“Using Excel, Jira or Salesforce for IP Management is like using a handkerchief in place of a specially designed protective mask to keep the virus away”
Many small to medium-sized enterprises who are just beginning to set up a systematic process for capturing innovation and tracking them through a complete IP life cycle often fall for make-do arrangements like:
Excel spreadsheets – Just because it’s versatile, you can arrange the data in tabular format and employees are familiar with its basic functionality
Jira – Just because it offers features like workflows, dashboards, reports and the enterprise already has some company process implemented using Jira
Salesforce – same reason as Jira
What you need is not a generic tool but a specific one…
A tool that’s affordable and tailored to assist enterprises with the patent mining process. The good news is such a tool exists. Before you explore the recommended Jira alternative for IP management let’s understand why do you need to switch.
Jira is surely customizable and may be configured to suit the specific needs of any enterprise, including marketing, finance, HR, and legal. It also has all of the features of workflows, dashboards, and reports. These features offered by Jira may be adopted or customized to aid the tracking of innovative ideas within an enterprise.
However, when it comes to IP management, beyond innovation capture, Jira does not cater to IP specific needs as listed below:
No intuitive intelligence for managing IP
No automatic syncing with the USPTO
Too expensive for startups
Too complex to use
No Intuitive Intelligence for Managing IP
Being a generic software that can cater to multiple business processes, Jira has no intuitive intelligence for patent management. For example, Jira cannot predict the likelihood of getting a patent, or an estimated time to get the patent granted.
No Automatic Syncing with the USPTO
Jira does not integrate with the USPTO’s Patent Application Information Retrieval (PAIR) system, to enable you to view the status of your patent applications in real-time.
Too Expensive for StartUps
Jira may be expensive for a startup or other small or medium-sized enterprise. With Jira’s pricing model, a startup may incur significant monthly or annual costs. Also, a startup may have to recruit a developer to assist with the setup, customization, and management of the software.
Too Complex to Use
According to Hubstaff, Jira’s complexity is the most common complaint amongst its users.
Salesforce for IP Management | Shortcomings
Salesforce is a customer relationship management (CRM) software at its core. However, an advantage of Salesforce is that it can be customized for different internal needs of an enterprise. The ease of customization makes it a flexible tool that may be adopted for IP management.
However, similar to Jira, Salesforce was not designed to assist enterprises with IP management, therefore the suitability of its features may not be compared with a tool specifically designed for IP management.
Expensive to Customize
Customizing the tool to suit an enterprise’s needs takes tens to thousands of hours and comes at an additional cost. In addition, the purchase of a Salesforce license comes at a very heavy cost. With its per-user pricing model, Salesforce may be more suited to larger enterprises that rely on the software daily for the management of current and prospective customers. It may not be suitable for a startup, a small or medium-sized enterprise desiring to manage IP.
No Integration with the USPTO PAIR
Like Jira, Salesforce also does not integrate with the USPTO’s Patent Application Information Retrieval (PAIR) system, to keep track of patent application updates like issuance of office actions.
The TIP Tool – Best Salesforce, Jira Alternative
The TIP tool is an intuitive drag-and-drop tool to simplify the IP management process. It assists enterprises to convert their best ideas into patents, by enabling them to capture innovative ideas, vet the idea for patent registration, facilitate the secure exchange of patent drafts with patent prosecutors, and manage a patent portfolio. It is an excellent Salesforce and Jira alternative for IP management.
The TIP tool comes with a variety of useful features and functionalities. To name a special few:
Patent Analytics for Informed IP Decisions
The TIP tool comes with patent analytics that assists enterprises in managing their IP budget wisely. With the TIP tool you can easily figure out:
Likelihood, associated costs, and expected time of getting a patent
What can work with an examiner to progress the patent application towards grant
How is your patent application faring at the USPTO
Such insights come really handy in crafting your patent strategy.
