Inventor's Disclosure Affects Patent Costs and Patent Quality
Importance of Inventor’s Disclosure
The inventors’ disclosure dramatically affects both the quality and cost of the patent application. Drafting a patent application involves translating technical information into a legal definition. Translating new technology into a patentable invention relies on the inventor’s disclosure. The inventor’s disclosure serves to convey information about the new technology to the patent professional. The patent professional uses the inventor’s disclosure to draft patent claims.
Many systems exist for preparing a disclosure. For example, many organizations (like universities) have invention disclosure forms. These forms aim to collect relevant information from the inventor. These forms can be structured as an “inventor questionnaire” having questions teasing out relevant information about the invention.
Benefits of Preparing a Good Invention Disclosure
Efficiently providing comprehensive, organized, useful information to the patent professional has two key benefits. First, it dramatically improves the quality of the resulting patent application. Second, it lowers patent application drafting costs by reducing the amount of attorney time spent collecting and organizing information about the invention.
Regardless of how the disclosure form is structured, the goal remains the same. The inventor’s disclosure should present relevant information to the patent professional in a useful way. With this goal in mind, I have listed some information that inventors could organize before contacting a patent professional. Having this information prepared would make attorney time more productive.
Invention Disclosure: What is the Invention?
What is the invention? This is the critical question. Here are some other questions that cut towards defining the invention:
- What words should an inventor use to describe the invention?
- How would someone best perform a keyword search for the invention?
- What alternative searches would also describe the invention?
- How would you list the components of the invention?
- How would you describe it in 5 words? 10 words? a paragraph?
Inventors often view the invention as their commercial embodiment. The patent professional should work with the inventor to find words that accurately describe that commercial embodiment. The patent professional should also work with the inventor to find words capturing the inventor’s broader contribution to the state of the art. What are the far-reaching implications of the invention? By considering the invention’s broader contribution, the patent professional should work to grow the invention.
Invention Disclosure: What is the State of the Art?
When defining an invention, it is useful to understand the prior art. Understanding the prior art should help the patent professional define the invention more broadly. Here are some prompts that attempt to unpack the state of the art when the invention was made:
- What technology area does the invention fit into? Many inventions fit into a variety of different technology areas. List them all. The United States Patent and Trademark Office (“USPTO“) organizes technology into Art Units, Classes, and Subclasses. These are good examples of technology areas.
- What was the state of that art when the invention was made? (“When the invention was made” means when the inventor first conceived of the invention).
- Without the benefit of your invention, what would someone in your field use as an alternative? How many alternatives exist? How would the results differ by using an alternative instead of using the invention?
- What sort of person would ordinarily invent technology of this kind? (Describe the skill of someone in this technology area). What is the level of skill in this art? Education?
- What problem existed before the invention?
- What need existed that made the invention beneficial?
Invention Disclosure: What are the Differences?
Understanding the differences between the invention and the prior art is critical to drafting the patent claims and arguing for patentability. Here are some prompts for uncovering the differences:
- What makes the invention different from the state of the art?
- When the invention was made, how was it different from anything before it? Here, I find it useful to create a Table of Differences. That Table should list the most relevant technology existing at the time of invention. For each reference, the inventor should describe how the invention differs. These differences are ultimately important to the patentability of the invention when the claim is evaluated for obviousness. Understanding all of the differences when drafting the claims allows the inventor to submit claims that define the invention by emphasizing its patentable features.
Invention Disclosure: Evidence of Patentability?
During patent prosecution, the patent examiner will most likely question the patentability of the claims. (This will come in the form of a “rejection.” The patent professional can often find good arguments to overcome the rejection by considering evidence of patentability. Below, I have listed seven types of evidence that could help the inventor’s arguments for patentability. This evidence of patentability should be provided in the inventor’s disclosure:
- Skepticism by Experts – When the invention was made, did experts in the field question whether it was workable?
- Teaching Away – Before making the invention, did members of the relevant art discourage pursuing the invention?
- Longfelt Unmet Need – Prior to making the invention was there a long felt need for it?
- Failure by others – Did other people in the art fail to make the invention prior to the inventor’s success?
- Copying – Since making the invention, has it been copied by others?
- Commercial Success – Was the invention a commercial success?
- Licensing – Have others contacted the inventor to license the invention?