I recently received a call from a friend who expressed that his company is struggling with helping inventors identify a point of novelty for their ideas in their invention disclosure forms (IDFs), and as a result, it has been difficult to decide whether or not to move forward with their invention ideas.
As my friend is well aware, pursuing patent protection for a company’s inventions developed in the course of product development projects may deliver significant value back to the company. For example, a strong patent portfolio may protect investment in research and development, increase market and/or company value, secure market position, generate licensing revenue, and serve as a strong bargaining chip in cross-licensing negotiations. For these reasons, many companies task individuals, such as my friend, with supporting business and engineering units to harvest invention disclosures.
Often, companies use an IDF as a tool to identify inventions and to determine how or whether to proceed with each invention. For example, an IDF may set out important details about an invention, including a title, primary benefits or features, secondary benefits or features, alternative versions of the invention, etc. Because an IDF helps decision-makers determine whether an invention has necessary merit (e.g., to justify compensation awards or to pursue patent protection), it is important that an inventor paint a clear picture of the invention when submitting an IDF.
As pointed out by my friend, it is often difficult for patent review committees to identify a point of novelty in an IDF. For example, an inventor may obscure an invention’s primary feature by providing details regarding secondary features. As another example, an inventor may provide background regarding a state of art of the invention without clearly identifying that the background information does not relate to a patentable benefit or feature of the invention. In order to target the inventor’s description on the invention’s primary features, I advised my friend to consider providing simple and clear examples that inventors may use as a guide when completing their IDFs. Moreover, IDFs should very clearly ask inventors to delineate between an invention’s primary features, secondary features, background, and alternative versions. A well-completed IDF may allow patent review committees to make informed decisions regarding the merit of an invention and may serve as a basis for patent attorneys to draft a strong patent application for the invention.
As a given application is prosecuted with a patent office, outside counsel and in-house counsel work hand in hand to home in on an application’s point of novelty in light of prior art cited by the patent office. It goes without saying that throughout this process, in-house counsel prefer to work with outside counsel who will not only seek to obtain granted patents in a timely and cost-efficient manner but will also use their experience and expertise to add value for the company by obtaining meaningful and valuable patent protection for the company’s technological innovations.