Drafting an Invention Disclosure

• Author: Dylan O. Adams
• Profession: Seattle-based patent attorney
• Pages: 135-153

135

9

Drafting an Invention

Disclosure

“Invention is not enough. Tesla invented the electric power we

use, but he struggl ed to get it out to people. You have to combine

both things: invention and innovation focus, plus the company

that can commercialize things and get them to people.”

—Larry Page, c o-founder and CEO of Google

Aer choosing a patent attorney, many inventors are unsure of how to

properly and eciently disclose their invention so that a patent appli-

cation can be draed. My new clients are someti mes dissatised when

I ask them to simply give me any documents, descriptions, diagra ms,

or pictures that they already have so that I can sort through them to

determine what is relevant and what additional information might

be needed. ey can still be uncomfortable even when we discuss a

follow-up inventor interview to ll in a ny gaps. Instead, many inven-

tors would prefer coaching about what documents are relevant and

how to dra additional documents that describe t heir invention in the

“co rrec t” wa y.

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136 PATENTS DEMYSTIFIED

For many reasons, working with existi ng documents and conduct-

ing an inventor interview is the most ecient way to obtain the rel-

evant information that wil l form a foundation for an attorney-draed

patent application. First and foremost, teaching someone how to dra

a perfect invention disclosure that is relevant to a specic invention

oen takes substantial ly more attorney time and incurs more cost than

necessary. Additionally, draing formal invention disclosure docu-

ments is oen a daunting and intimidating ta sk that can take weeks or

even months to complete. Along with being a poor investment of time

and energy, delaying the ling of a patent application and not estab-

lishing the earliest  ling date possible is oen an unacceptable risk.

On the other hand, tak ing the time to write an invention disclo-

sure can be an ext remely valuable exercise if done during the develop-

ment of an invention and at the early stages of a business. By having

to articulate an invention in writing, inventors can gain new insights

into their inventions, which aids in the research and development pro-

cess. Additionally, invention disclosures are oen a starting point for

a business plan and other promotional materials that are essential to

any growing business.

Invention disclosures can also form the basis for provisional pat-

ent applications, and inventors, along with some patent attorneys, will

sometimes le them direct ly as provisional patent applications. Using

an invention disclosure as a provisional application can be a great

strategy in cert ain emergency situations, but harbors risks that inven-

tors and even some patent attorneys fail to fully recognize. Accord-

ingly, before going into detail on draing a comprehensive invention

disclosure, it is important to understand why having a qua lity provi-

sional patent applic ation is so importa nt.

WHY PATENT ATTORNEYS SHOULD IDEALLY

DRAFT PROVISIONAL PATENT APPLICATIONS

e USPTO will accept essential ly any document submitted as a provi-

sional patent application. is is a double-edged sword because, while

ling a provisional application provides the opportunity to submit

informal documents, it also creates the opportunity to submit docu-

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