6 Tips for Writing Quality Invention Disclosures
Before returning to private practice, I practiced patent law in-house at two companies: first at a battery company, and then at an oil company. I’ve sat through my share of invention disclosure committee meetings.
This article is intended to help corporate and university researchers prepare “quality” chemical invention disclosures. In most organizations, disclosures are ultimately passed to a standing committee for approval or rejection.
Some organizations provide IP analysts to help researchers complete and shape disclosures before committee review; many do not.
Not every disclosure can progress to the patent application stage. Organizations do not have unlimited resources, and patent applications are expensive.
However, the fact a disclosure was rejected is not necessarily a reflection of the quality or importance of the underlying research. Sometime decisions are based on available budgets, internal priorities, committee member bias, or disclosure quality. Disclosure quality is mostly the only factor researchers can control.
To progress a disclosure to the front of the line, the submission should at least demonstrate: (1) the new technology is potentially important to the organization, and (2) the research has progressed to the point the technology is ready for patenting.
A quality invention disclosure should satisfy these two points, as well as provide enough information to allow counsel to prepare a draft patent application for discussion purposes.
Because disclosure forms vary widely, you’ll need to fit this information into the format of your organization’s form. I hope the following helps.
#1. Summary – the Elevator Pitch
Almost every invention disclosure form has a “summary” section. This is your elevator pitch. You have 10-15 seconds to keep the committee’s attention. Committees sometimes reject disclosures after only reading this section.
Problem – Solution – Better: (1) state the Problem, (2) indicate how the new technology Solves the problem, and (3) state how this solution is Better than existing technologies.
Keep this really high level. This is not where you necessarily want to show any more than one or two significant data points.
Give the committee a sense of proportion of how the solution impacts the problem. Will your improved manufacturing process help a manufacturing facility make 100 additional liters of product, or 1,000,000 liters?
The world needs to mitigate atmospheric CO2, and reduce the amount of ethanol derived from non-food sources. Our new catalyst takes waste CO2 and electrochemically converts it to ethanol at ambient temperature and pressure. We’ve achieved an 80+% yield, and this process is 1/3rd the cost of all existing commercial ethanol production technologies.
I noted at the beginning a disclosure should indicate how the new technology is potentially important to the organization.
Answer this question for the committee: Why should our organization care about getting a patent for this technology?
Does patenting the technology fall within the organization’s IP strategy (assuming it has one; most don’t). Is this technology a part of the organization’s core business?
If a new technology is outside the organization’s core business, how would a patent covering this technology impact those outside your organization? Would a patent block a competitor? Is there a possible third-party licensing opportunity?
#3. Provide a solid background
I've reviewed many disclosures where submitters simply included a list of patents and journal article citations as “background.” Rarely will committees have the time to go read these references.
Depending on the makeup of the committee, the disclosure form, standing alone, needs to educate the committee so they can understand your data results.
First, provide a little background of the chemistry behind the new technology. I’m a chemist, but I’m not an expert in every area of chemistry. Beyond your basic chemistry education, what chemistry did you have to learn to begin working on your technology?
Second, help the committee understand how others have tried to solve the same problem. Existing technologies are never perfect. How are existing solutions inferior and how does the new technology overcome these deficiencies?
#4. Product Characterization and Process Chemistry
The vast majority of disclosures I've reviewed over the years lacked any product characterization data of any kind. Often submitters synthesize a chemical material, test the resulting product for its intended commercial purpose, and simply reported the performance results in an invention disclosure.
When I write a patent application I want to be able to claim a new chemical material by what it is, not just by what it does. What physical characteristics differentiate the material from similar materials made by others? Is there something there, or not there (e.g. an impurity), that makes the material better?
Ideally, I like to tie a new material’s unique physical properties to improved performance. For example – a new cathode material has a unique morphology, which provides the ability to better coat the material into a battery electrode.
For new/improved manufacturing methods, if relevant, don’t just list the process steps, conditions and equipment. Talk about the chemistry. What’s going on in each step? I like to tie the process to an improved product (e.g. yield, lesser impurities, etc.). Sometimes the improvement is just to the process, and doesn’t impact product yield or quality.
This is the hardest section for most submitters. Which experiments should one report? Report too few examples and the committee may reject the disclosure, even though more data exists. Too many experiments can result in high outside counsel fees as a result of them having to plow through and condense all the information.
The examples really should lead the reader to your ultimate conclusion, and demonstrate the technology is better than existing technologies.
Most readers of this section are looking to see if you’ve developed your work far enough to warrant the filing of a patent application. Have you collected enough data to support your findings? Perhaps the data set is not tight enough to support your conclusions. Maybe more work needs to be done.
I like disclosures that start with a table summarizing the data supporting the conclusions. Include a short discussion of this summary table.
Tables. I really like tables. A table containing the results for 5 experiments is easier to read than 5 narratives. But explain the table and what the reader should take away from the reported results.
Data. While every experiment may not need to be reported, if data exists for any one experiment, I like to put it all in: physical properties of reactants, intermediaries and products; process conditions; lab equipment and instruments used; etc. One never knows what may be needed during examination to differentiate your work from the work of others.
Apples-to-apples comparative experiments. Show your work and how it compares to those who came before you, when tested in the same manner. How is your work better? While there is no formal “better requirement” in the patent system, subjectively it’s there. Patent examiners want to know why your research is superior over those who came before you.
Repeatable experiments. Provide enough information so that any third party reading your examples could repeat your work and achieve the same results. Details such as instrument settings, raw material sources and reaction conditions could be significant. In one case, the type of bottle used to mix reactants turned out to be significant.
#6. Mind the Gap
Most invention disclosure forms ask submitters to report on any planned discussions of the disclosed technology outside the organization. Some organizations do better than others when it comes to managing these critical dates.
Be your own advocate. If you have not heard whether your disclosure has been accepted or rejected, and the date of your planned discussion with the outside is looming, follow-up. Don’t assume everything has been taken care of.
Talk to your legal group before you do anything outside your organization. Even anything as simple sending out an abstract for publication in advance of a scheduled talk can be fatal to a granted patent. I won a European Opposition based on this point.
Disclaimer: This post was prepared by Michael Ross for informational purposes only, and does not constitute legal advice or establish an attorney-client relationship. Readers of this post should discuss their own particular situation with their attorney before taking, or refraining from taking, any action.