The TIP tool also permits team collaboration on ideas in real-time. For example, when an inventor and attorney are discussing the patentability of an idea, the TIP tool allows them to edit the same piece of text within the software with their thoughts and inputs, in real-time.
Intuitive Invention Disclosure Form
Long and complex invention disclosure forms discourage inventors from submitting inventions for patent protection. The TIP tool offers an intuitive invention disclosure form that increases engagement from innovators. In fact, you can also customize the TIP tool’s idea capture form to suit your enterprise’s internal needs.
Role-Based Access
Furthermore, with the TIP tool, an enterprise may keep certain strategic patent portfolio data confidential, by using the role-based access feature in the software. Therefore, an innovator who is also an employee within the enterprise may be restricted from accessing ideas developed by other innovators in the enterprise.
Presented below is a table that gives you a fair idea of the benefits that come with the TIP tool – a preferred JIRA alternative.
Jira v. Salesforce v. The TIP Tool
Functionality
Jira
Salesforce
The TIP Tool
Provides an intuitive invention disclosure form
Can be implemented
Can be implemented
Yes
Tells you the likelihood of getting a patent
No
No
Yes
Predicts the end-to-end patent costs
No
No
Yes
Helps you track ideas through a complete IP lifecycle
Can be partially implemented, with no automatic updates from the USPTO
Can be partially implemented, with no automatic updates from the USPTO
Yes
Automatically stays in sync with the USPTO
No
No
Yes
Provides specific details on patent status
No
No
Yes
Tells you how your application is doing at the USPTO
At Triangle IP, we very well understand the needs and constraints of small to medium-sized enterprises for managing IP. The TIP tool is an intuitive drag and drop tool specially designed to aid intellectual property management, from idea capture to portfolio management. It is a must-try Jira alternative for IP management. Happy to share that we recently released the TIP Tool version 2.0 – Would you like to be an early adopter? Join us, try out the tool, share your valuable feedback with us!
Your IDF (Invention Disclosure Form) needs to be as detailed as needed by your organization.
“If the form is too long, your innovators might disengage from the disclosure process. And, if the form is too short, you might not get enough information to evaluate the innovations”
But there is no one-size-fits-all solution either. Some innovators, such as people in academic or research settings, might be comfortable with longer disclosure forms since they can copy-and-paste information from their academic articles. Other innovators, such as those in private industry, might balk at anything longer than one page due to their busy workloads.
To get the right level of detail from your innovators, you need to balance the competing interests of your developers, your business, and your patent counsel. Here are some factors to consider in creating your invention disclosure form.
Details Matter More Than You Think
Your goal in creating an invention disclosure form is to capture everything your innovators have created. This obviously includes the IP embodied in your products. But it also includes the other inventions, variations, and embodiments that were set to the side.
For an invention disclosure form to have value in patent mining, you need maximum engagement with your disclosure process. This favors an invention disclosure form that requires inventors to provide a minimal level of detail. Such a form will be less time-consuming and less burdensome to your inventors.
On the other hand, the details of the invention will help your management and your patent counsel do their jobs. Without the details about the invention’s marketable and patentable features, your invention disclosures will not provide the necessary information to evaluate whether to patent the invention.
Various Options for Invention Disclosure Forms
Taking these considerations into account, an organization can customize an invention disclosure form to their own needs. These needs could include:
The volume of invention disclosures
The personalities of the innovators
Whether patent counsel is in-house or at an outside firm
The experience level of the innovators with the patent process
The experience level of management with the patent process
These needs can be designed to develop an invention disclosure form that performs all the functions described above and meets the needs of the organization. Generally, invention disclosure forms fall into three general categories based on the level of detail requested from the inventors. Choosing a form may be an iterative process with developers providing feedback on what works and what does not work.
Short Invention Disclosure Forms
A short invention disclosure form collects the bare minimum of details from the inventors. One example is provided by Triangle IP. In the default form template provided in the Triangle IP management system, the form has mandatory fields for the title of the invention and the inventor emails and an optional field for a summary of the invention. It also includes fields for use by management, including an idea number, a manager’s email, and scores for evaluating the submission.
