Wednesday, 20 January 2016

Creating an inventive ideas template: some practical guidance

Our guest posts by Donal O’Connell have proved to be a highly popular feature among readers of this weblog. One of his earlier contributions, "Trade Secrets: a round-up of key issues" (here), made our 2015 top ten list of most-read blogposts even though it was posted just a week before Christmas, and this year's first post -- "Where do IP-relate risks originate?" (here) -- looks as though it will be equally well-read.  

Donal, MD of Chawton Innovation Services Ltd, is a Consultant to Aistemos. Formerly a VP of R&D and a Director of IP at Nokia, he is an acknowledged IP strategist who was listed in the IAM 300 in 2013. 
If only! But a template
is a good place to start

Donal's latest contribution looks at what a business needs to do when it seems it has an inventive and possibly patentable invention on its hands. While inventive ideas differ radically in their content, their potential for commercial exploitation and in the parameters of legal protection that are open to them, it is good for a business to develop its own internal discipline for recording and evaluating them before taking any further steps.  That is effectively what this article is all about.  
Creating an inventive ideas template

What is an ideas template?

A template is a file that serves as a starting point for a new document. When one opens a template, it is pre-formatted in some way to guide the user.

One simple yet effective way to build a level of discipline into the invention capture process is to define a standard template for inventive ideas and insist it is taken into use. It is worth defining the inventive ideas template with carefully considered fields and guidance tips, which meet the needs of your invention capture process. This will help the inventor community understand what is expected of them. It also ensures inventive ideas are captured in a consistent manner.

If the idea is of potential value and is patentable, then the inventor should complete such an inventive ideas template. Completing the template should be considered as the first step in the patent creation process but it does not constitute the filing of the patent application. 

The template should be completed for each discovery or inventive idea that has some potential commercial value or represents a breakthrough in technology. 

Contents of an invention template

The template may consist of the following sections:
  • The title of the inventive idea
  • Inventors details
  • Additional contributors to the inventive idea
  • Is the inventive idea related to a specific project or program?
  • Technology area of the inventive idea
  • Does the inventive idea relate to a Standard?
  • A summary of the inventive idea
  • A more detailed description of the inventive idea, together with any figures or drawings
  • Description of all known, related prior art
  • Will the inventive idea be disclosed publicly?
  • Reference material
Inventive idea title

The title should be defined in one sentence and capture the essence of the inventive idea, although this may or may not be the same as the title of the subsequent patent application filed at the Patent Office.  This is important to note, as it can cause confusion later if they are not identical.

Inventor details

Inventor details need to be defined well.  This means their full given name, home address, telephone number, email address, nationality, employers name and address etcetera so they can for example be contacted when they are needed to sign papers.  The inventor's home address information informs the company where the inventor lived at the time the invention was made.  Such information may be needed to determine where the reward should be paid and which company division or unit should arrange the payment, due possibly to national taxation or legislative issues.  Having the inventor's home address information available may help when answering certain Patent Office requests and it may also help in determining whether the company needs a foreign filing license or deciding where to file first.

Inventive idea ownership

Who is the inventor? If multiple inventors are involved, then such information is also extremely important.  The rules on inventor ownership are quite clear and derive from the rules for patentability.  To be patentable, an idea must not only be novel, but must also involve an inventive step, which is an insight that is not obvious to someone possessing reasonable skill in the relevant technical area.  Anyone who contributes something novel and non-obvious must be named as an inventor on the patent application.  But someone who has not contributed in this way must not be so named.  If inventors are omitted from the application, or if non-inventors are included, any patent/s granted can subsequently be invalidated, so it is very important that this information is correct at the outset.

Where an invention arises in a group session, as a result of a brainstorm or other type of discussion, it is often the case that everyone present has genuinely contributed something.  However, it does not follow from this that everyone present is entitled to be named as an inventor, because not all contributions are novel and non-obvious to someone possessing reasonable skill in the relevant technical area.  If you have thought of something novel and genuinely inventive, and then refine and improve that idea by bouncing it off a number of other people, their contributions do not automatically make them inventors.  Only a person who is responsible for a genuinely novel and non-obvious contribution should be named as an inventor.  It is quite unusual for large groups of people to contribute inventively in this way to the same patent application.  Therefore, if you intend to name more than two people on an application, it is recommended that the inventor gets together with the other people in the group, to do an honest evaluation of what each person contributed, before proceeding.

Joint ownership of an inventive idea

Is the inventive idea based on a joint effort with another company or organization?  If the answer is yes, then it is important that the inventor specifies the other company involved, discloses any relevant agreement or contractual details they may have with this other company, and provides the necessary key contact details.

Project details

Does the inventive idea relate to a specific project?  If yes, then the inventor should identify the name of the project and provide further relevant and helpful details.

Technology area

The primary technology area of the inventive idea needs to be specified and classification systems exist to help guide the inventor here.  A Patent Classification is a code which provides a method for categorizing the invention. In the US Patent Classification (USPC) system, classifications are typically expressed as "482/1".  The first number, 482, represents the class of invention and the number following the slash is the subclass of invention within the class.  There are approximately 450 Classes of invention and 150,000 subclasses of invention in the USPC.

Classes and subclasses have titles which provide a short description of the class or subclass and they also have definitions which provide a more detailed explanation.  Many classes and subclasses have explicitly defined relationships to one another and patents are contained in the subclasses.  In a sense, classes also contain patents but for classification purposes patents are always classified at the subclass level.  Which means that one or more classification (i.e. class/subclass designations) is assigned to each granted patent and each published application.

