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Preparing Invention Disclosures

Chemical Engineering Progress - April 1, 2010

By Bill Hall

The patent process can be a costly journey down a long and winding road. An invention disclosure serves as a roadmap for preparing the patent application and ultimately obtaining a valid, enforceable patent.

Patents issued by the U.S. Patent and Trademark Office (USPTO) grant an inventor a limited exclusionaty right to his or her new product or method under the United States' Patent Act. Once the invention has been conceived and demonstrated, the inventor, generally through a patent attorney, prepares a patent application and files it with the USPTO.

Working with a patent attorney (1) can often turn into an arduous process because some inventors do not understand what they should emphasize and what they should omit. This typically forces nniltiple meetings and consultations that could have been prevented with an effective invention disclosure, which describes the invention and serves as the basis for the patent application. A thorough invention disclosure becomes a readily accessible legal reference that can save the inventor time and money, even years after filing the application.

Unfortunately, many inventors do not prepare an invention disclosure themselves. Instead, they start by describing their invention to a patent attorney. This lack of an invention disclosure prevents the attorney from being fully prepared for the initial discussion. In addition, patent applications prepared without the benefit of an invention disclosure usually require several iterations of inventor/attorney discussions and multiple draft applications.

This article explains how to put together a thorough invention disclosure that will help you make the most effective use of your patent attorney's time and expertise. By following these guidelines and covering the who, what, when, why, and how of your invention, you can avoid spending extra time and money unnecessarily.

The basic who and what

The invention disclosure should contain the information listed in Table 1. This standardized format provides the details your attorney needs to prepare and file the patent application.

Begin with the title of the invention, and give the name, address, contact information, and citizenship of each inventor. If the invention was developed using government funding, provide the contract or grant number(s).

Many inventors leave the inventor identification section blank, since the attorney does not need this to prepare an application. However, the information is ultimately necessary to comply with the filing requirements established by the USPTO.

Explain why

Include a brief statement identifying the problem solved by the invention. This establishes the nature and field of the invention. This portion of the disclosure does not need to be lengthy or detailed; a short, concise statement is sufficient. For example: "Typical spring compressors for removing coil springs bind up during use. The current invention provides an improved spring compressor that does not bind up."

The prior art discussion lays the groundwork for the attorney's understanding of the invention. Keep this brief, and focus on documents that describe previous efforts to overcome the identified problem or that indicate the current state of the art. Define commonly used terms to familiarize the attorney with the field of the invention. Conclude the prior art discussion by providing the search criteria and databases that you used during prior art searches, as well as all relevant prior art references.

Although your analysis of the prior art is helpful to your attorney, avoid making arguments concerning the patentability of the current invention over the prior art. Such arguments may interfere with the attomey's ability to formulate an independent opinion.

Document when

In detemining whether an invention is patentable and establishing ownership rights, the patent examiner looks at two critical dates — the date of conception, and the date the invention was reduced to practice. Both of these dates must be verifiable. If you maintained good written research records, these dates should be readily available.

Properly documented conception and reduction-to-practice dates can be critical to determining ownership of the invention, since the U.S. determines patent ownership on a first-to-invent basis (unlike the rest of the world, where patents are awarded to the first person to file a patent application). These dates can also be used to eliminate some prior art from being cited against the patent, during the application examination process and years later should the patent be challenged in court.

Although the dates of conception and reduction-to-practice help establish ownership of patent rights, the failure to alert the attorney of any prior public disclosures or offers to sell the invention may result in forfeiture of patent rights. Any public disclosure of the invention or an effort to commercialize the invention starts a one-year time bar during which the application must be filed. Providing this information to the attorney with the invention disclosure will preclude accidentally filing the application after the one-year time period. Note that nearly all jurisdictions outside the U.S. do not grant this grace period for public disclosures. Therefore, prior to filing the application, the best approach is to maintain the invention as a trade secret.

Details of how

The key component of any invention disclosure, and the primary focus of the patent application, is the description of the invention. Unfortunately, in many invention disclosures this portion is often so brief that it barely qualifies as an abstract. Many times, inventors describe the invention in terms of only a single example. Patent applications based on such skimpy invention disclosures require much more time to prepare and incur higher costs.

Describe the invention in detail and identify the preferred embodiment as well as any other commercially viable alternative embodiments. Include several operational examples. For inventions involving improved methods, an outline of the procedure is acceptable. When describing a new apparatus, the inclusion of working drawings or blueprints significantly enhances the disclosure, particularly when the written description identifies elements in the drawings.

Disclosures relating to chemical compositions are generally straightforward. However, to ensure that the patent application meets the enablement requirement, disclose the method of preparing the composition, even if it is not considered part of the invention.

If the invention includes both a method and either a composition of matter or a device for performing the method, describe the method separately from the description of the composition or device. The most effective way to do this is to provide working drawings and describe the device or composition first; then describe the method. This allows the attorney to identify the invention's components before interpreting the method for using the device or preparing the composition.

