If you’ve read my post about patenting in academia and industry then you know why you might want to file a patent with your university or company. The first step to filing a patent in most organizations (after creating the invention of course!) is filling out an Invention Disclosure Form or IDF. These forms will be created, provided by, and reviewed by your organization’s technology transfer office or center for technology licensing. While IDFs tend to differ between organizations they are all intended as a way for the inventor to communicate to the organization how a new invention works and why it is worth patenting. If the result of the organization’s review is that the invention should be patented then in-person meetings with patent attorneys will be arranged to discuss in more detail.
This post is written as a guide for those of you who might be filling out your first IDF. This may also be helpful to any of you who are creating the first standard disclosure form for your organization. I’ll describe some common questions in IDFs and strategies for answering these questions well. As I say in my previous post, I am not a patent attorney so please don’t take any of what I say here as legal advice!
Who are the inventors?
In some cases the answer to this question will be very straightforward. Perhaps you were the only person on the project in which you created the invention and you never discussed the invention with others. Most of the time, however, people collaborate. If your invention was made in a project with other people then the determination of who may or may not be considered an inventor is a matter of discussion.
While authorship on papers is generally given to people who have made important contributions when building prototypes, performing testing, and writing text for the paper, inventorship is legally different. Patent law defines an inventor of a patentable invention as someone who conceives of an original, useful, and non-obvious idea. This can but does not necessarily include students, professors, your boss, your employees, and other collaborators. Use your best judgement and ask all collaborators who you believe may have contributed to the idea considered in the invention disclosure. Only after everyone agrees will the inventor list be settled. Keep in mind that who gets to claim inventorship should not be based on charity, flattery, or spite. Patents can and have been invalidated for an incorrect list of inventors. For more information about this topic, see this helpful PDF provided by Stanford’s Office of Technology Licensing.
What problem does the invention solve?
For an invention to be useful and therefore worthy of patent protection, it must solve some problem that exists in the world. If you are used to writing research papers, you can think of this like the motivation section in a paper. Because the patent lawyers and other people reviewing this IDF won’t necessarily be experts in your field make sure to include any scientific or technical background that might be needed to understand why the invention is useful and how it may work. This is similar to the background section in a paper.
What prior art are you aware of?
“Prior art” simply refers to any patents, papers, documentation, or other published information that you are aware of which is related to your invention. This is similar to the related work section in a research paper. If there is a very large body of work in your field then try to focus on citing survey papers for the general background and then limit your more specific citations to work which is closely related. Also, do your best to list any other groups, researchers, or companies who work in your area as it will help the attorneys in their further prior art search.
What competitors are you aware of?
Here you list any competing products or inventions that you’re aware of. Stress the flaws or drawbacks of each of your competitors so that you can more easily demonstrate your advantage. If there aren’t yet any true solutions to the problem that your invention solves then list any workarounds that you might be aware of.
What are the unique features of the invention?
Here you describe your invention’s competitive advantage and which specific elements of your invention are novel. You can think about this like the contributions section in a paper. Try to focus both on why you are different from the competition and why this difference results in a superior product or method. Use your best sales skills!
How does the invention work?
This is often the most complex section of the IDF. Use pictures and visual aids whenever possible. You could also consider including a glossary with definitions of the jargon used throughout the IDF. Keep in mind that the readers may not be as familiar with your subject area as you are. Technology offices try to match inventions as closely to experts as possible, but some disciplines can be very broad and others very specialized.
Are there any alternative versions of the invention?
In engineering we often need to make design decisions to optimize the performance of our design or simplify the design process. Your final prototype represents only one possible choice for each design decision. To prevent someone from designing around your patent by making an insignificantly different choice in their design, your patent attorney will try to make the claims of your patent as general as possible. You can help your attorney by describing not just the specifics of your tested prototype, but also the entire possible design space. This can include variations that you haven’t tested, or even variations that you have tested and have determined to be inferior to your final prototype.
How could the invention be used?
Here you lay out all possible use cases for your invention. Ease of use is important in evaluating the value of a potential patent. Overly onerous inventions may not be worth the benefit they provide. If possible, provide examples of other products or inventions with similar use cases. In a similar spirit to listing alternative versions of your invention, get creative and try to think of alternative uses for your invention as well. Alternative uses for your work may make it more valuable and enable broader claims.
How can the use of this invention be detected?
As I discuss in my post on patenting in academia and industry, part of a patent’s value is how easy it is to detect when the invention is being used without permission. Without the ability to detect the use of the invention, the patent can’t be enforced and is therefore useless. Your patent attorney may be more familiar with common methods for detecting use in your field since this isn’t a common thought for researchers, but list whatever methods you are aware of.
Who might want to purchase or license the potential patent?
This question is most relevant in academia where the assumption is not that the patent will be used directly by your organization. Universities don’t make products, and so a patent only has value if there is a demand for it! To answer this question list any people or organizations who might be interested in buying or licensing the potential patent from your organization. This can include the most prominent companies in your field as well as any any startups you may be aware of. Some technology offices may even begin marketing your idea before deciding to patent your invention as a way of determining demand, so give them as much help as you can.
If you are in a university and hope to launch a company using this patent, be extremely up front about your goals. You may even want to contact the technology licencing office before submitting an IDF to explain your intentions. Without knowing your goals the technology licencing office may sell the patent to an outside party without ever consulting you. Even simply marketing your invention before it has been patented may prevent you from creating a stealth mode startup. Make sure to communicate often and effectively with your university’s office to avoid such an issue. Your business plan may be a part of convincing the office to license to you instead of a large company, so prepare your business plan as early as possible.
After answering these 10 questions you will have successfully filled out your first IDF. Congratulations! As you can see, a great deal of the questions asked in an IDF are similar to material that you may have already prepared for a technical report or research publication. Feel free to directly copy and paste from previous writing that you’ve done, and attach the original document to your IDF for ease of reading. With any luck your organization will be interested in filing a patent on your invention. May lots of patent filing bonuses or licencing revenue flow your way!