This short form will produce maximum engagement from your organization’s innovators. By providing a simple form, the innovators will only need a few minutes out of their busy schedules to prepare and submit the form. If additional details are required later, your management or patent counsel can speak to the inventors.
Short Form As Designed at Triangle IP
Here is how the idea capture form at Triangle IP looks like:
This form includes fields for an internal tracking number, which we informally call an Idea Number. The inventors choose a title that provides a shorthand for stakeholders to refer to the invention. The title should be detailed enough to summarize the purpose of the invention disclosure.
Quick Update: The inventors can upload this offline form back into the TIP Tool to have all their ideas in one place.
The inventors and the manager(s) responsible for reviewing the invention submission include their contact information. This also provides a way to track who submitted the idea and who are the stakeholders of the idea.
The inventors write a summary of the invention. The level of detail in this field will reflect your organization’s philosophy on invention submissions. At a minimum, the summary should provide enough information for a non-inventor to understand the invention and its most significant features.
Management and patent counsel fill in the remainder of the form. The value of the invention is a subjective rating given by management based on the business need for the invention. Tags identify the subjects covered by the invention and provide a way to categorize and search for the invention disclosure.
The prosecutor email provides contact information for the patent attorney responsible for the case. The patentability rating is a rating given by patent counsel based on the distinctions between the invention and the prior art. The filing deadline is assigned based on legal bars to patentability, such as product releases.
Pros:
Invention disclosure forms that are light on detail have two primary benefits:
First, a short form minimizes the barriers for inventors to prepare the form.
The form will not consume much of the innovators’ time or effort to prepare.
Second, a short form allows management and patent counsel to take a broad view of the invention. That is, reducing the amount of detail will allow management and patent counsel to think about the invention conceptually rather than focusing on a specific embodiment.
Cons:
A short form that is light on detail will give less information for the commercial and legal reviews. As a result, management and patent counsel might fail to appreciate the essence of the invention when evaluating it.
Patent drafters will need more time to understand the invention. They will be required to gather details manually. More time equals more money.
Decision making might not be based on the full picture of the value.
A medium invention disclosure form builds on the short form. It adds some additional information that might help both management and patent counsel evaluate and analyze the invention. Some other relevant information that could assist both includes:
Problem: A short statement of the problem that the invention solves. An organization may prefer to have a problem statement as a separate field instead of having it in the summary section.
State of the competition: The closest competing products or product features.
Alternatives: A description of the variations and alternate embodiments the inventors have conceptualized.
Public disclosures: Any past or upcoming disclosures that might create a bar to patentability. For example, product releases, presentations, speeches, and marketing material could all be relevant to patentability.
The invention form may also suggest that the inventors attach white papers, diagrams, photographs, or other descriptions of the invention that may provide additional detail.
At Triangle IP, we also facilitate customization of IDF within the TIP tool itself. You can add up to 10 new fields. There is also a functionality to edit, delete, or hide certain fields from the existing form. You can do all this very intuitively and easily from within the TIP tool – an intellectual property management software by Triangle IP.
The major benefit that organizations receive by this customization is seamless adaptation to their internal nomenclature.
Pros:
The form captures high level information necessary for a review without needing to query the innovators for additional detail. Reviewers often need more information to approve the innovation for patent drafting. Such a level of information capture can help reviewers save some project resources.
Cons:
Additional details require more time from the innovators that have other tasks. They often don’t understand what many of these additional fields mean. You can expect to receive many fields not filled up.
Long Invention Disclosure Forms
Long invention disclosures are usually used in academic settings or in research labs. Longer invention disclosure forms provide the organization the ability to track the use of grant money and other resources and monetize the products of those efforts. Since innovators at academic settings and research labs often publish their findings; a long invention disclosure form can usually be filled out using information already prepared for publication.
