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.