This article explains how you should prepare to describe your technology to a patent attorney following a formal engagement. This description takes place at what is referred to as a “disclosure meeting” where the inventor(s) explain everything about the invention, including how it works, why it is new and useful, and how it creates business value. In this article we’ll look at: defining the “invention” and inventor(s), gathering supporting documents, identifying a competitive context for products based on the technology, determining any existing public disclosure dates, and prioritizing goals for the patent filings.
Thoughtfulness = Value
Before getting into details, let me share a critical mindset for preparing:
Writing a patent application is often like a treasure hunt where everyone, with the help of the attorney, searches for the intellectual core of an invention. It is also a rare opportunity where many small contributions can equate to thousands, sometimes millions of dollars in additional value. For example, valuable contributors within an enterprise may also include managers and executives. While they may not be co-inventors, these persons may have key insight into the company’s competitors and strategic direction. In a startup context, all the founders may be involved in the drafting process because the IP may be the foundation of the company. Even solo inventors may find significant contributions from those who helped them build or implement the invention.
Let’s briefly discuss the difference between an “embodiment” and the “invention”. An embodiment is one instantiation of your invention or technology. For example, any product that you design and physically produce is an embodiment. In contrast, the invention is likely much broader. For example, a “Bic® Cristal®” ball-point pen is an embodiment. A “pen having a spheroidal marking-point” is an invention.
If you submit a single embodiment to a patent attorney they will gladly write claims coving that embodiment and file a patent application. On the other hand, if you spend the time to think of additional embodiments then the higher inventive concepts will emerge and your protection will be broader.
Similarly, putting serious thought into the future direction of your technology results in more novelty and a higher likelihood of a granted patent. Thoughtfulness increases value even before the patent grants because the patent application communicates sophistication to investors, licensees, and competitors.
Determine the invention—or at least a starting point
You must start with a rough idea about what the invention is. This may be harder than it sounds. For example, an inventor may have built an intricate device with several independently novel protectable features. The invention may also be constantly evolving, as often occurs in software development. If you have designed an artificial intelligence algorithm, it may take time to understand how its extraordinary behavior emerges from given aspects of the algorithm.
The invention and its scope may change after the disclosure meeting, but you must provide the starting point:
If your invention is a composition of matter, instead write down the composition, any novel device or method that produces it, and any novel method for use.
Software and algorithms are especially challenging when it comes to framing the invention, for two reasons. First, software inherently involves layers of abstraction. Second, software code may be distributed throughout networked components. Here an attorney familiar with software provides important guidance. For example, the words used to describe the software may impact the “art group” that examines it at the United States Patent and Trademark Office (USPTO). The art group can have a large impact on your chances of getting an issued patent.
Determine the (likely) inventors
Once you determine the invention you can begin to figure out who the inventor(s) are. This also can be harder than it seems. As one court explained: “[inventorship] is one of the muddiest concepts in the muddy metaphysics of patent law.” Unfortunately, the inventor is the most important person in preparing a quality patent application.
First, let’s quickly look at the difference between inventorship and ownership. Both individuals and entities (such as an LLC or corporation) can own patent applications. However, patent applications can only be filed in the name of inventors, and in the United States an inventor can only be a natural person. Ownership initially vests in the inventors, who are often contractually bound to convey ownership to another person or entity. The individual inventors then satisfy these contractual obligations by assigning the patent applications to the owner after filing.
If you are not sure if someone qualifies as an inventor, it is best to have a verbal discussion with the attorney. A discussion is especially helpful if a possible inventor is deceased or has left the company. The attorney may ask to review employment or independent contractor agreements to ensure necessary rights have been secured.
Gather documents and data
Once you have a good idea of the invention and inventors, compile key documents including those that particularly relate to your technology area.
