If you have an idea and you want to disclose it to others for the purpose of evaluating it or applying for a patent, such as your in-house patent committee, or an external patent counsel, you will be asked to fill up an invention disclosure form. Some questions that are asked in an invention disclosure form may feel overwhelming, confusing, or difficult to answer, at first. This blog post is to help anyone who finds themselves in such a situation. We will break down the questions asked and the expected information needed from inventors, to make filling the form a simple, interesting, and effective process.
This form is essential because only if you provide clear and full information regarding your invention, your attorney or patent agent will be equipped to proceed with making the right search, filling your patent, or giving you the right advice. Consider this as a foundation on which your patent filing will rest. If you find yourself disinterested at any point, remind yourself what you stand to gain when you get a Patent application filed and then granted.
Before beginning to fill the form please ensure that inputs from all inventors have been taken. We highly recommend that you do so, because in our experience we have seen that some inventors may be able to elaborate on certain features or ‘embodiments’ better than other inventors. Let’s discuss some common questions asked in an IDF (Invention Disclosure Form). Please note each company or patent firm will have its own IDF and the questions will vary. However, the intention for the form is uniform across all companies., i.e to get full and correct information about the invention.
1. Suggest a descriptive title for your invention.
The title has to be descriptive, about 10-15 words, it should be a preview of the problem that you are trying to solve and the approach you are using to solve it.
2. What technical problem does your invention attempt to address?
This question seeks to understand the specific ‘technical problem’ that you have identified and the approach you have taken to solve this problem. Don’t just mention the economic need, or an overview of the market in general, here. Instead, focus on the specific technical problem that you faced while attempting to address the need.
3. What is your solution to the problem?
Your answer here will help us understand your approach to the solution. What is required is a high level of information on the features and components that you have used to solve the problem. You can keep the answer to this question brief.
4. Describe any attempts to address the problem that you are aware of. What are their drawbacks and disadvantages?
The prior art includes any information that is in the public domain that is relevant to the invention. When answering this question focus only on how the Prior Art falls short of solving the problem. List the disadvantages of the prior art. You need not list out how your invention is better. That can be covered later in the advantages section.
5. Describe where and how your solution is implemented. Provide a block diagram and a flowchart. List out the functionalities/components and steps.
While answering this question, answer in detail the implementation process of your invention as a solution. If your invention is a system then share a block diagram or a circuit diagram or a mechanical figure which shows the features and the components of your invention. And list out the names of each component and describe the function of each component that you consider is important to your system. If it is a method, then list out the steps involved in the process, one by one. What are the inputs that are being captured, how are they being analysed and what are the outputs. If this information is provided in a detailed and clear manner, your attorney or patent agent can create a flow chart of your invention with ease and accuracy.
6. What are the various implementations of your invention, such as those that competitors might implement? Provide use cases, examples, and experimental data.
When answering this question, keep in mind the various ways that your competitor might try to copy and implement your invention. It is advisable to anticipate different variations of how your invention can be implemented and list them. If you have access to use cases or experimental data, you can share the details of that too. It would be most helpful if you can list how your invention performs better in comparison to any prior art.
7. What are the elements/steps of your invention that you think are new?
This question is very important as it will help determine the patentability of your invention. While answering this question you can segregate it into essential elements, and optional elements.
8. What are the advantages that your invention/solution provides?
This question is applicable to both technical and economic advantages. We recommend that the technical advantages are given more importance and stressed upon. Because technical advantages will give you an upper hand at getting a patent granted. When listing the technical advantages you can mention advantages in terms of accuracy/speed/ less computational resources, efficiency and strength. If any economic advantages are also achieved by application of the technical implementation of your invention be sure to mention that here.
9. Has the invention been published or disclosed to anyone outside of your organization?
You need to state if your invention has been published or disclosed to anyone outside of your organization. You also need to inform if there is any such publication, disclosure, demo, or sale planned. If so, provide the date and details. This information is important to determine bar dates. Because any information shared can affect the patentability of your invention. The US patent office provides a 1 year grace period that is subject to certain restrictions, however, in other countries, if the invention has been published or sold commercially, it loses novelty It is therefore highly advisable that you apply for a patent right prior to disclosing any information about your invention.
10. Provide the names, nationalities, and addresses of the inventors and the applicant/assignee.
By inventors here, we mean all the people who contributed to the conceptualization of the invention. It is important to provide full details of the inventors including their countries of residence as it will have a bearing on the international patent filing strategy. If the applicant is a company, there has to be a document that provides evidence of ownership.
We hope that the information we have provided will help you see that filling the disclosure form isn’t as difficult as it may seem. If you need further assistance or have any questions, please do not hesitate to reach out. Our email address is ip@myipstrategy.com