Patents Q&A

How Should I Prepare an Invention Disclosure for Patenting?

If you are interested in patenting a new invention, or simply interested in assessing its patentability, a helpful early step is to prepare an invention disclosure. Such disclosures gather relevant technical information, as well as details about the identity of all potential inventors. The invention disclosure should be written and should further include drawings or other visual aids. It should be kept confidential. There is no “official” government form for an invention disclosure, though companies may have a form for internal use.

The following sample invention disclosure forms can be downloaded and used to document a new invention for patent purposes:

The main purpose of preparing an invention disclosure is to convey relevant detail details about the structure and configuration of the invention, how it functions, what is believed to be significant about the invention in relation to what has been done before (the “prior art”), and potentially other things that might affect the ability to patent the invention. This disclosure should be prepared by the inventor(s) themselves. It is usually not fancy or long. These sorts of disclosures are simply meant to gather basic, essential technical information and to point out what are considered the most important features. A patent attorney and/or patent searcher can then use the disclosure to gain an understanding of the invention in order to prepare a patent application or conduct a patentability search.

There may be additional documentation and information needed beyond what appears in an invention disclosure. Requests for more technical information are common. For example, patent attorneys will usually conduct at least one inventor interview to gather more technical information for purposes of patenting. But an invention disclosure is a starting point. Inventor interviews are much more productive if the patent attorney has some relevant drawings and other materials beforehand. That allows the patent attorney to have some sense of what the invention is about in order to ask better and more pointed questions.

It is important that an invention disclosure mention all the important features of the invention that might be patentable. Patent attorneys can ask follow-up questions, but they are not mind-readers. Omitting some major aspect of an invention on the invention disclosure entirely is a common mistake. Another common error is to focus on commercial marketability information, omitting technical details about what an invention really is and how it works that matter most for patenting.

An invention disclosure should also be relatively short and focused. While voluminous technical materials might have value for a patent attorney at certain stages of patent application preparation, it is inefficient for a patent attorney to read through dozens or hundreds of pages of such materials without some guidance. And an attorney might not fully or immediately appreciate what is new and inventive in merely “raw” technical data. An invention disclosure should be like a beacon pointing out what the inventor(s) consider to be most significant, at least as a starting point.

Invention disclosure forms that are signed and dated can sometimes provide useful records about who developed a given invention and when. Though a confidential write-up by itself will generally not preserve any patent rights—filing a patent application is required to do that. And there may be bar dates or deadlines by which a patent application must be filed.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.