Registered Patent Agent - Robert M. Hunter on Patents

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	Robert M. Hunter, Ph.D. Registered Patent Agent WebPatent.com

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INVENTION DISCLOSURE

by Robert M. Hunter, Registered Patent Agent

Disclosing an invention is explaining it to someone in a way that meets the needs of the person receiving the invention disclosure. Thus, the intended audience of an invention disclosure affects what information it contains and how the information is presented.

The preparation of five types of disclosure documents is supported here. Each document contains information about a particular, named invention that is organized in a format that maximizes the usefulness of the information to its intended audience. A Discovery Report is used to gather the minimum amount of information needed by technology managers to conduct invention "triage," i.e., decision-making about when and how to conduct the subsequent steps in the technology management process. A Complete Invention Disclosure is used to gather the information on "how to make" and "how to use" an invention required for an organization to report an invention to a research sponsor, and if appropriate, for the research sponsor to file a patent application on the invention should the organization elect not to file one. A Provisional (U.S.) Patent Application is used collect the information needed to file a provisional patent application in the USPTO that meets the requirements of U.S. patent law. The resulting document can also be used to guide a patentability search. A Regular (U.S.) Patent Application is used to collect the information needed to file a regular patent application containing patent claims that meets the requirements of U.S. patent law. A PCT Patent Application is used to collect the information needed to file an international patent application. Because preparation of all disclosures other than a Discovery Report require a significant amount of effort, disclosures other than a Discovery Report should generally not be prepared by inventor(s) unless the inventor(s) are directed to do so by their management.

Discovery Report

A Discovery Report allows inventor(s) to present information about a recent discovery to those involved in making technology management decisions. It contains the minimum information required to support good triage decisions about when and how the next steps in the technology management process should take place. It allows just-in-time knowledge management by delaying the expenditure of significant efforts at invention disclosure until it is clear that those efforts are necessary. It also facilitates early reporting by inventors of potentially valuable discoveries by making the initial reporting process as painless as possible. Because a Discovery Report is directed to a technology management audience, this disclosure should be written in a "Scientific American" style, i.e., in a way that a scientist from another field can understand and appreciate the disclosure. Preparation of the disclosure is facilitated by dividing it into a number of discrete steps or elements, with each element addressing a single, (hopefully clear) disclosure question or issue. Each issue is explained in the files listed below:

Who thought of the invention?

What technical problem(s) does the invention solve?

Which of the following types of literature have been searched to determine if the invention is new: U.S. patents, non-U.S. patents and and non-patent publications? By whom, when and to what extent?

How have others solved the problem(s) that the invention solves?

Why is the invention better than the solutions of others?

Why would a product that incorporated the invention have monetary value?

Which potential customers would find the invention attractive?

As of today, what work remains to be done to prove that the value of the invention or to incorporate it into a product?

Was the invention discovered or built and tested using Government funding? If so, what was the funding source?

When, where and in how much detail has or will be the invention disclosed to the public?

If commercialization of the invention is not feasible or appropriate, how else could the public benefit from the discovery?

What else do you want to disclose about the invention?

What questions do you have for the recipient(s) of this report?

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Complete Invention Disclosure

Most employment agreements and government contract or grant funding agreements require that a complete invention disclosure (a.k.a., employee invention report) be made of inventions conceived or made under the terms of the agreements. This type of invention disclosure is often used by an organization's technology evaluation committees to make mission-critical decisions about whether and how to further develop and protect an invention. They are also used by research sponsors (private funding sources or government agencies or departments) as the basis of preparation of a patent application, if the organization that employs the inventor(s) decides not to file a patent application and the research sponsor decides to do so.

Because one or two person-weeks or more can be required to prepare a complete invention disclosure, preparation of this type of disclosure should not be initiated by an inventor unless the organization has decided it is appropriate to expend the resources necessary. Because the disclosure is potentially directed at two audiences, technology managers and patent professionals, the disclosure should be written at two levels. Material concerning the purpose, nature and advantages of the invention should be written in a "Scientific American" style, i.e., in a way that a scientist from another field can understand and appreciate. Material concerning the technical aspects of the invention ("how to make" and "how to use" the invention) should be introduced in a "Scientific American" style and then discussed in depth in a style that would be understood by a person skilled in the "art" to which the invention pertains, i.e., by a ordinary worker in the field. Preparation of the disclosure is facilitated by dividing it into a number of discrete steps or elements, with each element addressing a single disclosure question or issue. Each issue is explained in the files listed below:

What are appropriate titles for the invention?

