As a scientifically trained person, you have learned the necessity of keeping good records. Who can forget those days in our first college lab classes when we had ingrained into us the habit of keeping a lab notebook to record every step of every experiment we performed? Any student who approached this task too lightly soon discovered the results of sloppy record-keeping habits;
without meticulous and organized recordation, all the care we took to weigh, to measure, to set up our equipment, to follow the steps of the procedure precisely and accurately could come to nothing because we did not have a complete factual record of what we had done. How could anyone reach any sensible conclusion from an incomplete and chaotic mess of scribbling?
At this point in your career, you have most likely been keeping good lab notebooks for some time. You will find the information contained in them an invaluable source when the time comes for you to prepare a document that patent-savvy professionals commonly refer to as an ‘‘invention disclos- ure’’ document. Bear in mind that however complete your lab notebooks may be, they will not containallthe information about your inventions that you will need to convey to your colleagues or superiors, and eventually to the patent professionals who may well turn what you have invented into a full-blown patent application.
Nor does the necessity for good record-keeping and complete informa- tion about your inventive activities end with the filing of a patent applica- tion or even with the grant of a patent. You may be called upon to provide additional information at any stage during the prosecution of the applica- tion or subsequently during the life of the patent. Just to take a few examples: a dispute may arise with someone else claiming to be the first inventor of what you have invented. This dispute may trigger a Patent Office procedure called an ‘‘interference,’’ and critical to its resolution will be the key issues of when (we are talking here about the exact calendar date) the respective inventors first conceived of the invention in question, when they first reduced it to practice (i.e., made it actually work), how diligently they worked on it in the meanwhile, and so forth. Or, after your patent has been granted, someone who wishes to practice your invention without your consent may challenge its validity by asserting that your invention was on sale or otherwise publicly known more than 1 year before you applied for the patent, which, if true, would invalidate your patent.
Another possible outcome for your invention could be a decision not to apply for a patent, but to keep what you have invented as a trade secret. In other words, instead of filing a patent application that discloses to the rest of the world exactly how to practice your invention, you or your employer may decide that a better way to maintain a monopoly over the invention
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would simply be to keep it secret. Even in this case, the confidential records that you keep may be instrumental should a dispute arise with a competitor who applies for a patent on the same invention, or with someone who has managed to illegally acquire the trade secret and is using it to compete with you.
The above scenarios merely scratch the surface of the range of issues that can arise around inventions, patents, and patent applications, all of them heavily dependent on being able to show in detail each step of your inventive and commercial activities and exactly when each important event occurred. By far the easiest and best way to show this is by documentary evidence — lab notebooks, drawings and sketches, notes and letters to others and, best of all, the content of a well-drafted and complete invention disclosure document.
4.2 What an invention disclosure document is . . . and is not
Because corporations, universities, and other institutions have become so much more aware in recent years of the power of patents to generate income and control the flow of commerce, more and more of them have instituted standard procedures for uncovering significant inventions of their employ- ees and delivering information about them to a patent professional in a timely and orderly manner. Hence, the increasing presence of Invention Review Committees, Patent Liaisons, in-house patent seminars, etc. By far the most powerful and popular of these techniques is the Invention Disclos- ure document.
Broadly speaking, an adequate Invention Disclosure document has three primary purposes:
1. It provides complete enough information so that your organization can make an intelligent decision on whether the invention disclosed therein is significant enough to justify the time and expense it will take to present it to a patent professional for search and subsequent application or perhaps to maintain it as a trade secret.
2. It enables the patent professional first to decide whether the inven- tion disclosed therein is a good candidate for patent protection and then to prepare a complete patent application.
3. It contains a complete enough record of the facts surrounding the making of the invention to resolve the kinds of disputes (as well as others) mentioned in the Introduction.
As a patent attorney, I have seen many standard Invention Disclosure forms cross my desk. Some of them have been good documents that managed to cover all the bases without going into undue detail or becoming repetitious.
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Many others have failed in one or more important respects, and this has been due in some cases to a failure in the standard form itself (e.g., the invention is described quite well, but the form does not have a place for such significant information as the date of conception) or very often because the inventor(s), like our naı¨ve freshman lab student and her notebook, did not think it important enough to take the time to fill it out completely.
When do you need to fill out an Invention Disclosure form? Depending on your rank in your organization, this is a decision you might have to make yourself, or perhaps someone else will instruct you to do it. Of course, no one will ever ask you to author one if you do not communicate what you are doing to others. Many inventions are lost every day because the people who make them do not think they are important enough to bother their super- iors. On the other hand, a continual stream of ‘‘bright ideas’’ that leads nowhere can get you a reputation that you would not care to have. So some judgment is required.