Long invention disclosure forms might include the following and more:
Prior art: A discussion about the prior art by the inventors and others. This is often included in academic articles as background.
Future research efforts: A discussion of how the invention may evolve into other embodiments or other inventions.
Commercial uses: A discussion about the potential uses for the invention in products and service offerings. The discussion might also touch on potential licensing partners to exploit the invention.
Resources used: A discussion of the grants or other resources used to develop the invention.
Pros:
A high level of detail provides the greatest volume of information to thoroughly assess the invention.
Cons:
In non-academic settings many innovators may feel intimidated by such long forms. As a result, decreasing the number of overall inventions disclosures received.
On a side note: Would you want to know how your patent application is progressing at the USPTO compared to other applications in the same domain?
The TIP tool offers statistics of the law firm and the examiner handling your case. Once the application is filed at the USPTO, and an examiner is allotted to your case, the tool indicates the relative performance of the law firm handling your case. The statistics revolve around the number of arguments, grant rate, and grant time. The tool also indicates the case health, for instance, it can tell you if a case needs your attention. There is a whole bunch of insights that you can gather from the TIP tool for strategic patent prosecution.
Request insights for any of your cases at the patent office using the form below.
Choosing an Invention Disclosure Form Wisely
With careful consideration of your organization’s needs and feedback from your innovators , you can design an invention disclosure form that fits your organization. Short forms provide the broadest view of the invention for management and patent counsel to evaluate the invention. At the same time, you may find that the level of detail provided in medium forms can be collected without discouraging inventors from filling them out. And highly detailed long forms can serve multiple purposes by collecting information about the development and commercialization of the product.
A short form template can be downloaded from Triangle IP. This template is available in Microsoft Word and Excel formats. This template is free to use even if you are not a Triangle IP customer. The bonus is this offline form shall soon be readable back into the tool. The new release of Triangle IP’s TIP tool is just a few weeks away. Register for exclusive early access.
This means that if you choose to use the TIP tool in the future, you will be able to import these forms for entry into the system.
Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.
Patenting a mobile app can be tricky, but it’s important to do so before releasing it to the public. If you don’t patent your app before launch, competitors can come along and copy everything that makes your product unique. With so many pitfalls along the way – from not understanding what’s patentable to not finding out about apotential competitor’s application until after you submit yours – it can be hard to avoid making mistakes altogether. In this post, we’ll explore some of the most common mistakes people make while starting the process of patenting their mobile app and how to avoid them.
Building an app for patent and not to fill a gap in the marketplace
Releasing a test version to the public before filing a patent application
Choosing the wrong IP protection
Being unable to identify patentable features in the mobile application
Not researching what already exists in the market
Drafting an Improper patent application (in absence of a patent attorney who’s an expert on software patents)
Not being clear about “provisional” and “non-provisional” patent applications
Building an App for a Patent
Steven Covey said, “Begin with the end in mind.” When building an app, ask yourself what the end goal is – are you building this app as an arsenal in your IP portfolio or are you building this app to fill a gap in the marketplace, with money as a by-product? Having an honest and clear answer to this question is the first, crucial step. If you’re building an application for the sole reason that you could secure a patent on the same, think again. Strategic business sense doesn’t allow for that.
Disclosing to Public Before Filing a Patent Application
The objective of a patent is to create a monopolistic right. If you do choose to go down the patent route with your app, rolling out even a test version to the end user before you file patent applications is the wrong move. Unlike copyright, which subsists as soon as publication is made, the premise of a patent is secrecy until the time you make disclosure through your patent application. Remember, everything that is in the public domain before you file your patent application will qualify as prior art. And will of course become open to duplication completely nullifying the purpose of a patent.
Choosing the Wrong IP Protection
Patents are not the only way to protect your mobile app or its features. You also have design patents that many choose as a preferred mode of protection for apps, especially to protect the UI and UX. Facebook, in 2017 had made a design patent application for “The ornamental design for a display panel of a programmed computer system with a graphical user interface, as shown and described.” This design patent showcases the app’s UI/UX.
