How to Draft an Effective Invention Disclosure Form

So you and your engineering team have generated an idea or product that you think is going to revolutionize your industry.  Obviously the first step you take it to get your idea patented! Before you meet with your IP counsel, you will want to capture your idea—typically in what is referred to as an invention disclosure form (IDF).  In general, IDFs include an explanation of the problem you are trying to solve, details of your invention, including how your invention solves the problem you identified, and commercial or technical advantages of your invention.  The IDF will form the basis of the patent application that will eventually be filed for your invention.
Sounds simple, right?  Well, not so fast.  All too often, IDFs are vague, lack the necessary technical details needed for drafting a patent application, and may focus on the wrong aspects of the invention.  In such cases, your IP counsel may not be able to draft a patent application that fully captures all aspects of your invention in the layers of detail most helpful for securing and eventually enforcing the patent.  Further, certain industries or types of inventions face unique or uncommon challenges during examination, and the information provided in IDFs may not adequately prepare your IP counsel to address those challenges.  Thus, an effective IDF that includes specific, well-thought out description of your invention may prevent these problems from occurring.  So how do you draft an effective IDF?  Here we provide some tips that you may consider before drafting your next IDF.
Tip #1: Concretely identify your invention.   In general, it helps to remember that inventions are solutions to technical problems, and thus your IDF needs to be framed with that in mind—identify the technical problem that your invention solves, and describe the problem as best you can.  Then, describe the invention in a manner that conveys how your invention solves the technical problem you identified. When drafting the IDF, ask yourself some questions: have you used a known technology or process in an unusual way?  Did your work produce results greater than expected?  Did your work result in something better, faster, cheaper?  If so, describe it! And include data to support your positions if you can.
Tip #2: Consider the prior art.  What is the current industry standard?  How have others tried to address this problem?  Include these details in your IDF, and then explain how your idea is better.  Try to identify problems in the prior art and explain how your invention avoids or solves these problems.
Tip #3: Brainstorm.  How can your idea be applied to other problems or other fields?  Looking beyond the scope of what is probably a narrow idea may make your patent more valuable in the future.  How is your idea actually being implemented?  Technical implementation details make or break a patent application.  Without sufficient technical detail, the patent application may not make it through the examination process.  If your idea relates to how a structure is controlled rather than the structure itself, still describe the structure, and think about how the controls you are proposing affect not only that structure but any other related/interacting structures.  What problems did you encounter when implementing your idea, and how did you solve them?  These may seem like trivial engineering details, but are often crucial for drafting a successful patent.  How can you detect infringement, or how could somebody easily design around your idea?
Tip #4: Tell your story with pictures and clear language.  Remember, this is not a technical paper.  Every concept should be described in both words and drawings—not only the invention itself, but also the overall system the invention is implemented in, related systems, any applicable controls (e.g., as flow charts), and any results.  Explain your ideas at the level an average undergraduate student would understand and appreciate.  Don’t just state your ideas—explain the hows, whys, and whats even if it seems simple-minded or obvious.  If your invention includes mathematical formulas, models, and/or algorithms, explain them in words.
Hopefully, with careful consideration, you can draft an effective IDF that clearly conveys your idea and provides sufficient detail to enable your IP counsel to draft an application that is easy to prosecute and enforce.  In an upcoming post, we will explore some industry-specific challenges to secure or enforce patents and how your IDF can avoid such issues.

Popular posts from this blog

Surprising Uses for Oobleck

Image
Oobleck is a common name for a non-Newtonian fluid comprising cornstarch and water. Named after a substance humorously described in Dr. Seuss’s classic children’s story, Bartholomew and the Ooblek, the cornstarch and water concoction is frequently used in children’s science classes as a fun way to learn about fluid mechanics. You may have fond memories, yourself, of playing with oobleck as a youth. Oobleck behaves as a fluid when touched gently, but becomes hard as a solid when hit with great velocity. For example, a person could run across a swimming pool of oobleck without getting their feet wet. However, if a person stood still on the oobleck, then they would slowly sink. Because oobleck is a children’s plaything and because of its simple recipe (cornstarch and water), one may be surprised to learn that inventors have attempted to patent serious industrial uses for the material. As an example, one current patent application, US 2015/0016885 (now abandoned), is for a system of fi...
Read more

Dispensing with the Formalities: Ex Parte Quayle Actions

Image
Checking my email after work one day, I was greeted with some unfortunate news: the application I was prosecuting had received yet another Office action.   Frustrated, I couldn’t resist skimming the substance of the rejection.   After all, like any patent practitioner, I thought my arguments were pretty irrefutable.   The news only got worse… or so it appeared.   The Office action was something called an “ Ex Parte Quayle action.”   Having never received one of these actions, I started mentally preparing myself to pull out the MPEP and research some arcane rejection. To my surprise, I didn’t find myself knee-deep in case law the following day.   Ex Parte Quayle actions, while somewhat inconvenient, are far from insurmountable.   In short, an Ex Parte Quayle action or “Quayle action” is issued when an application has objections remaining as to formal matters, but is otherwise allowable.   Accordingly, the mailing of these actions close...
Read more

Adaptive Headlight IP

Image
The recent Infrastructure bill signed into law by President Biden affects many things, but one aspect that affects the automotive world is adaptive headlights.  As noted by Jalopnik puts it somewhat crudely, this means “our headlights will suck way less” (link to https://jalopnik.com/finally-our-headlights-will-suck-way-less-1848067412 ). But with this sudden change, adaptive headlights in the US may be in for a particular messy IP situation since many companies may have considered it was not necessary to protect their adaptive headlight innovations in the US because of the 50-year old rule preventing such technology. Recent patents in the field from applicants such as Lumileds and Arex indicate that smaller players and startups may be able to break into the market which is expected to explode in the next few years once the final rules are implemented.  For those in the industry that have typically avoided US patent filings in the adaptive headlamp area, they may want to r...
Read more