Category: Patent creation

Having made the drawings and the core/summary of the invention, the most important parts of the disclosure are done, and below I will give some general thoughts about the background and detailed description part.

Background

I suggest you try to keep the background rather short. Try to only discuss the relevant background. Furthermore, in the background, also mention prior art (i.e. known technique) solutions to the problem (if there are any), and also mention potential problems with the prior art solution (too complex, too expensive, too power consuming etc.) so that you can argue for the need for your invention.

Detailed description

The detailed description part of the invention disclosure can be long and should – of course – be detailed. Here in the text you describe all the drawings in detail. Try to come up with as many possible solutions (embodiments) for the problem as possible. By showing, let us say, at least two explicit examples/ways for performing one step of the invention, the patent attorney then can use that information to make the scope of protection wider. Referring to the example flow chart, pseudo-claims in earlier posts, one can show two or more different methods for determining the compensation value, and the same for determination of the characteristic value.

I hope I now have given you some tips and tricks for being able to write good invention disclosures next time you have determined an invention. Good luck!

Now back to the “How-part”; How to document an inventive idea.

Say that you got a brilliant idea that you believe is novel and inventive. Now you need to describe the idea which is done in an invention disclosure or an invention disclosure report. An invention disclosure, or invention disclosure report, is a confidential document written by a scientist or engineer for use by a company’s patent department, or by an external patent attorney, to determine whether patent protection should be sought (or not) for the described invention.

The invention disclosure typically follows the structure of a regular patent application and should include

• Background, prior art

What is the background of the problem? It should also include the closest known (by the inventor) technique (prior art), i.e. how the problem was solved before (if there was any solution at all….)

• Problem with prior art (complex solution, expensive, high power consumption etc. etc.)
• Short summary, core essence of the invention

In some few words, what is the invention about

• Advantages with the invention

Advantages using the proposed invention over prior art

• Detailed description

As it sounds, technical details for enabling the invention

• Drawings

In the next few updates, I will reveal how to write the invention disclosure in an efficient way. Hang on ….!

OK, so you succeeded to open up your own and your colleagues minds. Together you developed a good idea that ended up in an invention, and then you also spend the time needed for preparing a patent application and finally it was filed. Congratulations! ….

One year later, when you almost forgot about the invention, and working full time with another project, a patent engineer sends you a bunch of papers (or nowadays, links to docs) including a search report from the patent office, the search report includes a lot of “X” and “Y” references. This is patent review buzzword meaning

Your invention is neither new nor inventive ☹!

Many people tend to give up here …. But it is now the “fun” starts!

First of all, the examiner is a human that have judged that your invention is neither new nor inventive, due to extensive search of prior art documents. But, maybe he/she has misinterpreted your invention? Maybe, the aim at the patent office is to make a negative decision in order to make the inventor think once again over what can be protected over prior art?

I will say, this is the way you should think;

The examiner is wrong!!

Then you need to read the prior art document (maybe with help of the patent engineer/attorney) and find arguments for that these documents might describe something different and in combination with the prior art documents will end up in something that is completely different compared to your invention. Then you together with the patent persons need to write an answer arguing that the examiner is wrong. In some cases, you might need to reduce the scope of the claims to overcome prior art. Then half a year later you get a new response/search report from the examiner, maybe still negative (then it starts all over again), some other times the report will be positive.

To obtain a granted patent is an iterative process that can take several years! So you need to have perseverance and never give up to early!

I used to say:

Never ever trust an office action, …. especially not the first one!