Copyright protection can help protect the look and feel of your app. And buttons, features and slogans can be protected by trademark.
Being Unable to Identify Patentable Features in the Mobile Application
We’ve said it before, we’ll say it again. Knowing what not to patent is as important as knowing what to. When you’re looking at building a mobile app, research shows that it makes better business sense to patent certain features of your app rather than the app as a whole. We say this for more than one reason. For anything to be granted a patent, it must fulfill the criteria of novelty and non-obviousness. Here are some features of apps that have strong patent potential.
Communication Improvements
Think communication with servers and all the changes happening there with changing technology. Communication improvements that you make to your app can be the subject matter of patents.
Backend Processing
How your app works in crunching numbers on the cloud is a potentially patentable feature. The flow of operations on a phone may not have a lot to patent. But the phone’s interaction with other systems is potentially patentable.
GUI
Applying for design patents on graphical user interfaces can prove to be strong patents. Essentially, these patents help protect the look and feel of your app. A lot of big players including Facebook and Apple have strong design patent portfolios. For instance, check out this design patent by a popular mobile application company on the “Display panel of a programmed computer system with graphical user interface”. Presented below is a glimpse from the design patent.
Operations that happen on the phone in lite versions of your app are patentable. With the advent of AI, these use cases are rapidly increasing. With the way you train AI being a unique element, this can make for a strong patent. Constructing a claim around a mobile device specifically may increase your chances of success.
Not Researching What Already Exists in the Market
“Having an idea is just work half done.”
The other half of the work includes confirming the feasibility of the idea. It becomes ridiculously important to conduct extensive market research. The chances of an idea being made into an app, especially in this crazy tech age, is extremely high. So before you embark on a patent journey, look for what is already around.
A novel idea is an important eligibility criterion. This is because a patent is a way to show the world that your idea/invention is yours alone. So, you must make sure to document the whole process of development. It may be a good idea to also develop a prototype. This will not only help your patent attorney draft a comprehensive application but also to understand the impact of your application and what parts of it are eligible to be patented.
Drafting an Improper Patent Application
A patent is only as strong as its application. A properly drafted application setting out claims that are specific and well-defined is key. If you have an app that utilizes more than just the mobile phone to process, your claim must state as such. This helps to create a stronger patent in the event of changes in patent laws or technology. Client and server level methods must be claimed. It is also important to include device and/or apparatus claims. The physical storage of the app software – computer readable claims – must also be included.
A patent is enforceable for up to twenty years from the date of filing. The rapid growth of technology may render your invention completely redundant well within the 20 years during which your patent is enforceable. This makes it even more pressing for the patent application and claims to be well-drafted and comprehensive. All processes and potential technology developments must be factored in during the application process. Also consider how the final user will be interacting with your app in the future and how that affects the functionality of your app. Remember we went from floppy discs to CD roms and candybar phones to touch screens way faster than we imagined.
Choosing the wrong type of application between a “provisional” and a “non-provisional”
When choosing to apply for a patent for your mobile app, you can either file a provisional or a non-provisional application. Provisional applications are the most common in the case of patenting apps. This is because they give you an added advantage of time and help secure your ideas. Also, a provisional application can be filed without you having to provide a detailed description of your invention. Here’s a round up of some reasons you would choose to file a provisional application:
It gives you a 12-month head start to develop the product before you are bound by disclosure
It allows you to use the term ‘patent pending’ on your product
It’s economical as opposed to non-provisional applications
Non-provisional applications on the other hand must be filed with a complete claim and specifications. They must contain a written description of the invention and a claim which legally defines the invention. This means this document makes full disclosure of your ideas and your app. When all aspects of your app are finalized and ready to go is when it makes sense to file a non-provisional application.
