One simple yet effective way to build a level of discipline into the invention handling process is to define a standard template for invention reports coming from the inventor community. If the idea is of potential value and is patentable, then the inventor should complete an invention report. An invention report is the first step in obtaining patent protection but does not constitute the filing of the patent application. Such a report should be completed for each discovery or invention that has a potential commercial value or represents a breakthrough in technology. To help both the inventor understand what is expected of him or her, and to ensure consistency, it is worthwhile considering defining an invention report template to be used.
Such a template may consist of the following:-
The title of the invention
- Inventors details
- Additional contributors to the invention
- Is the invention related to a specific project or program?
- Technology area of the invention
- Does the invention relate to a Standard?
- A summary of the invention
- A more detailed description of the invention, together with any figures or drawings
- Description of all known, related prior art
- Will the invention be disclosed publicly?
- Reference material
The title should be defined in one sentence and capture the essence of the idea , although this may or may not be the same as the title of the subsequent patent application filed at the Patent Office. This is important to note, as it can cause confusion later if they are not identical.
Inventor details need to be defined well. This means their full given name, home address, telephone number, email address, nationality, employers name and address etc, so they can for example be contacted when they are needed to sign papers. The inventor’s home address information should inform the company where the inventor was at the time the invention was made. Such information may be needed to determine where the reward should be paid and which company division or unit should arrange the payment, due possibly to national taxation or legislative issues. Having the inventor’s home address information available may help when answering certain Patent Office requests and it may also help in determining whether the company needs a foreign filing license or deciding where to file first.
If multiple inventors are involved, then such information is also extremely important. The rules on inventorship are quite clear and derive from the rules for patentability. To be patentable, an idea must not only be novel, but must also involve an inventive step, which is an insight that is not obvious to someone possessing reasonable skill in the relevant technical area. Anyone who contributes something novel and non-obvious must be named as an inventor on the patent application. But someone who has not contributed in this way must not be so named. If inventors are omitted from the application, or if non-inventors are included, any patent/s granted can subsequently be invalidated, so it is very important that this information is correct at the outset.
Where an invention arises in a group session, as a result of a brainstorm or other type of discussion, it is often the case that everyone present has genuinely contributed something. However, it does not follow from this that everyone present is entitled to be named as an inventor, because not all contributions are novel and non-obvious to someone possessing reasonable skill in the relevant technical area. If you have thought of something novel and genuinely inventive, and then refine and improve that idea by bouncing it off a number of other people, their contributions do not automatically make them inventors. Only a person who is responsible for a genuinely novel and non-obvious contribution should be named as an inventor. It is quite unusual for large groups of people to contribute inventively in this way to the same patent application. Therefore, if you intend to name more than two people on an application, it is recommend that the inventor gets together with the other people in the group, to do an honest evaluation of what each person contributed, before proceeding.
Is the invention based on a joint effort with another company or organisation? If the answer is yes, then is it important that the inventor specifies the other company involved, discloses any relevant agreement or contractual details they may have with this other company, and provides the necessary key contact details.
Does the invention relate to a specific project? If yes, then the inventor should identify the name of the project and provide further relevant and helpful details.
The primary technology area of the invention needs to be specified and classification systems exist to help guide the inventor here. A Patent Classification is a code which provides a method for categorising the invention. In the US Patent Classification (USPC) system, classifications are typically expressed as “482/1”. The first number, 482, represents the class of invention and the number following the slash is the subclass of invention within the class. There are approximately 450 Classes of invention and 150,000 subclasses of invention in the USPC.
Classes and subclasses have titles which provide a short description of the class or subclass and they also have definitions which provide a more detailed explanation. Many classes and subclasses have explicitly defined relationships to one another and patents are contained in the subclasses. In a sense, classes also contain patents but for classification purposes patents are always classified at the subclass level. Which means that one or more classification (i.e. class/subclass designations) is assigned to each granted patent and each published application.
A patent classification also represents a searchable collection of patents grouped together according to similarly claimed subject matter. A classification is used both as a tool for finding patents (patentability searches) and for assisting in the assignment of patent applications to examiners, for examination purposes. Classifications have definitions and hierarchical relationships to one another.
Is the invention planned to be contributed to a “Interoperability Standard”. If yes, then the inventor should give the name of the standard and the SDO (Standard Defining Organisation) plus the date when it is planned that the invention is to be contributed.
