Preparing Inventors for the Patent Process – The Invention Disclosure Form

Before preparing a patent application (a provisional or “full application”), an invention disclosure meeting is held between the inventor(s) and the drafting patent attorney. This meeting is a question and answer session between the attorney and inventor to help the attorney understand the invention.

Invention Disclosure Form

To help prepare the attorney for the meeting, you are typically asked to complete an invention disclosure form. An invention disclosure form is a document prepared by an inventor to help organize the inventor’s thoughts about the invention as well as explain the invention to someone who is not familiar with it. Often, the invention disclosure form is used to prepare a patent attorney for an invention disclosure meeting by:

  • Providing the patent attorney with enough information to become familiar with the technology area of the invention.
  • Allowing the patent attorney to prepare questions for areas where more details about the function of the invention are needed.

A. Think Problem/Solution

The invention disclosure form will likely have different sections to help you describe the invention. As you work through the sections, you should be guided by your answers to “What is the problem my invention is trying to solve,” “What is the solution to that problem,” and “What is the secret sauce (or “inventive concept”) of the solution that solves the problem?”

B. Know Your Audience

It also helps to keep your potential audience of an eventual patent or patent application in mind when answering these questions. Startups, for example, often leverage their patents to generate investor interest and to increase the valuation of their company. In this example, the target audience for a patent application is the investors, who may not have a technical background and will likely not be able to appreciate the technical details of the invention fully. To maximize value for this audience, it is important to provide a lay description of the technical features of the invention.

As your startup grows, or if your company is more established, you may find value enforcing or licensing your patents. In this example, the target audience for a patent may be a more technical audience, and you’ll want to provide a more technical description of the features of the invention. Again, to maximize value for this audience, as well as describe the invention so that a person having skill in the same technical field of the invention could make and use the invention, you’ll want to provide a technical description of the invention.

The resulting disclosure provides the drafting attorney a high level, lay description of the technical features of the invention, as well as specific technical details of the invention. Taken together, the disclosure provides a thoughtful description of the current state of the technical field to which the invention pertains and the invention. Such a disclosure explains to the drafting attorney, and future patent examiner, how things are currently accomplished within the field of the invention. Ideally, after reading the invention disclosure form, the drafting attorney should understand the differences between the invention and conventional approaches and how the invention improves upon those approaches.

C. Use Additional Material to Describe the Invention

When describing the technical features of the invention, you can include tables, charts, and figures. Although not necessary, sometimes instead of, or with the invention disclosure form, an inventor provides a white paper that describes the invention. The inventor may also provide developer specifications, screenshots, and marketing materials describing the invention.

D. Leave Something For the Invention Disclosure Meeting

It is not necessary to describe every possible variation of the invention or to exhaustively provide all of the information that is associated with the invention. The drafting attorney will use the invention disclosure form to prepare for the disclosure meeting to discuss the rest of the details of the invention. Ideally, the invention disclosure form will have enough detail so that the drafting attorney understands the invention and is prepared to discuss the details of the invention at the disclosure meeting.

The invention disclosure form may ask for additional information, such as inventor contact information, information about any disclosures of the invention, and other related information. Everyone involved in a patent has a legal obligation to inform the United States Patent and Trademark Office (USPTO) about known prior art. To fulfill this obligation, the documents referenced in the invention disclosure form will need to be cited to the USPTO. It is important to note there is no requirement that you search for documents to cite. Instead, you should only cite those documents that you are currently aware of.

Use of an invention disclosure form can help streamline the patent drafting process, and any resulting patent applications will be better written for the different target audiences.

The next step in preparing a patent application is the disclosure meeting.

Questions or Suggestions?

It’s important to me that this article is helpful to you. If you have any questions on the article or suggestions for further clarification, please reach out to me and let me know.

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