• Jeff Streets

How to Prepare an Invention Disclosure

It can be quite exciting to develop a new invention that you believe in and want to protect. But if you don't know how to protect your invention, this experience can also be daunting. So, you may want to engage a patent attorney that specializes in patent application preparation and prosecution. An experienced patent professional can help you avoid many potential pitfalls that can jeopardize your rights in the invention. However, before you set up an initial consultation with one or more patent attorney, you may be well-served to spend some time and effort preparing a high-quality Invention Disclosure.



What is an "Invention Disclosure"?

An Invention Disclosure is a document that describes each and every aspect or feature of your invention. Your Invention Disclosure should be a complete statement about the invention that you want to protect. A patent attorney will use the invention disclosure as a basis for preparing a patent application. If the invention disclosure is comprehensive and complete, then the patent attorney can quickly understand the invention and focus their attention on how to structure the patent application to best protect your invention.


Why is an Invention Disclosure important?

If an Invention Disclosure only describes a portion of the invention, omits important details, or is confusing to the patent attorney, then the quality of the resulting patent application may suffer. Alternatively, a poor invention disclosure may cause your patent attorney to spend additional time and effort seeking your input regarding missing details. In other words, a good invention disclosure will help to improve the quality of your patent application and may save you time and expense spent with your patent attorney.


What should be included in the Invention Disclosure?

Your Invention Disclosure may be as unique as your invention. In other words, the distinctive features of your invention may drive the type and scope of content that is necessary to include in the Invention Disclosure. However, there are some categories of information that should be included in all Invention Disclosures. Such information categories include:

  1. A short and informative Title - Your patent attorney may deal with many different technologies in a single day. A short title will indicate the general subject matter of the invention. A simple example of an informative title is "A Safety Shield for Attachment to an Electric Hedge Trimmer." This example title tells us that the invention is a shield that can be attached to an electric hedge trimmer for the purpose of improving safety of a person operating the hedge trimmer.

  2. A statement of the problem addressed or solved - Describe the useful purpose or helpful result that is provided by the invention. Sometimes this information can be conveyed by first describing one or more problems with an existing device or method, and then describing how the invention overcomes these problems. This information will help your patent attorney understand the purpose of the invention and to provide the patent application with a clear statement about the utility (usefulness) of the invention.

  3. A written description of the invention - The description of the invention should be a detailed statement of each component or step that is required for the invention to function. The patent application must contain a written description that teaches how to make and use the invention. If the invention is an apparatus (device), it is preferable to provide a name for each component and use specific terminology to described important characteristics or properties of each component. If the invention is a method or process, it is preferable to provide a list a steps, identify whether the order of steps is important, and how each step is performed. Ultimately, the written description must provide a sufficient amount of detail so that a person having an ordinary level of the skill in the relevant art or field will be able to make and use the invention without undue experimentation.

  4. Drawings - The adage that "a picture is worth a thousand words" is especially true in an Invention Disclosure! If your invention is a physical product (also known as an apparatus or device), then a drawing or picture is very important. In fact, many inventions are difficult to understand unless there are several drawings of the device. For example, one drawing might show the overall device as it will be used, other drawings may illustrate each component, and yet other drawings may show how the components relate to each other and are used together to achieve a desired function. The relationship between components and their functionality should be clearly shown, but patent drawings typically do not require exact dimensions unless those dimensions are critical to the functioning of the device.

  5. Dates of any public disclosure or commercial activity - It is best to hire a patent attorney to prepare and file your patent application BEFORE you make any public disclosures or being commercial activity (such as sales or offers to sell a product that includes the invention). However, if you have already made a public disclosure of the invention or have already begun selling a product or using a method that includes the invention that you want to protect, then make an immediate appointment with a patent attorney. A US patent application must be filed within one year of the first public disclosure, sale or offer to sell and your patent attorney will need some time to prepare and file your patent application before that one year deadline expires. This can mean the difference between receiving a valuable issued patent and having no patent rights at all.

  6. Identify each of the Inventors - It is important to accurately identify who was involved in the inventive activity. Simply being a member of a product development team or having built one component of a new product does not necessarily mean that the person is an inventor. To be an inventor that should be identified on a patent application, the inventor must have contributed some inventive thought, idea or concept to invention. Even a person that manufactures a prototype of the invention is not an inventor if they were simply following the instructions given to them. Similarly, a person that had a general idea of a useful product or feature is not an inventor unless they contribute some means of accomplishing the product or feature. Seek assistance from your patent attorney in making a final determination of inventorship, but a list of potential inventors and a short statement of their individual contribution may be helpful. Note that each inventor may have independent rights in the invention unless there is some previous obligation to assign rights to a particular individual or business. Also note that your patent attorney will likely need each inventor's first/given name and last/family name, residential address, citizenship and contact information.

  7. Don't delay - Assuming that your invention meets the requirements for patentability (i.e., utility, novelty and non-obviousness), US patent law now awards patents to the first inventor to file their patent application. In other words, it is a race between you and all others to be the first one to file a patent application for your invention. If another person independently invents the same invention and files even one day before you do, then the other person will be the one to receive a patent.

Do You Need to Make a Prototype of the Invention?

It is not necessary to make a prototype of an invention prior to filing a patent application. So long as the patent application is written to include enough detail that you clearly possessed the invention at the time of filing the patent application and disclose how to make and use the invention, then no actual prototype (no actual reduction to practice) is required. However, be aware that a general concept for an invention may not be enough to make your invention patentable. In my experience, valuable inventions often arise during the effort to implement an invention. Specifically, the inventor may encounter unforeseen difficulties implementing the invention, then discover a way to overcome those difficulties. The patentable invention is often the discovery of how to overcome difficulties implementing the invention rather than the general concept of the invention. This makes sense because it is these types of technical advances that the patent system is intended to reward.

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