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Writing the Background and Detailed Description

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!

 

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Core of the Invention – Pseudo-Claims

Next step in the writing of the invention disclosure is to summarize the core of the invention. Now when the flow chart and/or block diagram is drawn, one probably can condense the core of the invention based on the drawing. I used do that in terms of “pseudo-claims”. Claims in a patent or patent application, define, in technical terms, the extent, i.e. the scope, of the protection conferred by a patent, or the protection sought in a patent application.

Since I have no formal education in the noble art of writing formal patent text – I have learned patent creation the street-smart way ? – I will by no means say that I can write formal claims, but something this is intended to be close to actual claims. I believe this will help the patent attorney drafting the patent to easier understanding of the steps I believe is novel and inventive.

Taking the fictive flow chart example, I showed in the last blog update, the corresponding pseudo-claims could be something like

1 A method implemented in a unit for determining a characteristic value of a received signal, the method comprising the steps of

  • determining a set of values for a first and second received signal
  • computing average of values for first and second received signal
  • determining a compensation value
  • based on computed average value and determined compensation value obtaining a characteristic value of the received signal

2 1 and further where the compensation value is based on received signal to noise ratio

3 1 and characteristic value is further used in further xxx action of the received signal

Number 1 describes the main steps (corresponding to the boxes in the flow chart I believe was the novel and inventive steps, i.e. 100,110,130,140). Number 1 can be seen as a proposal of actions that should be covered in the main claim.

Number 2,3 describes further details (the other boxes in the flow chart (no 2, 120 and no 3, 150), and can be seen as sub claim proposal)

Now, when finalized the drawings and core of invention you have – I will say – done the majority of the invention disclosure and the next step is then to write the background and detailed description.

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Preparing an invention disclosure

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 ….!

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Don’t give up!

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!

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Do the Work!

“Invention (Genius) is one percent inspiration and 99 percent perspiration”,

This famous quote was made by the world probably most well known prolific inventor, Thomas Alva Edison, 1847-1931, and I agree, at least to 99% :-). Btw, Edison was named inventor on 1084 granted US patents, and also made at least one invention per year under 60 consecutive year!

Behind each idea/invention there are lots of hours of work. Not only the hours spent on coming up with the idea, but the time to make it into a patent application ready to be filed. You need to remember that an idea in your mind is not an invention until it has been written on paper, and filed as a patent application. As a corporate inventor, you probably have some patent engineers/patent attorneys helping out with the patent drafting but you probably need to write the first invention disclosure and need to spend time on reviewing the patent application draft etc.

In my career as inventor I have met many people who have had great ideas, but didn’t spend time to write the idea on paper.  In some cases, I guess it was laziness, but in most other cases, it was not possible for them to find work hours to spend the amount of time needed for get the good idea on paper, due to other tough product/task deadlines.

So, the take with you from this blog post is

  • For employees: You need to spend time on your brilliant ideas in order to get them ready for filing as a patent application!
  • For employers: Make sure that your talent and innovative employees have sufficient time for preparing invention disclosures and reviewing patent drafts!
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Keep an Innovative Climate in the Company

In the last update I discussed the importance of being open minded to your own ideas. It is also important that there is an innovative climate in the  company/office in order to succeed in the development of new inventions. For instance, one needs to keep an open mind in discussions with colleagues.

Below, there is one exercise for the blog-reader I hope you can solve ?.

Which of the two answers by the person B below would have the largest potential to create inventions?

1 . Two persons A and B meet at the coffee machine

A. “I have a brilliant idea!”

Person A explains the idea.

B. “Great idea! This seems to be new and I have some proposals on how to improve your idea!”

2.  Two persons A and B meet at the coffee machine

A. “I have a brilliant idea!”

Person A explains the idea.

B. “No No, This can’t be new, go back to your office!”

Any guesses?

Ok, you guessed no 1. Great! That is correct!

So make sure to be positive and open minded not only to your own ideas; you and your colleagues need  also to be open minded towards other person’s ideas and coach and enhancing each other’s ideas.

So, from now on, throw the “Not Invented Here/By Me” mentality in the garbage can!

 

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Can everyone be an Inventor?

Many people believe that one needs to be an one-of-a-kind Einstein in order to come up with inventions. That is not true. Furthermore, it is also expected that in order to obtain a patentable invention one needs to invent something new in the same ballpark as inventing the wheel. That is not true either.

Many inventions today, may be small improvements of an existing technique that seem to be non-important, but solves a problem in a new and inventive way that improves something (performance, reducing cost etc.) with an amount that it has a business value to be protected by a patent.

So can anyone be an inventor? I guess so. What you need is knowledge of the subject or topic you are working on. A study made by the authority Tillväxtanalys, 2011 about “Svenska uppfinnare” (in Swedish), indicated that a majority of Swedish inventors where highly educated (Master degree and PhD:s). Looking at my co-inventors throughout my career, I will say that this is probably true for corporate inventors working at high-tech companies. However, it is very important to understand that an invention does not need to be very high-tech. Many inventions are clever (and looking at them afterwards, simple) solutions to well-known problems, but the solution is made in a novel and inventive way.

So I will definitely say that high formal education is not the only success factor for being an inventor.  I believe that it is equally important that one has an open mind and a genuine interest in the subject/topic you are working with. In the next few blog posts I will start to reveal some of my secrets about how to become a prolific inventor. Hang on ….

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The How, What and Why ….

In my seminars about inventions and patent creation I usually talk about the “How, What and Why of patents”, and in order to follow the blog it might be good to understand what that means.

First of all, one needs to know What a patent is. This information can be found elsewhere  on the Internet, but I will in the next blog update make a short “crash course” on “what is a patent”.

Secondly, one needs to understand “Why are patents important for industries and society”. Here comes the business perspective of patent into the picture, and this is also information that can be found on many places  in cyber space. However, I will also deal with this subject in the blog since it is of importance to understand the need for inventors, inventions, patent creation and patents.

Finally, we have “How to create patents”, and here we come into my area of expertise, Inventing and patent creation. I will reveal some of my secrets on how to become a prolific inventor, in forthcoming blog updates.

I will also deal with related stuffs, concerning creativity, inventors, inventions and patent creation from my, a researcher and prolific inventor’s, perspective. Example embodiment also covered by the invention … ehhh …sorry….the blog, is; “corporate inventors vs independent inventors”, “who has most Patents on the Planet”, “Statistics over prolific inventors”, “Inventing improves your business network”, “Method and apparatus for producing one invention per week over a year”,  “patent war 100 years ago” and many more. So follow my blog and see what you can learn ?.