Who thought of the invention?

Have any parent (related) patent applications been filed? If so, what are the details?

Can you claim priority of invention? If so, what are the details?

Does this disclosure include a computer program listing in a microfiche appendix? If so, how can the microfiche be described?

Was the invention discovered or built and tested using U.S. Government funding? If so, what are the details?

What resources provided by your employer were used in making the invention?

What and when were the important events in the completion of the invention?

What is the technical field of the invention?

Which U.S. patents characterize the background of the invention?

Which non-U.S. patents and patent applications characterize the background of the invention?

Which non-patent publications characterize the background of the invention?

How have others solved the problem(s) that the invention solves?

What are the limitations of the background art?

What technical problem(s) does the invention solve?

Why is the invention better than the solutions of others?

What are the definitions of the terms used in a special way in describing the invention?

What is the nature of the invention?

What are the essential (i.e., absolutely required) elements of the invention?

What are the essential (i.e., absolutely required) steps of the invention?

How can the invention be used?

How can the figures (drawings) be briefly described?

Which drawing reference numeral is associated with each part?

Which background art documents are incorporated by reference into the disclosure?

Which deposits of biological material are a part of this disclosure?

How are the preferred embodiments of the invention made (i.e., made up of features or steps)?

What is the best mode of the invention?

How does the invention work?

What are some examples (working or prophetic) of the invention?

Which computer program listings are a part of this disclosure?

Which drawings are a part of this disclosure?

Which sequence listings are a part of this disclosure?

Which patent professionals appear to be qualified to prepare a patent application for this invention?

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Provisional U.S. Patent Application

In the world of inventing, priority of invention is everything. While U.S. law allows priority of invention to be established by documenting completion of an invention (for a limited time and for the purpose of U.S. patent protection only), almost all other countries require a patent application to be filed to establish priority. Preparation of a provisional patent application is the quickest and dirtiest way (and the least expensive way) to establish priority of invention in the U.S. in a way that works to secure priority in essentially all countries (i.e., under the rules of national and regional patent offices) for a period of twelve months from the filing date of the priority application. It can also be used to conveniently communicate the invention to the person conducting a search of the prior art upon which arguments concerning the novelty and non-obviousness of the invention can be based.

While the USPTO prefers that provisional applications be formatted in the same way as regular applications (MPEP 601 - Guidelines for Drafting a Provisional Application Under 35 U.S.C. 111(b)), no format is absolutely required (as is the case for regular applications, too). The only significant shortcuts allowed relative to a regular application, as far as content is concerned, are that a patent claim is not required, an information disclosure statement need (and should) not be submitted, and disclosed sequence listings need not be submitted in computer readable form (although paper copy is still required). The description of an invention in a provisional application must still meet the requirements of the first paragraph of 35 U.S.C. 112 and a drawing must be included if necessary for understanding of the invention as required by 35 U.S.C. 113. Thus, the specification of a provisional application must contain a written description of the invention, it must enable a person skilled in the art to which the invention pertains "to make and use" the invention and it must set forth the "best mode" of the invention (MPEP 2161 - Three Separate Requirements for Specification Under 35 U.S.C. 112).

Preparation of a provisional patent application allows the inventor(s) to get a foot in the door of the patent system on a global basis. It is important for inventor(s) to understand, however, that it is the entire foot (at least a description and enabling disclosure of the best mode of the invention) that must be in the door to effectively establish priority of invention, and not just a toe. If a provisional application does not establish a sufficient basis upon which a claim of priority for valuable intellectual property can be based (i.e., if it is deemed not to support the broadest claims to which the inventor(s) are entitled in the later-filed application that claims priority in it), the time, effort and money expended to prepare and file it are wasted.

