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Writing a Useful Invention Disclosure or a Provisional Application

Thu, 15 Oct 2015 19:58:47 +0000

So you have an invention and think you might want to patent it. What is the first thing you do? – Go tell your mother what a great idea you had; build a prototype to see if it works? Wrong!

As yourself these questions:

· Why you want a patent (see the previous blog on this subject)?

· Do you actually own the invention (make sure the school or the company you work for does not).

If there is a good reason for getting a patent and you own the idea, continue.

· Try to find out if anyone else has done it before you.

The world is a big place, so unless you read Chinese and German and Russian, you are not going to know everything but you should at least spend some time looking. Use an internet search just like you would for anything else. Also look for patents and applications specifically – you can use patent.google.com to start or the USPTO.gov or ESPACENET.com. My personal favorite is SumoBrain.com because you can save the patent and applications you have looked at in portfolios online. If your invention looks patentable then continue.

· Do you think your invention is unique and no-obvious and useful?

If so, can you describe how to build, use and/or operate the invention with the information you have?

If you CANNOT DESCRIBE IT, continue or start the development work on the device, method or system of your idea.

If you CAN DESCRIBE IT, don’t wait and build the prototype, draft your invention disclosure or provisional patent now. And oh by the way, don’t tell anyone about your invention unless you have a Non-Disclosure Agreement (NDA) or at the very least an understanding that the person will not disclose it to anyone else. I am not a lawyer, so you will have to find your own non-disclosure agreement or get a lawyer to draft one.

· Document your invention

Your invention disclosure and/or provisional patent is a legal document. It should describe your invention as completely as possible. Some things may be well known to you, but possibly not to others who will evaluate the invention disclosure and/or provisional patent. So it is a good idea to have a reference attached to any generic statement or put in a generic statement such as “the terminology in this document conforms to the standard definitions as described in “document X” and provide a link or reference to document X.

You have to consider your audience. All patent agents or attorneys are also either a scientist or engineer – so if they have experience in your field, they should understand the jargon you use. If they don’t, then find another professional. Likewise the patent examiner will have experience in your field as well. But consider down the line, a judge (a lawyer) will potentially look at your patent and all the documents associated with it, and will make a determination what these documents mean – so you need to make it easy for a judge to understand. Likewise for a jury.

Because you have a variety of audiences, you should define your jargon. For example, you might use the term “positive strain”. In mechanics of materials that would generally mean tension. In rock mechanics, it would generally mean compression. Do you want a judge to define it for you?

Be both specific and vague. First and foremost describe in as exact of terms as possible, what the invention is that you want to protect, what it does, how the pieces fit together, what it is used for and how to make it for the way you think you will build it. Next describe it in ways you think it could work, but you don’t think will work quite as well. Remember not everyone thinks like you and may figure out a way to do things in a way you tried and couldn’t get to work, but you want to cover that as well.

Boil down your invention to the essential components and accessories. Really think about this. What is is used for? Consider the percolator for making coffee. Can you make tea in it as well? Does it really need a handle – you could still use it with a hot pad without a handle albeit inconveniently. Does the shape have to be conical or could it be cylindrical? Does it really need the stem and ground holder with a lid? Have you ever had cowboy coffee where you simply dumped the grounds in the pot and drank it full of grounds? Of course then if you only describe the coffee pot without the percolator part, then perhaps it is only a pot to boil water and maybe not patentable.

The invention is actually what you claim (in the regular application) and not necessarily what is in the provisional. Independent claims are run-on sentences that describe the basic invention. Dependent claims describe the accessory parts of the invention. During the examination process, an examiner may determine that someone else has already invented the essential part but not one has thought of one of the accessories. Therefore you could add the accessory parts to your independent claim during the next round with the examiner and still get a patent albeit with narrower covered than before. Claim drafting is an art and this should left to a patent professional.

Less is generally better in the patent world. The fewest essential features you have in an “embodiment” – one description of how the invention is put together - the better.

If it is software, make it sound like it is a piece of hardware. It doesn’t matter if it is written in C++, or FORTRAN (well maybe to you, but not to the examiner or judge or jury).

The major caveat for the do-it-yourselfer who wants to write everything themselves is not necessarily that you cannot define your invention, but that you are unaware that certain terms, based on a series of patent court cases, have come to have fairly precise meanings. The big one is: comprising vs consisting. “Comprising elements A, B and C” means A,B and C and anything else; “Consisting of Elements A, B, and C” means only A, B and C. A product that has elements A, B, C and D infringes on a patent using “comprising” language, however it does not infringe on a patent using “consisting” language.

Not using “patentize” in an invention disclosure or provisional patent application MAY not be as critical as in a regular utility applicatoin, but it could be so be aware of it.

