When working with inventors in a company, it is helpful to have a program by which new inventions can be brought to the attention of management. This is the place of an invention disclosure statement. I prefer to call such a document an innovation disclosure form (IDF) so as to avoid confusion with an ?information disclosure statement? or IDS that is to be submitted to the U.S. Patent Office (USPTO).
A carefully and clearly written, comprehensive IDF can greatly help in evaluating inventions and can potentially result in a better patent. In principle, inventors know most about their invention. They have spent many hours refining their idea and making sure that it works sufficiently. It is extremely helpful to a patent attorney to have a very detailed understanding of an invention before attempting a patentability search, and for evaluating search results. A detailed IDF greatly reduces the amount of work necessary to prepare a preliminary draft of a patent application.
Further, the IDF can greatly assist a patent attorney during the prosecution of the application ? arguing for allowance of claims from the USPTO. The IDF captures the information from the inventor at an important time in history: near the time of actual invention. It is often months and years after the filing of an application that the USPTO actually picks up and assesses the invention in terms of patentability. Inventors are frequently unavailable at such time, and when they are available, often cannot recall sufficient detail to assist the patent attorney.
If possible, the inventor should provide in the IDF a detailed description of any known prior art and the inadequacies of the same. If available, copies of known prior art (e.g., publications and prior patents) should be included in or with the IDF. The prior art should be identified as specifically as possible. The inventor should describe in detail the differences between his or her technology and the prior art and should describe all possible advantages of the invention. For example, the invention should provide technical and economic benefits to a meaningful, previously unsolved problem.
While there is no required format for an IDF, it is desirable for inventors to start the IDF with a description of the prior art and the particular weaknesses thereof. This should be followed by general statements of the invention. Preferred operation of the invention should also be described. Where appropriate, drawings, photographs, and data plots should be included. Inventors should also describe what is not in the invention.
Certain activities such as commercial use, sale, and public disclosure of the invention can result in forfeiture of patent rights both in the United States and other countries. In the IDF, it is important for inventors to indicate if and when any such activities have occurred or are likely to occur. This information will permit the patent attorney to determine whether patent rights have already been lost or if an immediate filing is required to avoid the forfeiture of rights. While the United States provides a one-year grace period before forfeiture occurs, many other countries do not. For this reason, it is best to perform a patentability evaluation before beginning commercial usage, sale, or public disclosure. Under treaties between the United States and most major countries, the filing of a U.S. patent application before engaging in commercial activities or public disclosure permits one to file in the other countries within one year after the U.S. filing date without loss of rights.
In addition to expressing a preferred practice of the invention, inventors should consider alternative approaches. For example, if inventors have formulated a metal alloy that consists of a base metal, 2 wt.% metal A, and 1 wt.% metal B, it may be desirable to create ranges for the addition of these constituents. Where appropriate, a narrow range for each constituent could be cited as ?preferred? (e.g., 1.5-2.5 wt.% A) and then a broader range could be cited as ?operable? (0.5-3 wt.% A). If available, data supporting the selection of ranges is very helpful. By providing ranges and supporting data, one can minimize the likelihood that a third party could make beneficial use of the technology while avoiding infringement of any issued patent.
If known, inventors should advise the patent attorney as to whether any employment obligations, consulting agreements, or other source of funding may result in questions of ownership and/or rights for the invention. These types of questions should generally be answered before major sums are expended in patent evaluation and protection.
To the extent practical, inventors should describe all preferred uses of the invention and the nature of the industries that might be interested in using the invention. Utility should be as specific as possible.
In order to facilitate proof of dates of invention, if needed at a later date, certain formalities should be followed. The written disclosure should be in electronic form or handwritten in a laboratory or inventor notebook kept ?within the ordinary course of business.? In addition to having the disclosure signed and dated by each inventor ? each person who meaningfully contributed to the invention, two or more individuals capable of understanding the technology should review, sign, and date the written disclosure as witnesses.
In determining what persons should be disclosed as potential inventors, all individuals who are believed to have made a creative contribution to the invention should be named in the IDF. When in doubt, it is best to include someone. Ultimately, the decision as to who is likely an inventor can be made by the patent attorney after discussions with all named persons and after determining what portions of the disclosure are likely patentable. Patent attorneys often need to converse with possible inventors after the attorney evaluates of the invention by reading the IDF. Having names recorded in the IDF is helpful in identifying actual inventors.
In order to provide a complete disclosure, a timely, well-considered and well-written IDF is a good starting point. A patent attorney may be able to supplement the IDF by speaking to actual and named inventors. A well-written IDF can minimize the likelihood of forfeiture of patent rights, contribute to a more efficient patentability evaluation, and result in a stronger patent.
Contact me for a quality sample Invention Disclosure Statement.
Source: http://www.melinelegal.com/?p=433
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