Wrap Up
We’ll leave you with some final thoughts that you ponder on before going down the patent route:
The purpose your mobile application serves – it’s important that the app fills a market gap
What’s the right type of IP protection various features of your app need
Which apps already exists in the market that are similar to your app
Have you disclosed the app to public before the patent protection
The timeline of developing and preparing the patent application in line with your business plan for the app
Understanding whether your app is eligible for a patent is only the tip of the iceberg. Whether this fits into your business plan for the same is a bigger consideration. The want for a patent must balance with the fact that doing so will ultimately make your innovation public. Remember, patents don’t make products successful. Patents protect great products, but it is your product that you need to invest in before you have a patent to protect it.
Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.
“Fields in an invention disclosure form must be chosen to maximize the engagement from inventors.”
What is an Invention Disclosure Form (IDF)?
An invention disclosure form (IDF) records important technical information and facts relating to an invention. IDF acts as a business record for your company to decide whether to invest in patent protection. It also provides critical information to patent practitioners for preparing patent applications around inventions. It also provides information that can implicate patent issues such as publication and sales activity.
For an inventor, filling out an IDF can be a daunting process. As an innovation manager you need to make sure that the IDF template is:
Inventor friendly
Suits your organizational needs
If there are multiple inventors, any one of them can be designated to fill out the IDF. However, all of the inventors should review the IDF for accuracy and to be sure it has plenty of details on the innovation.
Fields in an Invention Disclosure form – What to include?
There are many variations of IDFs. Some are short while others are lengthy with many more questions. The reason why different IDFs request different information lies in the preferences of different organizations. Presented below is a master list of fields commonly included in IDFs and the reasons behind them. In designing your IDF, choose the fields that best suit your preferences after reviewing this article.
Tip: The various fields in an invention disclosure form must be carefully chosen based on their purpose.
Common Fields in an Invention Disclosure Form and Their Purpose
For easier understanding I have categorised the fields in an invention disclosure form into following:
The IDF needs a title to differentiate it from other submitted IDFs. The title should be descriptive enough to identify the nature of the invention. Also, aim for conciseness. For example, “Method and Apparatus for Signal Interference Processing.” Or, “Prokaryotic-Eukaryotic Hybrid Viral Vector.”
Field or Area of the Invention
Patent law is specialized by technology area. Therefore, this field can be used to sort IDFs by field, which could include the product name, business area and/or technology area.
Patents typically start with a statement describing the field of art to which the invention pertains. The patent attorney will ultimately determine the best way to describe the field or area of the invention. However, input from the inventor can be useful.
List of Inventors
Nearly all IDFs request a list of inventors. However, it is important to note that inventorship is a legal determination. Accordingly, some IDFs will instead request a list of “contributors” or the like instead of “inventors.” The goal is to list people who have actively participated in developing the invention. If the organization decides to file a patent application, the actual inventorship will be legally determined by the patent prosecutor.
The consequences for failing to get the list of inventors correct are dire. A patent can be invalidated for either including someone as an inventor who did not legally qualify or failing to list someone who did.
State of the Art
When a patent application is examined, the claimed invention is assessed in terms of whether it is novel and non-obvious. Prior art is any published information relevant to assessing your patent before the filing date of the patent application. Examples of the prior art include research publications, patents, marketing materials, and presentations at scientific conferences.
It is assumed that inventors are familiar with other work going on in their field in relation to their invention. Therefore, IDFs will often request any prior art that the inventors are aware of. Inventors should identify anything that could potentially be relevant to the novelty and/or obviousness of the invention.
There is no duty for the inventor to conduct a literature search. However, if an inventor has done so and is aware of relevant prior art then it must be disclosed to the USPTO.
Detailed Description of the Invention
This section might also ask for a summary, the problem solved by the invention, and/or the advantages of the invention. Often this is the longest part of the IDF with the most technical detail.
This section should take the most time. Important elements include stating the challenge or problem to be solved, describing the invention’s physical / technical features, describing how the invention is made, and explaining how it works. Accentuate how the invention is different from the prior art.
