If you’re in a tech business and you’d like a smoother way to have patent applications drafted, you should spell a few things out to your patent attorney.
Giving your attorney the information they need from the outset will make everything more efficient, make sure you get better value and lead to a stronger patent application. Here’s how to do it.
Okay, first things first: if you’re not regularly talking to your engineering team to harvest all the inventions they’re creating and then using invention disclosure forms (IDFs) to record all of those inventions, you should start now. This is the simplest, most effective thing that any technology business should do to manage their IP and provides loads of benefits.
Assuming you’re recording your business’s inventions, you will need a process to assess which ones you will take forward as patent applications — we’ve covered this in an earlier blogpost.
Whether you’ve covered those two bases or not, you’re now in a position to instruct a patent attorney to draft a patent application for you. Easy, right? Call them up and set the process going. Well, while this will do the job, if your attorney doesn’t have all the information they need right at the beginning then you will be making the whole process less efficient, more confusing, more expensive and you’ll probably end up with a weaker patent.
The issue is that patent attorneys are under massive time pressure, especially the senior ones that you want drafting your patent applications. This is for a few reasons, but it’s mainly because they bill by the hour and are measured on that sole metric in their own firm. That means if you want them to spend time getting to know you, your inventors and your business then you either have to pay for it or there is a tension between that and what they have to do to get recognition in their firm.
At Matter we do things differently as we have fixed prices and our priority is on getting close to your business so that we have the information we need to do a great job. We think that if you do that then the good things will follow. But if you don’t work with us and you want to improve things with your current patent attorney then you’ll need to give them that information — in a great invention disclosure. If you don’t then there’s a danger that they’ll skim over important stuff, which usually means they misdirect the claims or misunderstand the invention.
So what should be in a great invention disclosure? Here’s the basics, although there will also be some formal stuff and you can refine it by adding a few other things that are specific to your sector or your business.
1. The problem your invention solves
2. Your solution to that problem at a high level
3. The (single) feature that enables that solution
4. A description of how it works with drawings
5. How you intend to commercialise the technology
This is really helpful for patent attorneys because it sets the context for the invention by stating how things are done at the moment and why that’s not the best way to do it. The description of the problem allows the patent attorney to reference the features of your invention against what is known right now and that allows them to understand what you have done that is new. You’d be surprised how often this can result in your patent attorney appreciating new novel features of your invention, resulting in stronger protection.
Your solution at a high level
This only needs to be a few sentences but it’s great for patent attorneys to know because it shows them where they need to be looking for new features that embody the invention. It’s a summary of the inventive concept and means that when they are reading the detailed description they can more easily identify the features in the right areas that are key to the invention.
The (single) feature enabling the invention
This is not always easy to pinpoint, but it’s worth trying because if you get it right then you’re directing the patent attorney to the new feature that will probably form the basis of the patent claim they write. The patent claims take the most thought for a patent attorney, and that’s the way it should be because they’re the most important part of the patent. By directing your attorney to the correct feature, you cut down the thinking time and make it more likely they will get the right claim first time around.
Description and drawings
This should be a few paragraphs and have at least one drawing, although often more than one drawing will be needed. This puts the meat on the bones of the earlier sections and goes into some detail about how the invention actually works. There is something of an art to this, but if you follow a simple structure then it will usually be a very good primer for your attorney: describe what the invention looks like and how all the elements fit together; and then describe how it operates. This is the standard format for the description section of most engineering patent applications and so will be easy for your attorney to recognise and help them understand quickly.
How you intend to commercialise the technology
This is really important as, if your patent attorney is a good one, it will shape the way they claim your invention and what features they put in the claims. If you intend to licence the technology you should say so. If you will be having it manufactured overseas and shipped to you for sale then you should say so. If it is an improvement to an existing product then you should say so. If it is a new market for you then you should say so. If you are filing the application to block a competitor then you should say so. If the principle market is overseas then you should say so. Give your patent attorney this information and ask them if and how it changes the way they will draft your application.
So there you have it — the 5 fundamentals of a great invention disclosure. At Matter we have one ready to go and if you would like to use ours then simply email us email@example.com and we’ll send over a template that you can use straight away.