In general, your organization will be most interested in inventions that touch the heart of whatever task you have been assigned to do. You are also likely to see great interest taken in inventions that may be somewhat out of your area of particular specialty, but bear on other important work in which the organization is engaged. More rarely will an employer be very inter- ested in something completely outside its field. Obviously, inventions that represent a significant advance over the way things have been done in the past are particularly good candidates for further inquiry. Best of all are inventions that are likely to lead directly to commercially successful enter- prises. On the other hand, even a clever invention that is too specialized to have broad applicability to the marketplace is much less likely to generate a lot of enthusiasm.
To some degree, how far you should go in disclosing an invention will depend on your organization’s general stance toward the importance of protecting intellectual property rights. If your employer has no history of ever patenting anything, then you are going to face an uphill battle in getting someone to listen. But if there is an in-house patent staff, or a person assigned to interface with outside patent professionals, or a patent review committee, or the like, then your organization probably already has estab- lished standard procedures for getting employees’ inventions to the atten- tion of the decision-makers and that will make your task much easier.
So let us assume your employer possesses ‘‘patent smarts’’ and already has in place a standard procedure for disclosing inventions. At the first stage of disclosure — simply telling a coworker or superior of your inven- tion — you should make a broad cut. It is better to disclose even things that seem too trivial to be real inventions than to overlook what may turn out later to have a significant bearing on future operations. When it comes to undertaking the not-so-small task of preparing an Invention Disclosure document, however, this is something you should reserve until you have got some positive feedback on your invention. A lot will depend on the
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particular procedures your organization has in place, so make sure you familiarize yourself with them before you get too deeply into the process.
Some organizations encourage early, frequent disclosure. They generally use a ‘‘short form’’ invention disclosure, usually only a page or so long, which may be filled in quickly. Often such preliminary disclosure will be followed by a more detailed disclosure prepared after the short form has been reviewed and the invention therein deemed to be of particular interest.
When you do finally get to the point where you have your organiza- tion’s standard Invention Disclosure form in front of you and you are faced with the task of turning it into a useful document, it is wise to keep in mind a few things that youshould notdo. You are not writing a research paper for publication in a professional journal. Those reading your Invention Disclos- ure Statement (IDS) are very likely to be less knowledgeable about your particular specialty than you are, so be careful not to write ‘‘over their heads.’’ Of course, the disclosure is not a lab notebook that will be read primarily by yourself, so take care to communicate in enough detail and also in Standard English so that those who read it will have a full understanding of what you are doing. Resist the temptation to be cryptic because it will probably result in a request for further explanation. Doing it right the first time will save you and everyone else time and trouble.
Finally, try to avoid simply repeating yourself as you fill out the various sections of the form. In a well-drafted standard Invention Disclosure form (and unfortunately not all fall in this category), each section is there for a particular purpose and requires you to give additional information. You will usually be asked to explain the conditions you faced that motivated you to make the invention (this section may be called ‘‘background,’’ ‘‘prior art,’’
‘‘what led you to make the invention,’’ etc.). You will need to make a concise explanation (a ‘‘summary’’ or ‘‘abstract’’) of the invention, as well as a more detailed description of how to practice it and why and how it works. You will want to include sketches and drawings that help explain the construc- tion and function of your invention, and please try to make them legible enough to be understood. You will often be asked to identify any previous disclosures that might have a bearing on the present one — an important recognition of the reality that you most likely work on ongoing projects — and each incremental improvement adds up to a coherent body of your work. You will also need to list any background material (texts, journal articles, issued patents, etc.) that you feel have a bearing on your invention or help others understand it.
You may also expect to find requests for very specific data, such as the date you first thought of the invention, as well as the date when you finally completed it, both conceptually and in practice. You will need to identify all of the coinventors, if any, of this particular invention and what contribution each one made to the whole. In cases where there are coinventors (a good lot of the time), collaborating with them on preparing the Invention Disclosure document is a virtual necessity. You also may be asked to provide examples
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and test results that show the advantages of your invention. Here is where good lab notebooks prove invaluable.
Some disclosure forms will ask you to list the names of anyone whom you have already told about the invention. You also may be asked to list any steps that have been taken toward commercialization, and most particularly of any actual offers for sale (along with their dates) that may have already been made. You will have to sign and date the Statement, and your signa- ture should be in front of at least one witness. There will usually be a signature and date line for the witness, as well as for yours. The entire document should be marked ‘‘CONFIDENTIAL.’’ If this is not on the printed form, then you should add it.
One final cautionary advice in filling out the form — do it promptly, even if you think you are too busy. Intellectual property rights are very time-sensitive and even what you may think is a short delay can result in their loss. Do not let the form sit around on your desk for weeks on end until you find the time. Make time in your schedule right now and just do it.
Above all, do not let the process intimidate you. As between a highly polished disclosure document that has taken its inventor 2 months and 17 rewrites to produce and a bare-bones, on-the-fly production that manages to contain everything important and winds up where it belongspromptly, there is no question which is more valuable both to you and to your organization.