Any alternative approaches in the prior art that solve the same problem can also be discussed, along with explanations for why they do or don’t work. Other elements to include are ways the invention is more advanced and technologically sound when compared to the alternatives.
Any terms that readers may be unfamiliar with should be defined. Include any test data and relevant findings that demonstrate the effectiveness of your invention. Any graphs and drawings that have been created should be included. Significant findings should be called out and their importance explained.
Alternate Embodiments
In a patent application, it is advantageous to describe any alternative embodiments, even if they are not currently of commercial interest. It is not uncommon to focus on the preferred solution while discounting others. Including such alternative embodiments can prevent others from securing a patent on similar, yet distinct, variations of the invention that you already thought of. The description of alternative embodiments will become prior art against the patent applications of competitors. This can block those competing alternatives to the invention from entering the marketplace.
Furthermore, the inventor may consider certain embodiments to be less desirable now, but this could change in the future. By including alternative embodiments in the specification, the option of claiming these embodiments later is preserved.
Tags/Keywords for the Invention
Tags or keywords are sometimes used by organizations to filter and find invention disclosures within their databases. Underlying technologies, product lines, product names, or any other descriptors that are common in your enterprise. For example, innovation managers may wish to find all invention disclosures related to the tag “blockchain” and adding that will save grief when later searching and sorting the portfolio.
Have you described or shown your invention to anyone (within the organization, other than the inventors)?
Has a verbal or written description been given to a person outside of the company?
If yes, to whom?
If yes, was the person under any requirement to keep the information confidential or secret (e.g. NDA)?
Have you described or do you propose to describe the invention in a technical paper or other printed publication, in marketing material, or in any other form of media, including the Internet?
Public disclosure of the invention has serious implications for some jurisdictions. Examples of public disclosures are the publication of a research paper or the presentation at a scientific conference. In most countries around the world, any public disclosure before a patent application is filed is fatal to the patentability of the invention. Some countries provide grace periods in which applications can be filed up to 6 months or a year after such disclosures. Accordingly, it is critically important to know the dates of any public disclosures in order to determine what patent rights are still available.
Where a public disclosure has occurred, the inventors should provide copies of any materials relevant to the disclosure. These can include manuscripts, handouts, posters, electronic presentations, and slides. In some cases, what seems like a public disclosure does not actually qualify as one in light of the claiming strategy in the patent application. This is because the invention in the publication was not described in a way that would enable someone who works in the field to make or use the invention. Providing these materials allows the patent attorney to make a determination regarding their impact.
Providing an anticipated disclosure date also provides a timeframe for determining whether to pursue patent protection and for preparing and filing a patent application.
Product/Commercialization
Variations of this field include:
Have any attempts been made to commercialize or sell the invention (e.g., have you approached any outsiders about purchasing or manufacturing the invention) or otherwise offered it for sale?
Have you used the invention already publicly, manufactured or designed it into a product or do you plan to use the invention in commerce?
Any offer to sell the invention before a patent application has been filed has enormous implications. In many countries, the sale of an invention prior to filing a patent application precludes the ability to obtain a patent. However, some countries offer a grace period. For example, the US allows an inventor up to a year, after the commercial activity has started, to file a patent application around an invention.
Note that an offer for sale is sufficient to constitute commercial activity – no actual sale needs to have occurred.
Market Information
Variations of this field include:
Market information for innovation to either sell or increase sales of an existing product
Additional margin or profit for offering a product or service with the invention exclusively protected by patents
Contacts to confidentially learn about market potential
Please indicate any foreign markets in which you would suggest that a patent application should be filed and why
Who are the major competitors and what products do they offer
Provide names of possible licensees, if any monetization is contemplated
It is assumed that inventors are familiar with other work going on in their field in relation to their invention. IDFs may therefore often request information about domestic and international markets for the invention. IDFs may also request information about potential licensees. This information also helps identify potential competitors and prior art.