You can write in your disclosure that “The coffin lid is held on to the coffin with nails”, But you should follow up with “It could also be held on with screws, tape, or fasteners of any sort or a combination of those. Also a good idea to use “may” instead of “is”. You probably won’t use tape, but if someone else did, and you didn’t describe it, then it would not infringe on your patent (if you get one). Back in the old days (a few years back), you used to write means plus function claims such as “The coffin comprising a lid fixidly attached to the coffin base using a fastener means”. The “means” refers to any fastener known in the “coffin art” such as nails, or screws. You can still do this, but now only what you describe in your write-up is what is included (the courts did this), so include everything even if you think there are better ways.

· File one or more provisional patent applications (you can do this yourself – go to the USPTO.gov site and figure it out for yourself)

A provisional patent application is defined pretty much the same as a regular utility application by the US patent office although it does not need claims (However it needs at least one claim if you plan on claiming the provisional as priority for most foreign applications). In practice it can be pretty much anything and you can also include more than one idea in a single provisional. The advantages of a provisional patent application are:

· Establishes the date of invention both in the US and abroad

· Can legally call the invention patent pending

· Defers the cost of filing a regular or international application up to one year.

· If you decide not to patent the idea covered in the provisional, no one ever sees it.

· Allows you to disclose the idea to others without losing your right to patent.

The most important point is that when you file a provisional patent you have what is called a priority date for when you invented. If someone else invents the same thing a day later, you win (provided you file the regular application within a year). For a small time inventor, it costs $65.

You can file more than 1 provisional and claim all of them for the same invention as long as the first one is less than a year from when you file the utility application based at least in part on the first provisional.

For an invention disclosure or provisional patent, find some patent application that you can read and understand online and write it like that. For almost everything you do in your description, have a figure and refer to it in the text based on call-out number on the components in the figure.

If it sound like a mine field, it is. Best to get help. If you can’t afford help, do it yourself, but put some thought into it! Take a look at the form below.
invention disclosure form

Alice in Patentland and Software Patents

Wed, 18 Mar 2015 14:58:07 +0000

It has been a long time since my last blog, but a Supreme Court case from last year referred to as Alice Corp. v. CLS Bank (or Alice for short) has caused me to take blogging up again. The cartoon below (from http://lawcomics.tumblr.com/) may not mean much to you unless you are a patent geek, but has huge ramifications for software patenting in the United States. I will try to explain what is at issue with the Alice case below.

But first lets back up. The US patent law states that in order to get a patent, your idea must be:

Enabled (you have to provide a cookbook on how to build it)
Novel
Non-Obvious
Useful
Contain Patentable Subject Matter

(For details see the Manual for Patent Examining Procedure Sec 2106 )

For all practical purposes you can ignore Useful and Obvious (see for example: Method for Exercising a Cat ).

Novel is a little harder than it used to be due to the America Invents Act (also referred to as the Patent Practioner Employment Act) making a bit more stuff prior art (materials or actions that describe your invention before you do) now - the world is a big place in which to find prior art.

Patentable Subject Matter by law has to be one of:

a process (one more specific definition is " an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.")
a machine
a method of manufacture
a composition of matter

However, there are judicial exceptions to patentable subject matter: patent claims directed to nothing more than:

abstract ideas (such as mathematical algorithms)
natural phenomena
laws of nature

are not eligible for patent protection.

Of course one of the examples of something that does not meet the previous criteria is computer software. So to patent software you have to play games like state that the software exists on a non-transitory machine readable media (a CD) and you get the software on the computer from this media. However do not try to patent software loadable via bluetooth because that is a transitory signal transmission which is abstract and not patentable subject matter. And thanks to another court case referred to as Bilski, the software also has to be directed to a particular machine ( general purpose computer no longer cuts it in patents).

So the waters were already muddied for software patents but the Alice ruling by the Supreme Court seems to change patentable subject matter in essence into patentable subjective matter. The Supreme Court in Alice describes a two part test to determine if patentable subject matter exists: (1) determine whether the patent claims at directed to one of the patent-ineligible concepts - abstract idea, natural phenomena or law of nature”; and if they are then (2) “search for the ‘inventive concept’ — i.e., “an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” The key issue with this ruling is that the terms ABSTRACT and SIGNIFICANTLY MORE are never defined in the ruling and therefore the patent practicitioner or patent examiner is left to guess what an abstract idea is or what constituents sufficient alteration to non-patentable subject matter to make it patentable. The one exception is that we now know for the patent in dispute in the Alice case that it was invalid because it was abstract - so we have one example of what is abstract.

In practice this means that things are in limbo. So far any "business method" or software patent that has had its validity challenged in litigation post Alice in lower courts has been invalidated. When reviewing software, patent application examiners generally as a matter of course now reject all claims as being abstract as they are not sure what abstract means, therefore until they have further guidance, everything is abstract.