Interoperability refers to the ability of diverse systems to work together or inter-operate, without any special effort on the part of the customer or end-user. It is the ability of two or more networks, systems, devices, applications or components to exchange information between them and to use the information that has been exchanged. Interoperability standards can help facilitate data integration and transmission.
Patents underpin open standardisation and allow the disclosing and sharing of ideas openly and early. Without patents, it is most likely that secrecy would prevail. Patents allow technical specifications that can be promulgated consensually and early, thereby making the process inclusive, rather than exclusive. However, patents do have the potential to delay or even block the standard and thereby cause a technology “hold-up”.
A short summary of the invention should be requested in the invention report template and it is helpful to ask certain specific questions here such as:-
- What problem is solved by the invention
- What are the existing solutions and what limitations do these solutions have
- What are the novelty features and the benefits of this invention
Technical documents, figures and drawings should then be attached to explain the invention in more details.
Is the inventor aware of the prior art, which is any evidence that your invention is already known. An existing product is the most obvious form of prior art but prior art does not necessarily need to exist physically or be commercially available. It is enough that someone, somewhere, at some point in time has previously described, shown or made something that contains a use of technology that is very similar to your invention.
Search engines on the internet are familiar to everyone browsing the world-wide-web and there are a variety of patent specific search engines available for use, with some being free of charge, which allow you to search through various patent databases. These can prove extremely useful, for example, when conducting prior art searches. There are also some patent search tools that are provided by national, regional and global Patent Offices, while others are actual commercial products on sale from specialist companies, usually with some extra ‘bells and whistles’ attached to give some additional value add to the user. Patent search tools allow you to search through various databases looking through patent claims, using the complete text from an invention disclosure, or free form text.
There are tools for analysing existing patent data and many people have begun to make increasing use of such patent information. These tools provide search results and analysis of the patenting activities in an industry, technology or company to ascertain or forecast the direction of technical change and to pinpoint the relative technological position of a company in a particular marketplace. Patent mapping systems are available to allow you to truly understand the existing patent landscape with many of the more advanced versions allowing the patent analysis results to be displayed by visual representation, using bar graphs, polygonal line graphs, pie charts, radar charts and other charts or graphs, which are typically called ‘Patent Maps’. Such visualisation is an especially effective way of representing the results of this type of patent analysis. Patent mapping is also a technique that uses patent information to create a graphical or physical representation of the relevant art pertaining to a particular technology area.
Is the invention expected to be publicly disclosed in any way, and if so, when? An invention is considered public if it is disclosed in any way. An example could be a publication, university thesis, technical presentation, product user manual, service manual, inter-operability standards specification, a website or a submission to a technical seminar. There may be a need to sanity check the exact date of intended publication at some seminars or conferences as items such as abstracts may be published before the actual event itself is held, and could act as prior art to the same invention.
There are however some exceptions which do allow disclosure prior to filing a patent application with the Patent Office. Use of a non-disclosure agreement with an external party is included as an exception since the invention is not made public in this form. For public disclosures two options can also be found, that is the use of simple “grace” periods, such as with the USPTO, or the more complex example of the EPO exhibition rule. The local jurisdictions, rules and guidance should be carefully checked to see that you are fully compliant before endeavoring to make any such public disclosure.
From the inventor’s perspective, the invention report is the first disclosure of the invention and should include a list of references which relate to that invention but no background references should be quoted in the report. An IDS (Information Disclosure Statement) is essentially a list of any references that relate to the invention and the full reference must be stated including the author, publisher, ISBN, chapter and page numbers. The number of pages quoted should be less than ten so as not to infringe any Copyright laws. Typically, there should be between three and five references listed in the document. If the inventor has not fulfilled their obligations under the IDS document, the Patent Attorney prosecuting the case will receive a Notification of missing parts and be given an opportunity to correct this.
Other things to consider
The items listed above are not exhaustive, and there may be other things to consider adding into your invention report template including:-
- Agreement and contract information
- Links to note books
As stated previously, one simple yet effective way to build some discipline into the invention handling process is to define a standard template for invention reports coming from the inventor community. I hope that this paper provides the reader with some ideas and insights on this subject matter.
Donal O’Connell is the IPEG consultant and Managing Director of Chawton Innovation Services Limited. His first book “Inside the Patent Factory” was published by Wiley & Sons in 2008 and his new book “Harvesting External Innovation” was just published by Gower Publishing in mid 2011.