A patent classification also represents a searchable collection of patents grouped together according to similarly claimed subject matter.  A classification is used both as a tool for finding patents (patentability searches) and for assisting in the assignment of patent applications to examiners, for examination purposes.  Classifications have definitions and hierarchical relationships to one another.

Standards-related

Is the inventive idea planned to be contributed to a “Interoperability Standard”?  If yes, then the inventor should give the name of the standard and the Standards Setting Organization (SSO) plus the date when it is planned that the invention is to be contributed.

Interoperability refers to the ability of diverse systems to work together or inter-operate, without any special effort on the part of the customer or end-user.  It is the ability of two or more networks, systems, devices, applications or components to exchange information between them and to use the information that has been exchanged.  Interoperability standards can help facilitate data integration and transmission.

Patents underpin open standardization and allow the disclosing and sharing of ideas openly and early.  Without patents, it is most likely that secrecy would prevail.  Patents allow technical specifications that can be promulgated consensually and early, thereby making the process inclusive, rather than exclusive. 

Invention summary

A short summary of the inventive idea should be requested in the invention report template and it is helpful to ask certain specific questions such as:

  • What problem is solved by the invention?
  • What are the existing solutions and what limitations do these solutions have?
  • What are the novelty features and the benefits of this invention?
Technical documents, figures and drawings should then be attached to explain the invention in more details.

Prior art

Is the inventor aware of the prior art, which is any evidence that your invention is already known? An existing product is the most obvious form of prior art but prior art does not necessarily need to exist physically or be commercially available.  It is enough that someone, somewhere, at some point in time has previously described, shown or made something that contains a use of technology that is very similar to your invention. 

Search engines on the internet are familiar to everyone browsing the world-wide-web and there are a variety of patent specific search engines available for use, with some being free of charge, which allow you to search through various patent databases.  These can prove extremely useful, for example, when conducting prior art searches.  There are also some patent search tools that are provided by national, regional and global Patent Offices, while others are actual commercial products on sale from specialist companies, usually with some extra ‘bells and whistles’ attached to give some additional value add to the user.  Patent search tools allow you to search through various databases looking through patent claims, using the complete text from an invention disclosure, or free form text.

There are tools for analyzing existing patent data and many people have begun to make increasing use of such patent information.  These tools provide search results and analysis of the patenting activities in an industry, technology or company to ascertain or forecast the direction of technical change and to pinpoint the relative technological position of a company in a particular marketplace.  Patent mapping systems are available to allow you to truly understand the existing patent landscape with many of the more advanced versions allowing the patent analysis results to be displayed by visual representation, using bar graphs, polygonal line graphs, pie charts, radar charts and other charts or graphs, which are typically called ‘Patent Maps’.  Such visualization is an especially effective way of representing the results of this type of patent analysis.  Patent mapping is also a technique that uses patent information to create a graphical or physical representation of the relevant art pertaining to a particular technology area.

Public disclosure

Is the inventive idea expected to be publicly disclosed in any way, and if so, when?  An inventive idea is considered public if it is disclosed in any way. An example could be a publication, university thesis, technical presentation, product user manual, service manual, inter-operability standards specification, a website or a submission to a technical seminar.

There may be a need to sanity check the exact date of intended publication at some seminars or conferences as items such as abstracts may be published before the actual event itself is held, and could act as prior art to the same invention.

There are however some exceptions which do allow disclosure prior to filing a patent application with the Patent Office.  Use of a non-disclosure agreement with an external party is included as an exception since the invention is not made public in this form.  For public disclosures two options can also be found, that is the use of simple "grace" periods, such as with the USPTO, or the more complex example of the EPO exhibition rule.  The local jurisdictions, rules and guidance should be carefully checked to see that you are fully compliant before endeavoring to make any such public disclosure.

Reference material

From the inventor’s perspective, the invention report is the first disclosure of the invention and should include a list of references which relate to that invention but no background references should be quoted in the report.  An Information Disclosure Statement (IDS) is essentially a list of any references that relate to the invention and the full reference must be stated including the author, publisher, ISBN, chapter and page numbers.  The number of pages quoted should be less than ten so as not to infringe any Copyright laws.  Typically, there should be between three and five references listed in the document.  If the inventor has not fulfilled their obligations under the IDS document, the Patent Attorney prosecuting the case will receive a Notification of missing parts and be given an opportunity to correct this.

Other things to consider

The items listed above are not exhaustive, and there may be other things to consider adding into your invention report template including
  • Product information
  • Agreement and contract information
  • Links to note books
Final thoughts

As stated previously, one simple yet effective way to build some discipline into the invention handling process is to define a standard template for inventive ideas generated by the inventor community.  I trust that this paper provides the reader with some ideas and insights on this subject matter.
You can contact Donal via Chawton here.

4 comments:

  1. "The number of pages quoted should be less than ten so as not to infringe any Copyright laws". I am not aware of any copyright law that has a defence or exception to copyright for quotations of less than 10 pages. Can Donal please elucidate?

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  2. @Copyright Buff

    I think the author isn't stating a proposition of law, but rather a matter of probabilities. On balance 10 pages or less is not so likely to stir the bile of an aggrieved copyright owner, so even if it infringes it isn't going to result in a lawsuit.

    Basically it's a matter of how to run your business without getting too bogged down by bureaucratic niceties. No?

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  3. The template idea is good. My problem in the past has been retro-identifying and finding data for ideas that didn't seem inventive or to have any legs till some time after we first had them.

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  4. At what stage does patent mapping become relevant? And does it slow the process? Anyone know?

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