Want to know more about patents?

  • Disclosing your invention to your patent attorney

    To draft a quality patent application efficiently and without misunderstanding, it is preferable to prepare an invention disclosure statement for your patent attorney.

    The invention disclosure statement should clearly state what the purpose of the invention is. An invention must be useful to be patentable. The concept of useful does not mean that the invention must be socially useful, but simply that the result promised in the patent specification can be achieved by following the instructions in the specification. Consequently, the patent attorney must know what the use of the invention is so that it can be properly drafted without inadvertently invalidating the application or granted patent.

    The invention disclosure statement should include a full description of your invention, including all of the essential parts and features. It should also describe how your invention works. By law, a patent specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. The specification must also disclose the best method known to the applicant of performing the invention. It is important to include these in the invention disclosure statement.

    Identify the features that you believe are unique to your invention. A requirement for a patentable invention is that it is novel, that is new, in light of what has gone before it including similar ideas that can be found in published documents. Consequently, your patent attorney will need to know what you believe to be new so that the right approach can be taken to drafting, and in particular drafting the patent claims which define the scope of the monopoly that you seek.

    It is desirable that the patent application include drawings of the invention. The drawings do not need to be perfect, but do need to clearly show how the invention works when described by the text of the patent specification. Formal drawings can be prepared by a draughtsman contracted by your patent attorney.

    Inform your patent attorney of any variants of your invention that could achieve the desired purpose. The patent attorney can consider these for inclusion in the patent specification. This will reduce the chance that a work around may be found for the patent by competitors, and help to support the full scope of the monopoly that you seek.

    The patent attorney also needs to know what problem or difficulty your invention overcomes. This information can be very important for the patent attorney to draft a patent application that strongly argues the inventiveness of your invention. It is also important that you tell your patent attorney of any existing or competing products and methods that you are aware of. The patent attorney will need to think carefully to differentiate your invention and prepare for any objections from a patent examiner who discovers these competing products and methods.

    If you have published or otherwise disclosed your invention to a member of the public then you may not be entitled to a valid patent. Seek advice.

    Finally, a patent application requires the listing of all inventors. Be ready to discuss the contributions by each inventor so that the patent attorney can form a view of their entitlement to be an inventor in light of his knowledge of patent law.