The Invention Disclosure

The What - The Why-The When - and The How

The invention disclosure is not a replacement for a good inventor notebook. I want to make that point very clearly first. Having said that a clearly written and comprehensive invention disclosure can be an important step in the steps for getting a patent.

And I want to approach this document as communication between the inventor(s) and their patent prosecutor. The better that communication is, the higher likelihood the patent prosecutor can do an excellent job in doing a patent search, and the other steps for getting a patent. But in my experience that objective of the invention disclosure is focused on the invention - not everything that the patent prosecutor needs to eventually know.

Here is what I mean.

The Full Blown Invention Disclosure

If you use Google to search for invention disclosures you will find a large collection of boilerplate invention disclosures , especially from various university departments of intellectual property. These are very impressive and very comprehensive. And to ordinary inventors they are intimidating. I am sure that in large organizations, where the inventors and the eventual patent prosecutors are separated physically as well as organizationally there is a felt need for the inventor to provide everything the prosecutor needs right from the get-go.

These full blown disclosures require the inventor to not only provide a disclosure of the invention but often a rather comprehensive review of the prior art, pointing out all of its inadequacies. There are further requests to describe in detail why and how the invention was conceived, who was present. There are further questions about activities such as commercial usage, sale, and public disclosure of the invention that might result in forfeiture of patent rights both in the United States and other countries. And the list goes on and on.

All of these are important questions, and will have to be addressed. But I have met potential inventors in larger organizations who avoid submitting inventive ideas because the initial forms are so FORM-idable. Further, they tend to be laced with so much legal patentese language that many technical people are unfamiliar with they literally do not know how to answer some of the questions.

A simple example

I found this in one university invention disclosure form:

    Evidence for Patent. The criteria for a US patent are novelty, non-obviousness, and utility. Indicate below any evidence for or against each criterion. Cite publications, patents, and patent applications that demonstrate the progression of technology that led to your invention, as well as the features of your invention that improve on the state-of-the-art.

For inventors who do not spend their productive hours studying patent law that is simply intimidating.

I live and work in a different world. The world of small business and individual inventors. Many of my clients are first timers and have only a rudimentary idea of the prior art. And even some clients with multiple patents under their belt are not that familiar with the extent of the prior art. If by chance I come across an inventor who has done all their homework on the prior then by all means I will ask them to discuss it and provide me with all they know about the prior art. But my initial focus is on getting a good disclosure of their invention.

My Approach

So here is my approach. I think in terms of the problem-solution approach. See my article on the invention process. If an inventor (or inventors) can provide me with a comprehensive description of what problem they were trying to solve, then describe their inventive idea (with drawings) and how it solves that problem we are well on our way to a good disclosure. If they can point out how others have tried to solve the problem (ie. prior art) all the better.

Does such a write-up provide me with everything I need in order to draft a patent application. No. I still need to then interview the inventor. Preferably face to face. I will discuss the inventor interview in another article. When that is impossible I use a telephone call, supplemented by e-mails. Then I usually do the prior art search. But that follow-up (meeting or phone call) uses the invention disclosure as its backbone. It is during these additional communications that I pull out the additional information often requested by the "full blown invention disclosure". There I have a chance to explain what the issues are related to (for example) previous commercial usage, sale or public disclosure of the invention and we can talk through and explore what might have been previously disclosed and when.

So as you can probably see - I favor a straightforward and easy to use invention disclosure, based on as a minimum, a problem-solution discussion of the invention. And the primary reason for that is I do not want the documentation of good ideas to be hindered by bureaucratic overkill at an early stage. And while I appreciate an inventor providing me with a good starting prior art review - I know that practically I will seldom get that and will be doing a through prior art search of my own anyway.


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Mike Ervin
Mike Ervin - Cost Effective Small Business Patent Protection.

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