- patent applications you filed for this invention (including provisionals)
- patent applications you filed on related technology
- formal publications, academic papers, whitepapers, or studies
- photos of prototypes or finished products
- instruction manuals, videos, or documentation
- relevant marketing materials
- other helpful background information
Electrical and Mechanical
- diagrams or photos with labeled element or components
- list of substitutes or alternatives for each component or element
- alternate ranges for reagents and reaction conditions
- CAD files, cut sheets, or engineering or circuit diagrams (if available)
- process flows, preferably at two or more levels of abstraction
- any critical and novel low-level algorithm(s) you defined
- system architecture diagrams
- note: unless requested by a patent attorney, software code is generally not needed
- proof of a novel chemical’s synthesis – NMR, IR, and similar structural proof
- synthesis process, including reagents, equipment, and reaction conditions
- alternate ranges for reagents and reaction conditions
- copies of relevant lab notebook pages
- DNA sequence, if applicable
- CAD files, if available
- if the product incorporating the design is complete, photos from seven angles: front, back, top, bottom, left, right, and isometric
- if the design has movable parts or more than one configuration, photos or renderings of each configuration
Create a list of details
While a primary goal is to claim broad inventive concepts, including detail in the application is also important. The first reason this is important is a legal concept called “enablement.” For the USPTO to grant a patent the application must fully describe how to make and use the invention. Details are an important part of this test. The second reason is that it establishes a fallback positions for broad claims. While patent attorneys aim for broad claims, sometimes claims must be narrowed during examination until the UPSTO concedes there is a foundation for patentability. Details can therefore provide increased opportunities to “save” the application. Narrow claims can also be useful for getting a patent issued quickly. A continuation application can then be filed to press for broader claims.
When compiling details, think of how you would communicate with engineers or manufacturers about specific embodiments. For example, a mechanical invention might include details such as the exact angles of components, preferred gear ratios, or the shore hardness of a material. In chemistry, details often include precise temperature and pressure of reaction conditions. Software patent applications often describe the type of hardware the software will run on. In some cases, software applications may even recite blocks of code or pseudocode.
Compile the competitive context
Patents are commercial instruments by nature. What is occurring in the market is therefore crucial context for drafting the application.
Verify public disclosure dates
The right to obtain a patent is dependent on filing before a public disclosure of the technology creates a “bar date” (i.e., enters the public domain). The attorney will therefore need to know the date, if any, the invention, or any of the above materials describing it, was disclosed to the public. Because disclosure starts the one-year U.S. grace period (and completely bars patent rights from being filed in most foreign countries), the disclosure date may also impact how the invention is framed and claimed. For example, if software features or functionality was previous described in marketing materials at a high level, it may be beneficial to emphasize undisclosed functionality in the patent application or lower the level of claiming abstraction.
It is likely your patent attorney asked you about any public disclosures at the time of engagement. However, take time to double check your answer and if needed gather more detailed information. If a one year-anniversary of a disclosure is about to occur, call your patent attorney right away to discuss.
Prioritize your objectives
Finally, think carefully about your objective in filing a patent application. This is an often overlooked question, but the answer may strongly influence the application’s content and drafting style. Everyone understand that a granted patent is a limited monopoly with its value rooted in “excluding competitors.” However, many companies have objectives that take precedent over this default purpose. For example, a startup may care more about using a portfolio of patent applications to raise money and increase valuation. If you know your audience (e.g., non-technical angel investors), the patent attorney can help draft to communicate best for that audience.
I often tell my clients at the start of an engagement to list the following basic objectives for their application in order of preference:
- Excluding competitors, generally
- Raising capital
- Generating licensing revenue
- Increasing valuation for future acquisition
- Building prestige or capturing “mindspace”
- Selling off the patent application, or any resulting patents
- Documenting innovation
There may also be “advanced” objectives, usually considered by large enterprises or patent owners with extensive IP experience:
- Litigate against known or suspected infringers (offensive strategy)
- Attempt to patent improvements of competitor technology and/or create prior art to restrict the competitor’s continued IP development in their existing product lines (offensive strategy)
- Create prior art that prevents others from patenting similar ideas that could be used to stop you (defensive strategy)
- Counter-sue a competitor if faced with a patent infringement lawsuit (defensive strategy)
Once you have completed the above steps, speak to the attorney verbally about how best to convey the information (and which inventors and disclosure dates to include). Most attorneys request this submission one week ahead of the scheduled disclosure meeting. Thoughtful preparation means the inventive concept is likely to be found quickly and thoroughly, resulting in both a broad and deep patent application that maximizes the value of your IP.