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Over ten years ago the United States patent office switched from first to invent, to first to file. This brings the US in alignment with most of the world yet many inventors globally still struggle with the best way to track new developments. The historic way to draft a patent application started with a document called an invention disclosure. At the end of their work inventors would collect their notebooks, and document all the points they thought novel, or non-obvious. This required the inventor to recognize a new technology while appreciating what the IP attorney needed. The shift from first to invent, to first to file has meant the process of documentation can also change. Below I have identified four common scenarios whereby using the IP Flow philosophy you can empower your team to shift their thought process from reactive to proactive.
Educate team members to ensure faster recognition of a novel invention
Many times I have sat down with a team for a basic introductory meeting only to have them realize they need to immediately complete an invention disclosure. This is almost always because the inventors didn’t appreciate the novelty of their work. The inventor most familiar with the intricacies of the technology is often the last to appreciate that they have come up with a non-obvious solution.
I can recall one time where the scientist had identified a novel gene and not written it up. I asked them why they hadn’t filed an invention disclosure. They said they didn’t think it was that novel and also referenced landmark Supreme court cases from 2012 and 2013. From this information it was evident that there were two things that needed attention. They were unaware of the current industry state of the art and they lacked information on more recent lower court cases that had created legal precedent. Scenarios like this are very easily resolved by including inventors in industry specific state of the art discussions on a quarterly basis, and relevant legal case review on a yearly basis.
Include inventors in industry specific state of the art discussions on a quarterly basis, and relevant legal case review on a yearly basis.
Prioritize patent applications before journal publications
Most scientists have started in an academic setting no matter if they have an associate's degree or a Ph.D. The majority of literature research training is focused on searching journal articles. Many scientists take from this that the only way to disclose their research to the scientific community is through this historic method of journal publication. According to the 2017 National Science Foundation Survey of Doctorate Recipients, the number of scientists with a Ph.D in industry is now almost equal to those in universities. In the industrial setting, scientists are trained to search patents over journal articles as many competing companies do not publish their work.
In one instance I had a scientist not only convey that they felt people weren’t seeing the patents but also that patents were antiquated relative to journal publications. In reality patents and journal articles take a similar amount of time to publish. From start to finish it can take roughly 6 months to 2 years to get a journal article or patent published. For the journal article, it is only after all the experiments are completed and organized in a presentable fashion that it is published. Patents on the other hand can be applied for much earlier in the proof-of-concept, experimentation stage. Historically this could mean that for patents, inventors experience earlier filing but later publication to the scientific community. What is often overlooked is that once the patent application is filed an executive team is more likely to discuss a lecture and/or journal publication strategy to the entire scientific community, and less likely to keep the technology as a trade secret. By using an invention disclosure, teams can quickly identify when it is time to patent. This also then initiates the potential for public disclosure through presentations and journal publications thus aligning scientific and business needs.
By using an invention disclosure, teams can quickly identify when it is time to patent. This also then initiates the potential for public disclosure through presentations and journal publications thus aligning scientific and business needs.
Make the invention disclosure a living document
The one statement I’ve heard most often is “I don’t think I have anything yet, I need more time.” This is in part because the inventor has difficulty appreciating the novelty of their work. It is also because early inventions are often poorly documented. With the previous format of first to invent all an inventor needed to do is show a judge their notebook co-signed with a date prior to their competitor and claim rights to the invention. The shift to first to file meant that inventors needed to recognize the novelty of their work even faster than before. In the IP Flow methodology, we introduce the invention disclosure as a worksheet instead of another document to fill out. By sharing these living documents with the legal team early, others are more likely to recognize a novel idea sooner. Additionally, by having inventors start the invention disclosure document at the beginning of their work, ensures they are then empowered and more likely to see and appreciate the non-obviousness faster.
...having inventors start the invention disclosure document at the beginning of their work, ensures they are then empowered and more likely to see and appreciate the non-obviousness faster.
Introduce your inventors to thinking like IP attorneys
I mentioned above that many scientists coming out of school are unfamiliar with the patent search and publication process. Additionally, law schools are often separate institutions from those that train scientists. As such, many scientists have not regularly interacted with attorneys, let alone specialized patent attorneys. In my experience, this has led to many awkward presentations by IP attorneys about what can and cannot be patented. While the intent to create best practices for inventors is genuine, attorney's presentations unfortunately often leave their audience confused. An alternative to legal counsel training inventors on IP is to instead ask inventors who have completed the process to train others, under the guidance of the legal team. This work not only empowers the scientist but also ensures that everyone is learning a common language to communicate in.
An alternative to legal counsel training inventors on IP is to instead ask inventors who have completed the process to train others, under the guidance of the legal team.
Final thoughts
Invention disclosures are an incredible tool that I repeatedly see forgotten by teams. If you found this article interesting and would like to try using the invention disclosure as a worksheet we have attached a document you can easily download. This article is a great introduction to preliminary changes that can be made to your IP process but for a more in-depth, company-specific dive please contact me at Jes@IPFlow.biz.