This means that any new software applications will languish until a judge in a lower court decides to further define ABSTRACT and SIGNIFICANTLY MORE followed by the Supreme Court upholding the lower court ruling and/or a patent could be issued which then could be arbitrarily invalidated in court later. And don't think that because you have a valid patent that has been litigated in the past and found to be valid, that it could not be litigated again and found to be invalid!

Let's look at an example that I see frequently in one of my areas of expertise. Many endeavors these days analyze BIG DATA or crowd sourced information using some type of machine learning technique. An individual machine learning technique may not be patentable, however applying a machine learning technique to transform BIG DATA to a useful piece of information should be patentable as it is a process that transforms and reduces the BIG DATA to a different state or thing. The secret sauce (inventive step) should be the data that goes in and the information that comes out. Indeed in claiming the process of deriving something worthwhile from BIG DATA, you wouldn't even want to specify what type of machine learning that is used (say a nueral network for example), because that would be way too limiting and the patent could be easily circumvented simply by changing the machine learning technique. Also you would not want to claim the precise relationship of the BIG DATA and the prediction made from it because the relationship will change when you either get more data or a subtly different kind of data. So in a post Alice era, can you get a patent on a process which employs a machine learning technique? - it remains to be seen.

So how do you proceed in a post Alice era? The short answer is pretty much as before, but be prepared to wait even longer for an allowance. I just got an allowance for a client that took over 7 years of prosecution. First make sure you want a patent on your software for: increasing the value of you company; to use for defensive purposes; for advertising; etc. Next be prepared for the application to be in a state of "patent pending" for a LONG time. If you need an issued patent faster, then FAST TRACK (cutting the line by paying more fees) may help, however I am not sure how Alice will affect allowance rates in fast track examination. Put lots of details in the application specification. Although you really want to claim the big picture for broader patent coverage, you have the details to fall back on should the big picture be considered "abstract" or if they are needed to be "significantly more".

Innovation and Invention Harvesting

Wed, 20 Feb 2013 22:06:39 +0000

I have been reading various documents and blogs about current patenting trends and strategies. It appears that the pendulum has swung from a few years ago. When the patent frenzy began, a bottom up approach for harvesting inventions was advocated by many in which a carrot and/or a stick was presented to potential inventors in the company to compel them to author invention disclosures – for any inventions. The goal was increasing the size of the company's portfolio of patents, with the intent of having a metric (number of patents) that showed that the company was performing its due diligence and therefore protecting its intellectual property.

Now the trend seems to be a more directed towards a top-down approach – after many companies realized the cost associated with the shotgun approach. In the latest scenario, management decides what IP is critical to to the business model at hand and directs potential inventors to draft invention disclosures in specific areas that lock in a product or provide a barrier to entry to competitors.

To both protect existing product lines and foster innovation and new product development you need aspects of both of the above strategies as well as a concerted effort to create a culture of innovation. Consider the following factors: 1) What is the life cycle of a product – especially computer software or hardware? 2) What is your most important asset – your current products or your people? Of course the life-cycle of products are very short these days and therefore this must be taken into account in your IP strategy. You need to patent no only aspect and innovations to your existing products but also aspects of what you think the next generation of products will be. And you need all your people to be thinking about what that next product will be.

Let's look at a not so hypothetical example from my former world – portable navigation devices and routing / mapping software. Over the last few years, if you were in this business, you would have been actively trying to protect IP for your user interface, you routing methods, any enhancements to functionality or maps and any data mining techniques to create the maps. The business strategy might depend on incremental improvements to your existing product line that would distinguish it from competitors. For example you might want to include 3D building models into the database so you could create a near-photo realistic display on the navigation device.

Observing market trends you can easily see that personal navigation devices are on the decline in lieu of navigation software on smartphones, so you would hedge your bets a bit and look into inventions in the realm of how to use existing sensor arrays like accelerometers and gps in smartphones to come up with better navigation software products specific for these devices.

So the strategy is basically to enhance your existing mapping products and work towards protecting your navigation software that operates on smartphones. Both the top-down and bottom-up approach would work to some extent to harvest pertinent inventions for this business strategy as management is designing the business strategy and engineering is implementing it, but you need to do more.

What happens if there is a game changer that could make this business strategy obsolete? Lets look at one example. Google is coming out with something called google glass. Microsoft, Nokia and Apple have similar devices in the works. These devices are methods to superimpose images on reality as can be seen in the screen shot above. The auto makers as also doing something similar by having images appear on the windshield in a heads-up display (see cadillac review ). These technologies are still pretty clunky, but how long do you think that will last?

Is it possible that augmented reality glasses will do to the iPhone what the iPhone did to the Palm or Blackberry – I don't know, but if you develop navigation applications can you afford to ignore a quantum shift in the delivery platform?

