Business Law Patent Law


If you are involved in a business that routinely introduces new products to the marketplace, or a business that exists due to a recently developed new product such as a startup business, you should consider protecting the new product or products with a patent.  A good practice in considering whether a new product should be protected by a patent is preparing an invention disclosure for the new product.  An invention disclosure can be used by a business in evaluating the commercialization of a new product.  An invention disclosure can also be used as a written record of the conception date for a new product and a history of the development of the new product.  Invention disclosures can also be used by a patent attorney in conducting patentability research of the new product and in preparing a patent application for the new product.  Many businesses use a standardized invention disclosure to record the development of a new product that may eventually be protected by a patent.


A typical invention disclosure includes a title of the new product or invention.  The title should be brief.  Anyone that reads the title should be apprised of the type of product the invention disclosure pertains to.



All of the individuals that contributed to the development of the new product should be identified in the invention disclosure as potential inventors.  The full legal names of the inventor(s) should be provided.  Additionally, the residence address and citizenship of each inventor(s) should be provided.  This information will be used in preparing an Application Data Sheet, should the invention disclosure eventually lead to a patent application.



It is good practice to include a short history of the development of the invention in the invention disclosure.  The inventor(s) should, to the best of their recollection provide a date when the invention was first conceived of.  The inventor(s) should also provide a description or explanation of any events that took place that led to the conception of the invention.  A history of the development of the invention, from its conception date to its current form should also be provided.



The most important part of the invention disclosure is the description of the invention in its current form.  In preparing the description of the invention, the more information provided, the better.  The description of the invention should include a description of what are considered to be the novel features of the invention.  The description of the invention should also include a description of how the invention is constructed, how the invention is used, and what makes the invention better than what was known before (prior knowledge or prior art).  One or more drawing views of the invention, or photographs of a prototype of the invention if available should be made a part of this portion of the invention disclosure.  Terms of art, or technical terms in the field of the invention should be used in the description of the invention.  However, lay person terms should also be used in the description and in explaining the meaning of the terms of art.  A description of the invention should be sufficient to enable a person of ordinary skill in the technology to which the invention pertains to make and use the invention.



If there has been any public disclosure of the invention without a confidentiality agreement in place, it is important that the date of the public disclosure be identified in the invention disclosure.  The public disclosure could be in a publication that describes the invention, or an oral disclosure of the invention to a party that is under no obligation to keep the disclosure confidential.  Any date that the invention was offered for sale or sold should also be identified in the invention disclosure.

A well written and comprehensive invention disclosure is the first step in a business assessing the marketability of an invention and the possibility of obtaining patent protection for the invention.  Click here for an Invention Disclosure form that I provide to clients.

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