Because patent applications are legal documents concerned with mission-critical intellectual-property assets, to be effective, all types of patent applications must be directed to a number of audiences. The drafts of the specification portion of patent applications must initially be understood by a professional searcher or a patent professional, who may or may not be intimately familiar with the specific field of the invention. Nonprovisional patent applications are searched and examined by an Examiner who must be convinced that the disclosure is sufficient and that the claim or claims are definite and patentable. Some Examiners are true experts and some are new to the field. By law, the disclosure must be sufficient for a person having ordinary skill in the art to recognize what the inventor(s) consider to be his/her/their invention and for such a person "to make" and "to use" the best mode of the invention contemplated by the inventor(s) on the date the application was filed. When the application is read by a competitor or a patent professional retained by him/her, it must not be deficient in any of the above areas and it must make it clear under what conditions patent infringement is occurring or would occur. A reading of the document must convince a competitor (to the extent a technical document can) that it would be less expensive to avoid or license the invention rather than infringe its claims or attempt to invalidate them. If infringement is alleged by the owner of the patent, one or more judges and juries may read the document. While the judge or judges may be very smart, they may have little or no background in technology and they may not even be experienced in patent law. Ordinarily, in patent infringement/patent validity cases, it is the judge or judges who decide what the claimed invention is (to interpret the claims) and what the law is. In such cases, members of juries of U.S. citizens must be able to understand the claimed invention (typically with the help of experts on both sides). They may have absolutely no background in technology and they may be of average, above average or below average intelligence. Ordinarily, it is the jury who decides whether a patent is valid and/or infringed, and, if so, the amount of the award to the patent owner. So - be careful out there!

In drafting patent applications, it is always better to be safe than sorry. The general rule for depth of technical disclosure (other than admissions about what is in the prior art which, in general, should be avoided) is "If in doubt, include it." Preparation of the disclosure is facilitated by dividing it into a number of discrete steps or elements, with each element addressing a single disclosure question or issue. Each issue is explained in the files listed below:

What are appropriate titles for the invention?

Who thought of the invention?

Does this disclosure contain copyright or mask work material? If so, do you authorize its facsimile reproduction as a patent disclosure

Does this disclosure include a computer program listing in a microfiche appendix? If so, how can the microfiche be described?

Was the invention discovered or built and tested using U.S. Government funding? If so, what are the details?

What is the technical field of the invention?

How have others solved the problem(s) that the invention solves?

What technical problem(s) does the invention solve?

What are the definitions of the terms used in a special way in describing the invention?

What is the nature of the invention?

What are the essential (i.e., absolutely required) elements of the invention?

What are the essential (i.e., absolutely required) steps of the invention?

How can the invention be used?

How can the figures (drawings) be briefly described?

Which drawing reference numeral is associated with each part?

Which background art documents are incorporated by reference into the disclosure?

Which deposits of biological material are a part of this disclosure?

How are the preferred embodiments of the invention made (i.e., made up of features or steps)?

What is the best mode of the invention?

How does the invention work?

What are some examples (working or prophetic) of the invention?

Which computer program listings are a part of this disclosure?

Which drawings are a part of this disclosure?

Which sequence listings are a part of this disclosure?

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Regular U.S. Patent Application

While the USPTO prefers that regular U.S. patent applications be formatted in a specific way (MPEP 601 - Guidelines for Drafing a Nonprovisional Patent Application Under 35 U.S.C. 111(a)), no format is absolutely required. Using a nonstandard format, can, however, make the application more difficult to search and examine (as well as to prosecute), which argues for complying with USPTO preferences (which is what Patent Partner does). The description of an invention in a regular application must meet the requirements of 35 U.S.C. 112 and a drawing must be included if necessary for understanding of the invention as required by 35 U.S.C. 113. Thus, the specification of a regular application must contain a written description of the invention, it must enable a person skilled in the art to which the invention pertains "to make and use" the invention and it must set forth the "best mode" of the invention (MPEP 2161 - Three Separate Requirements for Specification Under 35 U.S.C. 112). The specification of a regular patent application must "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." It is recommended that the inventor(s) draft a single product claim and/or a single process claim, recognizing that the patent professional working with the applicant(s) will use the applicant(s) claim(s) as a starting point to draft the final claims that will be filed in the USPTO. USPTO rules also require that certain types of disclosure (e.g., sequence listings, computer program listings, drawings, etc.) be submitted in forms that facilitate searching and examination and/or publication of the patent.

