Invention Disclosures

Maintaining proper business records is critical to any successful business. Where technology and innovation are involved, complete invention disclosure documents can be important for assuring the protection of intellectual property. For example, invention disclosures provide attorneys important information for preparing and prosecuting a patent to protect important aspects of a company’s technology. Well-maintained invention disclosure records can also help a company fully understand the strengths and weaknesses of its inventory of innovation to better execute the right intellectual property strategy.

Companies use invention disclosure forms to assist their inventors in recording and communicating certain key information about each invention and its context, which can be important for the company to decide whether to apply for a patent or, alternatively, rely upon secrecy or defensive publication. Invention disclosure forms can be very important for later patent application drafting (if the decision to prepare a patent is made). For example, invention disclosure forms often prompt inventors to describe the field of the invention, the state of the art, the problem that the invention solves, the date the invention was conceived and reduced to practice, and the identity and specific contributions of the co-inventors. This information can be critical to drafting a patent application.

An invention disclosure will typically provide a synopsis of an invention, including a summary of the problem solved by the invention, a background of the technology surrounding the invention, and details about one or more specific embodiments of the invention. The development of new technology often involves improving or changing existing technology such that an understanding of the state of the art is often important in understanding the improvement presented by an invention. For this reason, it can be important to provide a description of pre-existing technology (sometimes called “prior art”) and how the invention solves one or more important problems differently. When discussing prior art, however, it can likewise be important not to improperly classify an inventor’s own work as “prior art” if it has not been disclosed to the public.

Invention disclosures typically record the date that the invention was conceived, and any later dates that the invention was reduced to practice, for example in completing a working prototype. Those dates help patent attorneys to determine filing deadlines to protect the intellectual property. Invention disclosures also prompt the inventor to record and communicate any past or future dates when information about the invention was or may need be communicated to an outside party (e.g. co-development partner, prototyping vendor, or potential customer). Those dates help patent attorneys determine whether patentability is still possible, whether a non-disclosure agreement (NDA) is necessary, and/or the urgency to file a provisional, design, or utility patent application,

An invention disclosure process can also provide a checklist to make sure that certain details are preserved for potential future legal use in patent prosecution or subsequent disputes. For example, the invention disclosure process may remind an inventor to record and preserve related engineering notebooks or internal memorandum that may later evidence the time of invention and individual contributions of co-inventors. Such information is not usually included in the patent application itself but may be conveniently recorded during a thorough invention disclosure process.

An invention disclosure process should also include a process for reviewing and evaluating the submitted invention disclosures. For example, it can be important for a company to review any submitted invention disclosures on a regular and timely basis to ensure that prompt action is taken as appropriate. For example, where an inventor properly discloses an upcoming critical deadline, it is likewise important for management to understand the implications of such deadline to then take any appropriate action. A review and evaluation process can be implemented using a committee that includes business, management, and technical personnel where each can contribute from their own unique perspective.