Invention disclosure documents are the important first steps in the IP commercialization process. Not only do they represent the first recording of inventions, establishing the date and scope, but they have been used to defeat challenges to dates of invention, inventorship, invention scope, and prior art. If you improperly write your invention disclosure, it can result in a complete loss of your patent rights down the road. This highlights the importance of drafting an effective invention disclosure from the beginning.
Tips for Writing an Effective Invention Disclosure
A simple two-step process can help ensure your disclosure is effective:
- First, write a description that defines your invention in broad terms, leaving out any and all unnecessary options.
- Second, write another description that defines your invention with as much specificity and with every option you can think of.
Starting with these two versions will “bookend” your invention. You have described the very broad and generic version of your invention, as well as the highly specified version.
When writing your disclosure, describe how the various components are structured and how the various components interact and connect. It is necessary to describe the invention so that it is complete, but also so that it is different from the prior art. Are all features somehow connected? They should be physically or logically connected. Features added to give some context, for example, describing the environment in which the invention operates, should not be included in the final query. The necessary details are the elements of the invention, how they connect, what relationships and properties are created, and what function the system provides.
- Analyze the ID to see if it expresses several distinct inventions. If so, you may consider dividing it into two or more separate disclosures. They can be later combined to search for patents that have anticipated the higher-level system invention.
- As a matter of common practice: “Comprising” is followed by an open list that may also comprise additional elements that are not listed in the claim. “consisting of” is followed by a closed list. No other elements are present in the invention – typically resulting in a very narrow scope.
- Avoid inconsistent terminology: always use the same word for the same concept in your disclosure. For example, do not use “car” and “automobile” in your application to mean the exact same concept.
- Try to avoid discussing context, results and application use cases. These add searchable language that is not directly descriptive of the invention. Result-oriented language is typically objected to as unclear.
- Too little detail: Don’t leave anything out of the invention disclosure that is necessary to work the invention and necessary to distinguish the claim from the prior art.
- Too much detail: try to leave out any feature that is not necessary to work the invention and distinguish the invention disclosure from the prior art.
Perhaps the best way to go about writing a disclosure is to just start writing. Then, as you need to, add elements to the invention to define more specific versions. As you go, make sure the parts being added have been introduced properly and result in a description that is complete and best describes what you have pictured.