The following article appears in the journal JOM,
46 (4) (1994), p. 70.

JOM is a publication of The Minerals, Metals & Materials Society

Writing an Effective Invention Disclosure

Arnold B. Silverman

A well-considered, clearly written, comprehensive invention disclosure can facilitate the effective evaluation of an invention and potentially result in better patent protection. In principle, no one knows more about an invention than the inventor. If the patent attorney is to perform a proper patentability search, evaluate the search, and do a good job of preparing and prosecuting the patent application, it is critical that the inventor provide the attorney with specific guidance.

If possible, the inventor should provide a detailed description of the prior art and the inadequacies of the same. If available, copies of the prior art (e.g., publications and prior patents) should be provided; at the very least, the prior art should be identified as specifically as possible. The inventor should describe in detail the differences between his or her technology and the prior art as well as the advantages of the new development. For example, the invention may provide technical or economic benefits or solutions to meaningful, previously unsolved problems.

While there is no critical format for an invention disclosure, it is frequently desirable for the inventor to start the disclosure with a description of the prior art and the particular weaknesses thereof. This should be followed by general broad statements of the invention. The specifically preferred practices of the invention should also be set forth. Where appropriate, drawings, photographs, and data plots should be provided. Certain activities such as commercial usage, sale, and public disclosure of the invention can result in forfeiture of patent rights both in the United States and other countries. Thus, it is important that the inventor indicate if and when any such activities have occurred or are likely to occur. This information will permit the attorney to determine whether patent rights have already been lost or if an immediate filing is required to avoid the forfeiture of rights. Also, while the United States provides a one-year grace period before forfeiture occurs, many other countries do not. For this reason, it is best to perform a patentability evaluation before beginning commercial usage, sale, or public disclosure. Under treaties between the United States and most major countries, the filing of a U.S. patent application before engaging in commercial activities or public disclosure permits one to file in the other countries within one year after the U.S. filing date without loss of rights.

In addition to expressing the preferred practice of the invention, the inventor should consider alternative approaches. For example, if the inventor has formulated an alloy that consists of a base metal, 2 wt.% metal A, and 1 wt.% metal B, it may be desirable for him or her to create ranges for the addition of these constituents. Where appropriate, a narrow range for each constituent could be cited as "preferred" (e.g., 1.5-2.5 wt.% A) and then a broader range could be cited as "operable" (0.5-3 wt.% A). If available, data supporting the selection of ranges would be very helpful. By employing this broadened approach and supporting data, one can minimize the likelihood that a third party could make beneficial use of the technology while avoiding infringement of the patent.

It can also be helpful to describe "blind alleys" to help the attorney delineate what falls within the scope of the invention and what does not. It is also important to advise the attorney as to whether any employment obligations, consulting agreements, or other source of funding may result in questions of ownership and/or rights for the invention. These types of questions should generally be answered before major sums are expended in patent evaluation and protection.

To the extent practical, the inventor should discuss, with reasonable specificity, the preferred utility of the invention and the nature of the industry that might be in the position to make beneficial use of the invention. To avoid clouding the discussion of principal uses, utility should not be stated too broadly.

In order to facilitate proof of dates of invention, if needed at a later date, certain formalities should be followed. The written disclosure should be typed or handwritten in ink. In addition to having the disclosure signed and dated by the inventor or inventors, two or more individuals capable of understanding the technology should review, sign, and date the written disclosure as witnesses.

In determining what persons should be disclosed as potential inventors, one should attempt to include all individuals who are believed to have made a creative contribution to the invention. When in doubt, it is best to include a person in the disclosure rather than exclude him or her. Ultimately, the decision as to what person or persons will be named as the inventor or inventors will be made by the attorney after discussions with the persons named in the disclosure and determining what portions of the disclosure are patentable.

It will be necessary to have a discussion between the inventor and patent attorney after the attorney's review of the disclosure.

In order to provide a complete disclosure, a timely, well-considered and well-written invention disclosure is a good starting point. Clearly, such a disclosure can minimize the likelihood of forfeiture of patent rights, contribute to a more efficient patentability evaluation, and result in a stronger patent.

Arnold B. Silverman is a partner in the law firm Eckert Seamans Cherin & Mellott, 600 Grant Street, 42nd Floor, Pittsburgh, PA 15219; telephone (412) 566-6000; fax (412) 566-6099; e-mail ARNIE@TELERAMA.LM.COM.

Copyright © 1994 by The Minerals, Metals & Materials Society.

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