Invention Disclosure – The Cornerstone in the Patenting Process

GIGO – Garbage In Garbage Out, is an aphorism famous in the field of computation. Even though stated in the extreme case, we understand the intent – the quality of the input data determines the quality of the output. It is clear that it is applicable not only to computing but also to all other fields, leaving aside the garbage recycling efforts where an attempt is made to create something useful out of garbage.

Humor apart, this aphorism applies to the field of patents too. A successful attempt at patenting may be simplified to the following steps: writing an invention disclosure > drafting a patent > examination > prosecution > decision to grant or not > patent grant. The final decision is strongly influenced by the quality of the invention disclosure (ID). Apart from that, the quality of the granted patent also depends on the quality of the ID.

Let us take a look at the reasons for this. When an inventor describes the invention in writing, errors are likely to creep in. This makes what the invention really is appear different in writing. When the person drafting the patent reads and understands it, the understanding is likely to be a little different from what is in the ID. That means, the understanding is farther away from the actual invention. So, when the person drafts the patent specifications the draft is likely to be a little farther from the actual invention. Like this, at every stage of writing, reading, imagining and so on, we can see that errors can creep in. This can be called translation errors.

In spite of the various checks, discussions, and reviews of the patent application before filing, errors are likely to remain. We get a false sense of security by all the checks and reviews. But, we must remember that there is a principle in the field of quality assurance or the assurance sciences that may be stated as, “You cannot inspect quality into a product”. From this stems ideas such as “Do it right first time”. That means, at every stage of the production process, quality must be built into the raw material or input components, the process and hence into the product.

Unlike bulk manufacture, however, patent drafting is a custom production and more amenable to inspection. In this case, reviews, proof reading, and so on. We can see that the input component in this process is the ID and it affects everything that comes after it.

So, we can take a look at what actions inventors can take to ensure that they create a good quality ID. Many of these are applicable to writing in general but modified to this context.

  1. Keep the reader in mind: Here the reader is someone who will draft the patent application and is not an expert in the field. The ID must be as easily understood by that person as possible.
  2. Read what you write once a paragraph is finished and make sure that it is understandable to the reader.
  3. Read the whole ID after a gap, an overnight gap for instance, so that you can see it from a fresh and different eyes.
  4. Make sure that the background art, the problem, the need for the invention, and the invention itself, are all in separate sections or paragraphs.
  5. Remember that a patent is granted to how something is achieved and not what is achieved. After talking about the results or effects of the invention, make sure that how to implement the invention is described clearly.
  6. If you are not a lone inventor but are a part of a team, get a team member to review the draft ID and refine it.
  7. Provide as many figures or pictures as possible. After all, it is said that a picture is worth a thousand words.
  8. Provide the person who will draft the patent background reading material to understand the invention.
  9. Finally, during the process of drafting the patent application cooperate with the person drafting it.

Even though this list is not exhaustive, you can see what it takes to make a good patent application.

Even we go to great lengths to get the invention right and do our best to draft a good application, it is a great help to have a clear ID.

Article by J L Anil Kumar, Senior Consultant, LexOrbis, 1st published in Lexology.