Let's look at the potential shift to augmented reality as a delivery platform and how this would affect the business model of incremental improvements to navigation devices and specific applications for smartphones. If you are using augmented reality glasses you are looking at reality, so you no longer need to plot roads and/or building outlines as you are looking at them – so 3D building models and the momentous effort to capture the data is no longer relevant. You no longer have a touchscreen interface so the interface for smartphones is no longer relevant. I could go on but you get the idea.

Strategies for how to develop an inventive corporate culture and harvest pertinent inventions

How do you plan for quantum shifts in you business and strengthen your IP portfolio so you are ready for this shift? - give your people time to work on innovation and give them recognition for their innovation.

Assume your crystal ball is wrong most of the time. Encourage and listen to everyone's ideas. You will guess wrong about the next big thing much of the time. In the navigation scenario maybe someone will develop ( I should say perfect) the direct mind link using alpha waves to an external computer which will make augmented reality a non-starter. Can you really presume that smartphones are going to be the main piece of hardware that navigation software will run on for the foreseeable future? This would be no different that presuming that personal navigation devices would not be preempted by smartphones.

I used to develop web interfaces and I designed them based on how I efficiently interact with a computer. However, I don't use social media and I don't type with my thumbs. So would I have a grasp of how to develop an interface for the largest segment of consumers? You need to look at many viewpoints.

Reward your inventors not only with monetary incentives but with recognition and time. Let people in the company know that inventions are valued and why. Give the inventor time to develop their ideas. Don't just pat them on the back when they work late and perfect an invention on their own time. Let them spend their prime time working on it. Give them part of the ownership of the invention. This costs you nothing unless the resulting product is successful. Make inventions part of the company culture for everyone not just for engineers.
Encourage people to think out of the box. How you accomplish this will differ from company to company. Don't just reward and acknowledge patentable subject matter, because some things are better kept as trade secrets but never-the-less are of equal value as a patent. If you want to publish rather than patent an idea (which is even more important after the America Invents Act), send the inventor to a conference and let them present their own work (if they want to). Give your people time to think about other things than the deadline they have to meet next week.

When times are tough, don't cut the R&D budget. Sure you have to get past tomorrow, but you also need something to look forward to after that. Everyone in the company should be able to do R&D. Even if you have a dedicated R&D department, that department does not have a monopoly on great ideas. Your people want to be creative, not simply write up patent disclosure for gaps in the existing technology, but you have to let them know that you approve!

Have inventions evaluated not only by management, but by peers as well. Peers may be much better suited to know if something is truly innovative or not. By being part of the process, the peers will also learn what others are doing and what can be considered an invention.

Take advantage of“constructive reduction to practice”. Remember that you don't need a full-blown prototype to get a patent – simply a cookbook. However don't forget “diligence towards actual reduction to practice”. Provisional patents do not cost all that much and you can claim priority to more than one provisional for a given regular application. By filing a provisional you can delay expensive decisions but hold an invention (priority) date, provided the provisional has enough detail.
Welcome inventions that compliment your workers skill sets. Don't think just about the current product line, but think about what skills your people have and what they can apply those skills to. In the navigation business, people not only get lost on roads, but in buildings, on college campuses and in the woods. Use your knowledge base to re-brand a product or come up with something totally new that can put your workers skill sets to good use.

Make sure that inventors know why their ideas are rejected. There is nothing worst than to have an idea languish with no feedback from management to the inventor. If an idea is not selected for development, then the inventor needs to know why: for example give the inventor a link to prior art or an explanation why it is not in the best interest of the company. Also make sure it is spelled out that the rights to the invention revert to the inventor. If you perform this small step, you may get more useful inventions submitted and less that are withheld because they are part of someone's exit strategy for when they leave the company.

Additional Reading:

patent strategy; This power point reiterates a lot of the points I make here, however the author advocates “Innovation Workshops”.I don't particularly agree with this, but perhaps that assessment was influenced by this book The Power of Introverts . If you put a bunch of people together in a room and ask them to invent, typically what you will wind up with is something designed by committee that mimics the mindset of the most extroverted people in the room, but is watered down in an effort to make everyone happy or at least the people who care the most about being heard.

to patent or not to patent? This white paper from the University of Waterloo technology transfer office gives a concise method of determining whether it is worth getting a patent or not. However it assumes that you can estimate the worth of a new product based on the market potential, cost of production and similar products out there. Probably what should be estimated is the worth of your R & D efforts. You must assume that 9 out of 10 of your new product ideas will never make it to market (or pick a number of your own). If you are active in patenting in the nine that don't make it, you would need to include the cost of development for these and the cost of patent applications in the calculations to develop the one product that you do develop. Now if you get broad enough patent coverage for your shelved ideas and simply don't wish to build a product because you only have funds to pursue one new product, then perhaps the cost of this shelved research can be offset by patent license agreement.

from http://www.google.com/glass/start/what-it-does/