The warnings concerning the multiple audiences to which patent applications must be directed that were made in the introduction to provisional applications are applicable here, too. The drafts of the specification portion of patent applications prepared with Patent Partner must initially be understood by a professional searcher or a patent professional, who may or may not be intimately familiar with the specific field of the invention. Nonprovisional patent applications are searched and examined by an Examiner who must be convinced that the disclosure is sufficient and that the claim or claims are definite and patentable. Some Examiners are true experts and some are new to the field. By law, the disclosure must be sufficient for a person having ordinary skill in the art to recognize what the inventor(s) consider to be his/her/their invention and for such a person "to make" and "to use" the best mode of the invention contemplated by the inventor(s) on the date the application was filed. When the application is read by a competitor or a patent professional retained by him/her, it must not be deficient in any of the above areas and it must make it clear under what conditions patent infringement is occurring or would occur. A reading of the document must convince a competitor (to the extent a technical document can) that it would be less expensive to avoid or license the invention rather than infringe its claims or attempt to invalidate them. If infringement is alleged by the owner of the patent, one or more judges and juries may read the document. While the judge or judges may be very smart, they may have little or no background in technology and they may not even be experienced in patent law. Ordinarily, in patent infringement/patent validity cases, it is the judge or judges who decide what the claimed invention is (to interpret the claims) and what the law is. In such cases, members of juries of U.S. citizens must be able to understand the claimed invention (typically with the help of experts on both sides). They may have absolutely no background in technology and they may be of average, above average or below average intelligence. Ordinarily, it is the jury who decides whether a patent is valid and/or infringed, and, if so, the amount of the award to the patent owner.

In drafting patent applications, it is always better to be safe than sorry. The general rule for depth of technical disclosure (other than admissions about what is in the prior art which, in general, should be avoided) is "If in doubt, include it." Preparation of the disclosure is facilitated by dividing it into a number of discrete steps or elements, with each element addressing a single disclosure question or issue. Each issue is explained in the files listed below:

What are appropriate titles for the invention?

Who thought of the invention?

Does this disclosure contain copyright or mask work material? If so, do you authorize its facsimile reproduction as a patent disclosure

Does this disclosure include a computer program listing in a microfiche appendix? If so, how can the microfiche be described?

Have any parent (related) patent applications been filed? If so, what are the details?

Can you claim priority of invention? If so, what are the details?

Was the invention discovered or built and tested using U.S. Government funding? If so, what are the details?

What is the technical field of the invention?

Which U.S. patents characterize the background of the invention?

Which non-U.S. patents and patent applications characterize the background of the invention?

Which non-patent publications characterize the background of the invention?

How have others solved the problem(s) that the invention solves?

What are the limitations of the background art?

What technical problem(s) does the invention solve?

What are the objects of(characteristics desired in) the invention?

Why is the invention better than the solutions of others?

What are the definitions of the terms used in a special way in describing the invention?

What is the nature of the invention?

What are the essential (i.e., absolutely required) elements of the invention?

What are the essential (i.e., absolutely required) steps of the invention?

How can the invention be used?

How can the figures (drawings) be briefly described?

Which drawing reference numeral is associated with each part?

Which background art documents are incorporated by reference into the disclosure?

Which deposits of biological material are a part of this disclosure?

How are the preferred embodiments of the invention made (i.e., made up of features or steps)?

What is the best mode of the invention?

How does the invention work?

What are some examples (working or prophetic) of the invention?

Which computer program listings are a part of this disclosure?

What is it that you claim as your product invention?

What is it that you claim as your process invention?

What is the gist of what is new about your invention?

Which drawings are a part of this disclosure?

Which sequence listings are a part of this disclosure?

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International (PCT) Patent Application

Filing an international patent application under the Patent Cooperation Treaty (PCT) allows patent applicant(s) to delay for up to 20 to 30 months incurring the expenditures associated with filing of regional and national applications in the patent offices of those countries who are members of the PCT. During this period, the international application is searched and published and, if a timely Demand for examination is filed, undergoes preliminary examination (MPEP 1801 - Basic Patent Cooperation Treaty (PCT) Principles). If certain member countries (such as the U.S.) are designated in a PCT application, filing a proper PCT application has the same effect as filing a regular national patent application in those countries as of the filing date of the PCT application (PCT Article 11(3)).

The PCT requires that the description of a PCT patent application "disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art" (PCT Article 5). A PCT application also contains a claim or claims which are to "define the matter for which protection is sought" (PCT Article).