For example, many engineering projects produce multiple inventions derived from a single objective. Consider a project to provide carbon fiber having certain strength characteristics. This project may produce a new starting material. Use of this new starting material requires an improved spinning process and ultimately produces a novel fiber. All three inventions may be disclosed in a single invention disclosure. Using the outline above, the disclosure should begin with a discussion of the new starting material, progress to the improved spinning process, and conclude with a description of the improved fiber.

Similar outcomes occur when developing new catalysts. The catalyst composition may be patentable as well as a new product prepared using the catalyst.

In addition to describing the prefened embodiment — i.e., the precise operating conditions that you consider to be the best way to practice the invention — the description should also include wider operational and compositional ranges. For example, the preferred embodiment might involve heating 10 g of nitric acid at a temperature of 45°C for 10 min The disclosure should also indicate ranges where satisfactory results are obtained, transforming that information into: heating 8 g-12 g of nitric acid at a temperature of 40-50°C for 9-11 min

Temperature values should indicate whether the composition is heated to a temperature or placed within an environment at a certain temperature. For example, consider the description of bread baked in an oven set to 450°F. This indicates that the dough is in an environment of 450°F, rather than actually heated to this temperature.

Working examples should correspond to the range of operable conditions and preferred conditions. Highlight the unexpected results by including comparative examples to the prior art practices or currently available compositions. Demonstrating the improvements provided by the invention compared with the cited art increases the likelihood of successfully obtaining a patent.

When describing operating conditions and compositions, use SI units, which are required by most patent offices outside the U.S. Providing SI units in the invention disclosure reduces legal fees for additional applications that will be filed in other countries.

Lastly, it is important to remember to use consistent terminology in the invention disclosure. Variation in terms creates unnecessary confusion that the attorney must clarify before drafting the patent application. A good way to prevent this is to avoid using trademarks, trade names, and internal corporate identifiers. A trademark merely represents the source, not the composition of the goods. In fact, the composition identified by a trademark may change after the application has been filed. To ensure that the patent specification accurately describes and enables the invention, the generic composition must be identified, such as by specifying a compound's chemical formula and/or providing the chemical structural as a drawing.

Additional patenting tips

Remember that the main goal is obtaining a broad, enforceable patent. Following some practices that are common in industry and academia that you think are shortcuts could turn into detours that delay your arrival at your destination.

For example, combining a discussion of prior art with the cunent invention details is appropriate for peer-reviewed journals. However, blending these fields in an invention disclosure complicates the process, because the patent attorney must initially identify the invention and separate it from the prior art before drafting the patent application.

Similarly, footnotes and endnotes are not necessary in an invention disclosure. These references should, however, be listed and discussed in the prior art discussion section.

Do not suggest patent claims in the invention disclosure. This does not help your attorney — his or her job is to use your thorough disclosure to draft the broadest claim coverage possible for the invention.

Companies sponsoring research often cut off funding once the invention has been successfully demonstrated. However, as discussed earlier, conceiving the invention is just one step in the patent process. Forcing an inventor to work on the patenting process unpaid frequently results in a paltry disclosure, which can run up legal costs and/or result in a patent application being denied.

By following these guidelines, you can minimize attorney fees and maximize your chances of obtaining a broad, enforceable patent. By consistently preparing invention disclosures in this way, you will find that you spend more time developing new inventions and less time consulting with patent attorneys on completed research.

Table 1. Provide this information to your patent attorney in the invention disclosure.

  1. Title of invention.
  2. List the developers, including name, employer, mailing address, e-mail address, telephone number, and citizenship.
  3. Was the invention developed/financed using any government funds? If yes, identify the government contract/grant number.
  4. Describe the problem solved by the invention.
  5. Identify efforts by other parties directed at solving this problem. Include a list of any relevant publications. Attach any prior art searches.
  6. When was the invention first conceived?
  7. Do you have a written record of the development of the invention? If yes, identify the location and indicate the date of the first entry.
  8. Have you commercialized or attempted to commercialize the invention? If yes, describe the circumstances.
  9. Has the invention been disclosed to anyone? If yes, list all prior publications and disclosures of the invention to third parties, including the date and the circumstances of the disclosure. Also indicate if a confidentiality agreement covered the disclosure.
  10. Do you have a working model of the invention?
  11. If it would aid in understanding the invention, attach a drawing.
  12. Describe the invention in outline form, including the unexpected result.

[1] Helmer, S. J., "Work Effectively with Your Patent Attorney," Chem. Eng. Progress, 99 (4), pp. 70-74 (Apr. 2003).

 


Reprinted with permission from CEP (Chemical Engineering Progress), April 2010. Copyright © 2010 American Institute of Chemical Engineers (AlChE).