Collaborators
Variations of this field include:
Manager email / phone number
Prosecutor email / phone number
Law firm / attorney
It is critical that the IDF include complete contact information for each individual listed. Decision-makers and patent attorneys need to be able to get in touch with relevant individuals to ask questions and/or clarify issues.
Additional Details/To Be Filled By Managers
Variations of this field include:
Value or ranking
Tracking or docket number
Patentability score (i.e., likelihood of a patent issuing)
Filing Deadline with any explanation of what is triggering that deadline
Like many forms, some fields are not for those filling out the forms. Some IDFs undergo internal review. As part of that process, IDFs may get assigned a value based on factors such as the invention’s usefulness, commercial potential, and/or how it aligns with the organization’s business and policies. Tracking / docket numbers may also be assigned. IDFs may also be assigned to a specific outside law firm to assist with the patenting process. Notations regarding such designations are sometimes marked in IDF fields for internal use only. The filing deadline is often driven by a public disclosure or offer for sale and when that would push the innovation into the public domain.
Assignment to Confirm Ownership by Enterprise
Some IDFs may also include assignment provisions, which largely confirm your ownership that your enterprise already secured. An assignment is the transfer of legal title to an invention and may be required by the patent office. Co-owners of a patent can separately practice an invention or license it without the other co-owner’s permission so control should be in a single entity. Obtaining a clear assignment of an invention is extremely important. Typically, inventors are asked to execute assignments at the time the patent application is filed again with a version suitable for recording at the patent office.
Miscellaneous
Future Research to Further Commercialization
Plans for the future development of the invention should be described in the IDF. This information can be valuable for determining whether to proceed with a patent application. It also allows the patent attorney to ensure that the patent application describes variations that include inventors’ future plans.
Sources of Funding and Biological Material Deposits
It is very important to know whether the invention has been funded by an entity other than the inventors’ employer. Such sponsorship may have implications for ownership/licensing rights and reporting obligations. This applies whether external funding of the invention was in whole or in part.
For some inventions, a sample of biological material must be deposited with a public repository to satisfy statutory requirements for patentability. For example, has any biological material relating to the invention been deposited in a public repository such as the ATCC, EMBL, or Jackson Lab?
Third-Party Code in Software
If a software invention incorporates third-party code, it raises ownership and licensing issues that must be addressed. Open source software used in the code base can also have implications.
University / Lab Resources (With Details) Used in Invention
Sometimes the ownership of an invention depends on whether the invention was made using an organization’s funds, resources, or facilities. Many government labs and universities require submitting all innovations to their technology transfer department to decide if the innovation is of interest to them and within the scope of your employment.
On a side note: Would you want to know how your patent application is progressing at the USPTO compared to other applications in the same domain?
The TIP tool offers statistics of the law firm and the examiner handling your case. Once the application is filed at the USPTO, and an examiner is allotted to your case, the tool indicates the relative performance of the law firm handling your case. The statistics revolve around the number of arguments, grant rate, and grant time. The tool also indicates the case health, for instance, it can tell you if a case needs your attention. There is a whole bunch of insights that you can gather from the TIP tool for strategic patent prosecution.
Request insights for any of your cases at the patent office using the form below.
Conclusion
An IDF is a business record that helps organizations decide whether to invest in an idea’s patent protection. It also helps patent practitioners prepare patent applications. Filling out an IDF can seem intimidating to inventors if it’s long and complex. To make sure inventors engage with your invention disclosure process you must choose a suitable IDF template or put the suitable fields in an invention disclosure form.
At Triangle IP, we have designed a simple and engaging invention disclosure form. Here is how it looks:
The best part is this electronic invention disclosure form shall soon be readable back in the tool. And, the online invention disclosure form already exists within Triangle IP innovation management software.
Quick Update: The inventors can upload this offline form back into the TIP Tool to have all their ideas in one place.
Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.