Because patents are not issued under the PCT, but rather under national patent laws and regional patent conventions, the disclosure of a PCT application must comply with the laws and conventions for those jurisdictions within which patent protection will be eventually sought. For this reason, reference is made not only to PCT disclosure rules but to the rules of the USPTO and the EPO as their rules are generally representative of national and regional patent offices.

The warnings concerning the multiple audiences to which patent applications must be directed that were made in the introduction to provisional applications are applicable here, too. The drafts of the specification portion of patent applications must initially be understood by a professional searcher or a patent professional, who may or may not be intimately familiar with the specific field of the invention. Nonprovisional patent applications are searched and examined by an Examiner who must be convinced that the disclosure is sufficient and that the claim or claims are definite and patentable. Some Examiners are true experts and some are new to the field. By law, the disclosure must be sufficient for a person having ordinary skill in the art to recognize what the inventor(s) consider to be his/her/their invention and for such a person "to make" and "to use" the best mode of the invention contemplated by the inventor(s) on the date the application was filed. When the application is read by a competitor or a patent professional retained by him/her, it must not be deficient in any of the above areas and it must make it clear under what conditions patent infringement is occurring or would occur. A reading of the document must convince a competitor (to the extent a technical document can) that it would be less expensive to avoid or license the invention rather than infringe its claims or attempt to invalidate them. If infringement is alleged by the owner of the patent, one or more judges and juries may read the document. While the judge or judges may be very smart, they may have little or no background in technology and they may not even be experienced in patent law. Ordinarily, in patent infringement/patent validity cases, it is the judge or judges who decide what the claimed invention is (to interpret the claims) and what the law is. In such cases, members of juries of U.S. citizens must be able to understand the claimed invention (typically with the help of experts on both sides). They may have absolutely no background in technology and they may be of average, above average or below average intelligence. Ordinarily, it is the jury who decides whether a patent is valid and/or infringed, and, if so, the amount of the award to the patent owner.

In drafting patent applications, it is always better to be safe than sorry. The general rule for depth of technical disclosure (other than admissions about what is in the prior art which, in general, should be avoided) is "If in doubt, include it." If the inventor provides more disclosure than is appropriate for particular jurisdictions, it can be deleted by a patent professional prior to making national or regional filings. For this reason, disclosure text that the inventor considers as a candidate for deletion should be surrounded by [square brackets]. Preparation of the disclosure is facilitated by dividing it into a number of discrete steps or elements, with each element addressing a single disclosure question or issue. Each issue is explained in the files listed below:

What are appropriate titles for the invention?

Does this disclosure contain copyright or mask work material? If so, do you authorize its facsimile reproduction as a patent disclosure

Have any parent (related) patent applications been filed? If so, what are the details?

Can you claim priority of invention? If so, what are the details?

Does this disclosure include a computer program listing in a microfiche appendix? If so, how can the microfiche be described?

Was the invention discovered or built and tested using U.S. Government funding? If so, what are the details?

What is the technical field of the invention?

Which U.S. patents characterize the background of the invention?

Which non-U.S. patents and patent applications characterize the background of the invention?

Which non-patent publications characterize the background of the invention?

How have others solved the problem(s) that the invention solves?

What are the limitations of the background art?

What technical problem(s) does the invention solve?

What are the objects of(characteristics desired in) the invention?

Why is the invention better than the solutions of others?

What are the definitions of the terms used in a special way in describing the invention?

What is the nature of the invention?

What are the essential (i.e., absolutely required) elements of the invention?

What are the essential (i.e., absolutely required) steps of the invention?

How can the invention be used?

How can the figures (drawings) be briefly described?

Which drawing reference numeral is associated with each part?

Which background art documents are incorporated by reference into the disclosure?

Which deposits of biological material are a part of this disclosure?

How are the preferred embodiments of the invention made (i.e., made up of features or steps)?

What is the best mode of the invention?

How does the invention work?

What are some examples (working or prophetic) of the invention?

How is the invention applicable in industry?

Which computer program listings are a part of this disclosure?

What is it that you claim as your product invention?

What is it that you claim as your process invention?

What is the gist of what is new about your invention?

Which drawings are a part of this disclosure?

Which sequence listings are a part of this disclosure?

Which person(s) or organization(s) is/are applying for a patent on this invention?

Who thought of the invention?

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