How do I describe my invention to an IP attorney?

In a typical patent application process, the inventor would write up their invention in what is often called an "Invention Disclosure Form" (IDF). Many patent attorneys will provide a template for this. The purpose of this special format is to guide the inventor through the thought process of some of the key pieces of information that the attorney will need in order to conduct an effective prior art search and do "claim construction" to help the inventor develop either a provisional patent or a real utility patent. 

  • Inventor names and contact information: Who contributed to a material degree to the invention? For example, a web developer who created a landing page for a drug that cures cancer should not be listed as a co-inventor for that drug.
  • Summary description of the invention: What does it do? How does it do it? What is special about this way of solving this problem?
  • Description containing details of the invention: Here is where you spare no words and diagrams in describing the invention in all its glory. The reason is that any claims that you will develop will need to be fully supported by the description section. Write it as a good detailed technical document. Don't worry about writing legal language into the description - your attorney can help you do that afterwards.  
  • Prior art: What things are out there that are related to your invention? Do the best job you can figuring out what's already out there. 
  • What's special about your invention: Given this prior art why is your invention "novel, useful and non-obvious" (these are the terms that the US Patent Office uses to describe what constitutes a new invention that deserves a patent)
  • ... etc

Following are a few examples of Invention Disclosure Forms that are available for free on the web. Disclaimer: Trust Center does not have relationships with any of these law firms, nor do we endorse any one law firm. These examples are provided for illustrative purposes only.

http://www.bpmlegal.com/pdisfm.html 

http://www.westpatentlaw.com/InventionRecordForm.pdf

https://www.neustel.com/invention-disclosure-form/

An additional IDF from an additional law firm is attached as a word file to this article.

 

 

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