Tuesday, June 16, 2009

Part 2-Developing a Patent Strategy: Capturing Internal Intellectual Property

When asked to review the IP portfolio of a technology company, we generally find well-described inventions developed by the early scientists or company founders and a spattering of related in-licensed technology. Once the initial inventions are filed, the senior management's attention often turns to getting the research up and going and of course, raising capital.

As expected, the intellectual property within the company continues to grow as the researchers and engineers expand upon the initial invention and develop new products and methods. Recording this important new IP using invention disclosures, remains a bottleneck in most nonprofit or for profit organizations. I have listed a few important points to consider when capturing and documenting new internal IP. As always, this blog is not intended as legal advice, I strongly suggest that you consult with your attorney to discuss the disclosure of a new invention.

Consult with your patent counsel and review the relevant patent law.
In the United States, priority goes to the inventor who can demonstrate that they are the first to conceive and reduce an invention to practice. This law makes it critical that companies encourage inventors routinely document their inventions in an invention disclosures and in laboratory notebooks. The invention disclosures and notebooks will be important support in any challenge to the patent validity.

Emphasize the role of invention disclosures on continued company success.
In a perfect world, a company should establish an IP and patent policy early in its development and make recording new inventions part of the company culture. In the real world, we suggest that the company review its commercial goals with its scientists and engineers on a regular basis and emphasize their important role in finding and recording their new discoveries. "One of the things that I have observed is that scientists naturally think more in terms of publishing scientific papers rather than disclosing inventions with a commercial use", says Franco Serafini, partner at Themis Law. "I remember a meeting when I sat down with a group of scientists to help them draft a business plan about what the uses of their invention. Discussion of their scientific disclosure led to a set of claims on multiple new uses."

Provide an online access to a straightforward invention disclosure form.
Surprisingly (at least to me), we found a common barrier for scientists and engineers to record their inventions, is the disclosure form itself. Typical invention disclosure forms seem to be confusing and do not allow inventors to easily summarize the details of their invention. Often there is no opportunity to explain how the invention it relates to current and future company goals. The invention disclosure forms, whether downloaded from the internet or (preferably) received by your patent counsel, are simply guides. At a minimum, a complete invention disclosure should include:

1. A complete disclosure. The invention disclosure serves as the basis for future patent filings. It is important to remember that anything not included in the disclosure and the resulting patent application will not be included in a granted patent.
2. A clear and complete explanation of the discovery or invention. This includes a description of how to use the invention (especially important in chemical discoveries), the process of making the invention and any alternate uses. The disclosure should be in sufficient enough detail that a person in the same field could pick up the invention and use or make it. No legal ease is necessary, pictures are very helpful. When disclosing a new device, describe each part, explain how they work individually and how they work together.
3. Please define any new or unusual scientific terms or abbreviations.
4. Use your imagination and describe how else might the invention work? Are there less desirable, ways of making the invention work? Alternate uses?
5. Clarify how this invention is different from what has gone before. We know that it is "better", describe why is it better, or what makes it better. Go ahead, don't be modest, tell us everything.
6. A summary of how this invention solves a problem and/or compliments the current or future business or regulatory plans.
7. Prepare a list of all the individuals who were part of conceiving the disclosed invention. If there is one inventor, the sole inventor must have conceived the ideas in all aspects of the invention. You should list additional inventors if they conceived of at least one the idea detailed in the disclosure. The final determination will be made by the patent attorney when the patent claims are filed in the USPTO.
8. The written disclosure should be dated and typed or handwritten in ink. In addition to having the disclosure signed and dated by the inventor or inventors, two or more individuals capable of understanding the technology should review, sign, and date the written disclosure as witnesses.

Create an internal contact within the company to receive invention disclosures.
An individual designated to receive invention disclosures seems to streamline the process and help keep legal costs under control. Companies should implement an invention disclosure protocol where the documents are transferred as a confidential memo directly from the inventor to the company's legal department and then to their patent attorneys. The legal cost to receive and store the invention disclosures should be minimal.

Calender a quarterly email (or in person) reminder to inventors regarding filing invention disclosures.


Contact me, if you or your company needs a template invention disclosure form to record undisclosed intellectual property. Otherwise, good luck and happy disclosing.


Questions? Contact Debbie Robertson using Linked or by email.

Next Week: Developing a Patent Strategy: Choosing a patent counsel.
Previous blogs: Developing a Patent Strategy: Non-Disclosure Agreements

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