How to disclose your invention to a patent attorney / patent agent ?

Big firms have an organized approach towards protecting their Intellectual Property (IP). These firms have well designed information collection, documentation, and review systems that enable inventors to submit inventions, also known as invention disclosure .

I have observed that most individual inventors, or startups are not able to provide detailed information about their invention to a patent attorney / agent. Lack of accurate and necessary information sets back the process of patent drafting by few weeks. In my experience inventors are enthusiastic about describing their inventions to a patent agent / attorney. However when it comes to writing the invention details, there is always some confusion, and this leads to procrastination.

So I thought of coming up with a basic workflow for disclosing inventions that will help a patent attorney /agent get a basic understanding of the  invention under consideration.

Subsequently, based on the attorney’s assessment of the quality and other parameters that can be taken into consideration, detailed discussion can be proposed with the inventor(s).

Setting the foundation

First and foremost the inventor may give out brief notes on what he considers as his invention. He can highlight the novel aspect of his invention that differentiates his invention from the prior art known to him.

Next, he may also describe the domain of the invention. For example, if the invention talks about a processing unit of a mobile phone, the field of invention would be handheld electronic devices and so on.

The inventor may also suggest a title that he thinks best suits the invention. The title provided by the inventor may aid the agent in understanding the novelty of the invention from the inventor’s perspective.

Further, the inventor can briefly explain the problem that currently exists in the prior art and how his invention proposes to overcome such problem. Patent examiners strongly believe the adage “necessity is the mother of invention”. To prove one of the three criteria for patentability, “non-obviousness”, the inventor needs to bring out the need for invention. For this, the inventor may explain the problem in the prior art that is solved /expected to be overcome by his invention.

Explaining the invention details

Now that the basic foundation for understanding the invention is set, the inventor can explain the invention in detail. While doing so, it helps if the inventor has an idea whether the invention can be categorized into a product or a process. If the invention talks about a product, the inventor can describe prominent components of the product and their interconnections. On the other hand, if the invention describes a process, the invention disclosure can describe the steps involved in the process.

Further, if the process describes a software based invention, it becomes easy for the patent agent if the inventor ties each process step to one or more components that perform the function.

It is a good idea to reproduce the environment in which the invention works. For example, for a process of manufacturing a component, the inventor can describe the machine used for carrying out the process, the temperature, pressure and other parameters that are to be maintained at a predetermined level, the ingredients for manufacturing the component and the output that can be obtained after the process.

Additionally, the inventor can support the invention disclosure with one or more drawings / diagrams / photos that provide a pictorial representation of the invention. Further, the components of the drawings can be suitably marked.

Concluding

Finally, the inventor can conclude the invention disclosure with one or more advantages of practicing his invention. The advantages are typically brought out by mapping the solution provided by the invention for the problems that are identified in the prior art.

Following the steps mentioned above ensures that the inventor conveys the novelty and uniqueness of his invention to the patent agent with minimal documentation. It allows the patent agent to get an appreciation of the invention and plan an approach to draft a strong patent application.

 

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