective throughout the development stages of the invention.

Final Thoughts

The challenges faced by inventors and technology companies underscore the need for well-defined processes around the creation, completion, and submission of invention disclosures. These processes are not merely  legal formalities – they are a strategic investment in the future of your company. 

By enlisting the expertise of dedicated IP counsel, technology companies can establish a culture of intellectual property consciousness, a strategic move that can significantly impact the trajectory of innovation within a company. Moreover, the role of IP counsel extends beyond the technicalities of patents. IP legal teams are central to the development of a broader IP-aligned business strategy, aligning every facet of business strategy with the company’s intellectual property goals, ensuring that your IP becomes a highly competitive and sustainable business advantage.

Michael Dilworth

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.