Imagine That IP Law Blog

One of the main advantages of hiring outside patent counsel is the ability to pass invention materials to a drafting attorney to prepare a patent application. This work transfer reduces the in-house counsel’s burden, freeing them to devote more of their time to strategic portfolio management rather than the minutiae of preparing an individual application.

Too frequently, however, the invention materials provided to outside counsel are incomplete. The understanding is that the drafting attorney will be able to use their engineering acumen to sort through the pieces, determine what is missing, and gather further information from the inventors in order to prepare a complete patent application.

While this understanding is correct, it’s what outside patent counsel is trained to do, the danger to cost and quality is real. Instead, a more strategic approach to assembling the invention disclosure materials can pay real dividends in reducing cost and improving patent quality.

UNDERSTANDING THE ISSUE
Legal departments typically collect invention information from inventors using a form (an invention disclosure form, or “IDF”) that asks the inventors to describe the invention. In other cases, invention information comes from inventors in the form of slide presentations, pre-print drafts of scholarly journal articles, or other materials originally intended for non-patent purposes. Often, this material was prepared for a highly specific audience, and it lacks much if any background or context. This information generally is passed directly to outside counsel without any editing by the in-house team.

After receiving the IDF or other material, the drafting attorney first performs a detailed review of the material and conducts any needed background research to prepare for an initial discussion with the inventors. Any increase in the time that the drafting attorney needs to spend coming up to speed on the invention at this stage translates directly into an increase in the cost of the patent application. The problem is worse on a fixed-fee or strict budget, since this time eats directly into the time available for actually preparing the application.

After review, the drafting attorney usually conducts an inventor interview to refine their understanding of the invention. If the drafting attorney’s initial understanding of the invention is inaccurate due to a low-quality or incomplete IDF, the inventor interview will be longer and less organized. In many such cases, the inventors will need to develop and provide further deliverables to the drafting attorney. This likewise directly translates into an increase in the cost of the patent application, as well as introducing delays. It also decreases the inventor team’s efficiency and engagement, and takes them away from their primary engineering tasks.

After the initial conversation with the inventors, the drafting attorney prepares a first draft of the application for further discussion. How much time the drafting attorney spends preparing this draft and how many subsequent drafts are needed is directly impacted by the quality of the IDF and the initial interview. This compounds the effect of any earlier IDF-related delays.

ATTACKING THE ISSUE
The most effective way to prevent time and budget being wasted on avoidable issues is to train your inventors provide complete information in an intelligently crafted IDF.

Every IDF, even a bad IDF, asks the inventors to “describe the invention”. A better IDF will break this question down in a way which prompts inventors to provide more complete and usable information, and which motivates and draws the inventors into the process. This reduces misunderstandings, guesswork, delays, and unnecessary expenditure. With properly trained inventors, the following IDF features can make the process more effective and efficient for all of the parties involved.

PROBLEM STATEMENT
A better IDF will ask inventors to explain the problem or problems which led to the invention, rather than beginning by asking the inventors what their invention is. This stops the inventor from simply dropping a stream-of-conscious description of their invention into the form and calling it a day.

The “problem and solution” approach is easy for inventors to understand and encourages them to tell the story of their invention, leading them to provide complete information in an understandable format. Engineers are often accustomed to thinking and communicating in this way, and this approach engages the inventors, giving them an opportunity to “show their stuff” and dig into the IDF in a way that is interesting to them.

At this stage, we also ask inventors to include a degree of detail and context that would enable a bright engineering student to understand the invention. This standard of description is reinforced throughout the IDF. Ensuring that the IDF includes this level of context is important because inventors operating on the “bleeding edge” of their field often do not think to include basic background information that is necessary to understand the invention.

Identifying the audience as a hypothetical engineering student appeals to the inventor’s teaching instinct, investing them in the process in a way that they can relate to. Most of our inventors were bright engineering students at some point and readily grasp this standard.

“NUTSHELL” SUMMARY
Immediately after the inventors have identified the problem they were attempting to solve, we ask them to describe the invention “in a nutshell” using 4 or 5 sentences or bullet points. This important section is a framework which guides the inventor in preparing later sections of the IDF, and helps the drafting attorney to identify the most fundamental aspects of the invention.

DIAGRAMS
Before moving on to a more detailed description, the inventor is expressly asked to provide two diagrams that illustrate the invention. It may seem obvious that an inventor would want to provide a diagram, but a surprising number of inventors omit them.

The inventors should include at least one illustration of the invention itself, which highlights the new or inventive aspects. This diagram should show how the invention fits into the outside world. In this case, a picture really is “worth a thousand words” and is almost certainly worth a thousand dollars in extra drafts and phone calls with the drafting attorney.

Inventors also should include at least a second diagram which illustrates how the invention shown in the first diagram operates, preferably in a simple flow chart. Whereas the first diagram shows what the invention is, the second diagram shows how it works, or how to make it. In cases where the invention is in the process, then the previous diagram illustrates where the process is performed.

Very few IDFs ask for, and very few inventors volunteer, this second, specific figure, but this picture is probably worth two thousand words.

INVENTION DETAILS
Only after the stage is set by the earlier sections is the inventor finally asked for an open-ended description of their invention. This description should correspond to the nutshell summary, explain how it solves the problems in the problem statement, and refer to the two diagrams.

Because the inventors have already been encouraged to do a thoughtful job on the earlier sections, this critical and detailed section is made much easier, and almost writes itself. Here the inventors also should expand any acronyms and define any terms of art they are using. This is another easy way to save time and trouble during the inventor calls and drafting.

FORMALITIES AND HOUSEKEEPING
Small details matter, and can often cost thousands if forgotten early on. Apart from capturing the invention, the IDF should completely record other kinds of information that the inventors are in the best position to know. While inventors may be tempted to consider these sections as less important and ignore them, doing so has a direct impact on cost and quality.

Some things, such as a suggested title and order of inventor names, are important – not necessarily from a legal perspective, but because inventors are often keenly interested in whose name will index the patent, and what they would like the title to be. Handling these issues up front reduces unproductive rounds of emails and calls.

Other housekeeping information is more critical from a legal perspective. If, for example, the inventors fail to provide their citizenship and residence information, one or more rounds of clarifying emails may be needed to determine whether foreign filing licenses are needed. This is an issue that needs to be addressed early on in the process to avoid legal trouble and delay.

Many other items can and should be covered in the IDF. The bottom line is that the IDF (and IDF training) should be organized to encourage the inventors to thoughtfully and completely provide all of the requested information in order to promote efficiency and reduce costs.

CONCLUSION
Setting up a framework to promote efficient communication between outside counsel and your inventor teams is a key way to control costs and encourage quality patent applications. Working with outside counsel to develop a robust IDF and train your inventors to use it is a modest investment that can provide significant returns to all parties involved.

Reprinted with permission from the August 27, 2020 issue of The Legal Intelligencer ©2020 ALM Media Properties, LLC. Further duplication without permission is prohibited. All rights reserved.