Invention Disclosure Forms (Memos of Invention)

There are definitely pros and cons to having an inventor complete an invention disclosure form. One side of the coin is that such forms can serve to establish the date of conception and reduction to practice, both of which can be difficult to prove during trial if the patent is ever litigated. Invention disclosure forms are also useful tools for employers, helping to reduce the likelihood that an employee will invent something at work, leave the company, and then later claim that the invention was made after they left the company.

The flip side of the coin is that invention disclosure forms can be used by opposing counsel against the inventor at trial, as evidence that the inventor conceived of less than that claimed in the issued patent. Basically, the problem is that inventors tend to be sloppy in their descriptions, and tend to state things in disclosure statements in an unnecessarily limiting manner. Among other things, inventors tend to use language that confuses the preferred embodiments with the "invention".

One of the worst propensities of inventors in drafting their own applications is that they tend to pepper their writings with the word "invention". The problem is that they almost always use the term to describe their preferred embodiments. The preferred embodiments are never the invention. They are merely examples of the invention. The invention is "whatever can be claimed by the inventor and allowed by the patent office". As such, the invention is always much broader than the preferred embodiments. Misuse of the term by the inventor introduces completely unnecessary ambiguity as to what is intended to comprise the "invention".

I usually explain this to non-attorneys by referencing criminal law. There, the term "innocent" means that the government was unable to prove its case against the defendant. A person who is properly found innocent from a legal perspective may well have perpetrated the crime for which he was accused. But when most people use the term, they wrongly infer that the court determined the defendant's actions to have been proper. Until a speaker understands those distinctions, he should avoid using the term.

Inventors also need to avoid unalloyed use of the word "is". For most purposes the word is much too definitive, and needs to be employed with softening terms such as "preferably" or "advantageously". For example, inventors often write that a component is made of a particular material. But when challenged, an inventor will almost always allow that the component could be made of any number of other materials. What an inventor should say is that the component is preferably made from a particular material, or that the component "can" be made of a particular material.

Inventors also get themselves in trouble using the term "consists of". In patent law the term "consists of" is another term of art, and is usually interpreted as meaning that the only components in the item being described are the listed components. Thus, if an inventor states that a radio consists of a receiver, an amplifier, and a speaker, he can be held to the interpretation that the radio contains no housing, display, dials, or battery. More properly, the inventor should say that the radio "includes" or "comprises" a receiver, an amplifier, and a speaker.

Still another problem is that inventors typically fail to list all the various options that they have conceptualized. Attorneys can make considerable hay from that failure at trial, arguing that a patent claim is invalid because it claims a scope greater than that appreciated by the inventor at the time of filing. A subset of this problem is that inventors often fail to list choices that they think are sub-optimal. A new type of serration for a knife might only be described with respect to steel or other metal containing knives. But if the concept can advantageously be applied to plastic knives, then the attorney should include a reference to plastic knives. In the chemical world, this problem often manifests by inventors failing to disclose compounds that they have conceptualized, but are possible to synthesize only with great difficulty. Such embodiments should still be described.

If a disclosure form is needed, I recommend using something along the lines of that set forth at Appendix D. One significant feature of this particular form is that it is directed to the "preferred embodiments" rather than to "the invention". That language at least arguably reduces the damage done by sloppy wording on the part of the inventor in completing the form. Another significant feature is that the form uses the indefinite format, "at least as early as..." when defining the dates of conception and reduction to practice. Yet another significant feature is that the recommended form includes a signature line for a witness. An un-witnessed form is potentially much less useful than a witnessed form. Note that the witness needs to be someone who understands the technology; otherwise the witness is of limited value later on in testifying that all the material on the form was there when he/she signed it.

When completing an invention disclosure form the inventor should be sure to "sell" the invention, rather than blandly identifying the invention. How will a patent protect a marketplace from encroachment from competitors? Why is this invention likely to make money for the company? Calculations are very helpful along those lines, demonstrating for example that use of the invention would save the company a million dollars a year in energy costs. The disclosure should also identify relevant prior art, and explain why the invention is not merely an obvious variant of the prior art. Finally, the invention disclosure form should be written in bare technical and financial terms. It should avoid legalese, and should certainly avoid statements of opinion.