Author: Sannidhi Chakrala, CNLU
The birth of any invention takes place from an idea which is the mental conception of an individual (inventor). At its nascent stage, an idea exists only in the mind. To materialize this idea, the inventor must undertake several steps before experiencing a successful landing in the market. It is not mandatory for an inventor to hire a patent attorney for a filing a patent application. However, it would be highly advisable for the inventor to hire an attorney/ legal expert who knows the ropes of the entire process in order to have a smoother experience.
Invention disclosure can be said to be the precursor to any patent application process which is facilitated by a patent attorney. In other words, invention disclosure is exactly what the terms mean. It is a detailed description of the invention/proposal that is disclosed by the inventor to the patent attorney. It is executed by signing a non-disclosure agreement between the attorney and the inventor. It is a confidential document shared between these two parties. The inventor explains every minute detail of the invention seeking to be patented so as to obtain an accurate opinion from the attorney about the invention’s patentability. Patentability is the capacity of an invention to be granted a patent by the patent office. It depends on the invention’s novelty, non-obviousness and industrial utility. The disclosure represents the first official recording of the invention and, if done properly, can establish an irrefutable date and scope of the invention. Often, the disclosure document has been used to defeat challenges to dates of invention, inventorship, invention scope, and prior art.[i] A well-written invention disclosure form enables a company to avoid non-patentable inventions.[ii]
Before we dive deep into the aspects of an invention disclosure, it is important to understand the concept of “inventorship”. In the patent world, an inventor is someone who has some role to play in the creation of the invention. There should be an active contribution from that individual in developing the said invention. However, it does not include someone who reduces the invention to actual practice, that is to say, someone who puts the invention to use cannot be deemed as an inventor if he/she had not contributed to the creation of an invention. Therefore, creation is the crux of inventorship and ultimately, of a patent. For example, let’s take a hairbrush. It has different functional features such as its body, its design, its bristles., etc. All these features might have been developed by the same individual or different individuals. Thus, only these members who have contributed can claim to be the inventors of the hairbrush and they can state the scope of their contribution. This scope is known in the patent language as “Patent claims”. Patent claims set forth the extent or the limit to which the invention seeks to be protected by a patent.
From the idea, an invention may be described. Frequently, conflicts arise when an author is not included as an inventor on a patent application and believes that the work
performed in actual reduction to practice should mean that he or she be designated as an inventor. Unintentionally including a non-inventor or excluding an inventor can usually be corrected in the patent office. However, intentionally including a person as an inventor who did not contribute to a claim is patent fraud and would render the patent invalid if discovered. Intentionally excluding an inventor could likewise render a patent invalid.
It is the responsibility of potential inventors to make a good faith effort to determine who among themselves are actual inventors. Ultimately, inventorship must be examined by the patent attorney of record to ensure that the inventors included on the patent filed are, in fact, inventors.[iii]
Now, let us look at the finer details of an invention disclosure. As stated earlier, it should include a comprehensive description of something novel and nonobvious explained in a way that allows anyone of ordinary skill in that particular field or industry to reproduce the invention on their own.[iv] Typically, an invention disclosure form should contain the following particulars:
- The title of the invention: An invention should include a title of the invention, a short abstract, and a detailed description of the invention. The advantages of the invention should be clearly described. The inventor(s) should include as many features, embodiments, and uses of the invention as possible.
- The inventor’s name, address, and phone number
- When and how you thought of the invention
- Date of the actual reduction to practice (this may be the same as the date of invention): Actual reduction to practice is not required but is helpful when preparing the patent application
- Date of public disclosure of the invention: This may be critically important if the date creates a statutory bar for patenting. If the date is in the future, then it provides a timeframe within which a decision of whether or not to file a patent application has to be made. Copies of any publications (for example, manuscripts, handouts, posters, electronic presentations, and slides) should accompany the invention disclosure form. In addition, any relevant supportive scientific references should be copied in full and attached to the invention disclosure form.
- A description of the invention which should include:
- What makes it novel, useful, and better than any prior art
- The purpose of the invention (what will it be used for?)
- Drawings, sketches, or photos of the invention with all the parts labelled
- How the invention is used
- What features of the invention are different from prior art and how do they offer better results?
- The advantages of this invention over other prior art
- Any results you have from testing the invention
- A set of keywords to help the patent attorney find the right classification for the patent
- Research funding sources if there were any: It is very important to know whether the invention has been funded by an entity, other than the inventor’s employer, that may have ownership/licensing rights.
- References to related patent searches done by the inventor: The inventor should include complete references and photocopies of any other related science he
or she is aware of that could potentially be cited by the patent examiner as novelty-destroying or as rendering the invention obvious. There is no duty for the inventor or the attorney of record to conduct a literature search to determine whether there is any prior art to the present invention. But if the inventor or the assigned institution is made aware of any such art, then it must be disclosed to the patent office. There is no duty to provide the patent office with an opinion of the relatedness of any reference cited to the patent office. The examiner is responsible for making such a determination. A list of potential competitors - List of potential competitors/licensees: This is valuable information, since it provides direction in finding potential competitors, potential licensees, and potential areas of prior art that can be reviewed before filing a patent application to help determine patentability and claim drafting. Also, one can build a better patent portfolio by reviewing patents and file wrappers filed by another institution or company.
- Witnesses who are scientifically competent and understand the details of the invention: Usually, at least two witnesses are required on an invention disclosure form. A witness should be scientifically competent to understand the details of the invention and not directly affiliated with the research being disclosed (for example, an inventor on the invention disclosure form or a principal investigator of the research)
- Signatures of all inventors involved: It is critical that at least one of the inventors has signed the invention disclosure form, otherwise, the form cannot be considered to have been perfected[v]
- An electronic receipt of the filed invention disclosure form[vi]
There are two important yet contrasting rules in the patent application process. One is the first-to-file rule and the other is first-to-invent rule. First-to-file rule gives priority to the party who is the first to apply for a patent irrespective of the date of his/her invention; whereas the first-to-invent rule gives importance to the person who is the first to create the invention in a given field.
It is good practice to disclose an invention as soon as it is an invention. Filing an invention disclosure declares the invention, the inventors, and the date of invention. Even if a patent application is never filed, a properly completed invention disclosure may be able to provide some protection against subsequent patent applications filed by other parties that could prohibit the first party from being able to practice something it invented. Most importantly, without a timely disclosure, no decision can be made about whether or not to file a patent application to preserve IP rights. Occasionally, a delay in disclosure may be appropriate, for example, if the inventor is continuing to conduct experiments that may provide better enablement or broader utility, which would provide broader claims should a patent be sought. However, the decision to delay filing an invention disclosure should be made in consultation with appropriate IP managers.[vii]
[i] David R. McGee, Invention Disclosures and the Role of Inventors.
[ii] Senthil Kumar, India: Invention Disclosure Form, https://www.mondaq.com/india/patent/536742/invention-disclosure-form (last visited on Nov.23).
[iii] Supra 1.
[iv] Invention Disclosure: Everything You Need to Know, https://www.upcounsel.com/invention-disclosure (last visited on Nov.24).
[v] Supra 1.
[vi] Ibid.
[vii] Ibid.
