From Idea to Grant 102/ How to disclose your inventions

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Ekrem Ayhan Çakay
21.12.2021

Engineering
From Idea to Grant 102/ How to disclose your inventions

Invention disclosure forms are technical documentation written by the inventors for patent attorney/specialist in order to research and draft the invention to be patented. By using Techin2B platform, all you need to do is creating a "workspace" and choosing the "portfolio management" for the proper invention disclosure process as can be seen in Figure 1.

Figure 1

All you need to do for any invention notification is to create an "IP asset" from the "worksapce" you created and select the "IDF" option. For the rest, the Techin2B platform will provide you with an "invention disclosure form" prepared by IP experts as viewed in Figure 2.

Figure 2

The headings of an invention disclosure form are explained in detail below.

1. Title of the invention

It is a title written using the distinctive technical feature of the invention. 

2. Definition of the problem 

This section should include related technical field, current situation in the related technical field, the motivation behind the invention to emerge. Especially, inventors should emphasize on the technical disadvantages or difficulties experienced in solving the problem. In addition, whether there is a widely accepted solution in the competition or not and whether the problem could be specific to the inventor itself or not are some important questions to answer.

The point to be noted is that no hints about the invention should be given. It might be confusing and misleading for patent attorneys to evaluate. 

3. References summarizing the prior art

This section should include main competitors in the specific of the related technical field for benchmarking. Similar patent applications should be listed by numbers. At least 2 documents related to same/similar technical problem should be listed and differences between the references and invention should be explained roughly.

4. Methods of solving the problem

This section should firstly include elements required for the operation of the invention in the form of a parts list by numbering. The invention should be explained in a technical feature-technical effect format. The technical effect and advantage of any technical element of the invention must be explained and if necessary, reference should be made to the drawings.

  • An explanation from the general to the specific is followed. First, a system-level explanation is given, then sub-systems and their details are given.
  • Both structural and functional definitions must be used when describing the invention.
  • Proportional expressions should be used for physical quantities such as length, temperature, time and mass, and the physical quantity should not be written in units unless necessary.
  • Equivalents of elements with the same function are also included.

5. What is obtained by solution of the problem

This section is based on the what technical advantages of the invention are and shortcomings of the prior art eleminated. They are briefly listed below.

  • Increase in product/method performance
  • Cost reduction
  • Ease of production
  • Alternative to competitor's patented application
  • Increasing the lifecycle of the product/method

6. Infringement detection method 

 It is explained how to identify competitors if they implement the invention. It is listed briefly below.

By visual benchmarking

It can be detected by direct visual comparison without the use of any tools.

By simple mechanics

It can be detected mechanically using simple tools (screwdriver, pliers, etc.) without harm.

By destructive way

It can be detected indirectly by causing partial damage to the product.

By working tests

It can only be detected when the product is operating.

Other

It can be detected in a way other than those described above.

Not possible

It cannot be detected.

 

7. Technical Drawings and Charts

A technical drawing for product inventions and a flow chart for method inventions should be given as can be seen in Figure 3. Instead of production documents covering the entire product that will enter the mass production process, schematic or perspective drawings in which only the minimum elements of the invention are visible should be preferred.

Figure 3

8. Current stage of the project and estimated molding/mass production time

The stage of the project, the scope of the project, and the mold-mass production estimation date are included. Especially, it should be chosen from the list below. Those can be converted into Technology Readiness Level(TRL) from 1 to 12 in numbers. In other words, idea/concept can be considered as TRL 1-2 and likewise industry interest/use can be considered as TRL 11-12. 

  • Idea/concept
  • Early stage
  • Proof of concept
  • Prototype
  • Industry interest/use

Common Mistakes in Invention Disclosure Forms:

  • Failure to provide terminology unity while describing the invention

Example 1: Giving different names to the same element (fastener, connector, screw, etc.)
Example 2: Not considering the generic implementation of a specific application (not writing a spot weld and not mentioning rivets and other alternative solutions such as screw or fastener)

  • Failure to determine whether detection of infringement of the invention is possible

Example: Developments that cannot be detected as a production technique or require machine code due to high algorithm characteristics.

  • Trying to explain the invention with the results to be achieved or technical effect

Example: A crisper container that allows to be opened by turning/ A crisper that ensures reaching the optimum temperature

  • Making a statement through a single application of the invention, not considering the options that prevent competitors

Example: Adding alternatives that will not enter mass production to the invention form by designing different variations of the rotating crisper

  • Describing the features that have aesthetic qualities without technical character.

Example: A surface with an arrow sign or a form that does not contain technical characters given to a plate, etc.

  • Ignoring the application of the invention to different products and fields, if any.

Example: Not considering that an invention suitable for use with a washing machine can also be adapted for a dryer or dishwasher.

For more information and study cases about how to fill invention disclosure forms, you can communciate with the TLS.IP professionals. 

References:

  • WIPO Invention Disclosure Forms
  • EPO Guidelines for Examination
  • Turkish Patent Office Patent/Utility Model Application Guidelines

 

#Technology Transfer #intellectual property #invention #patent #disclosure