Invention Capture

Innovating companies1 typically have a process whereby their employees submit invention disclosures to an in-house patent department, after which one or more in-house patent counsels evaluate and selectively convert the invention disclosures into patent applications. If the process works efficiently, only good invention disclosures2 will form a basis for patent applications; defective invention disclosures will be returned to the submitters for correction; there would be no missed inventions; and invention disclosures would be converted into patent applications based on sound business and patenting strategies. When the process does not work efficiently, inventions could be missed; defective invention disclosures could be submitted and form the basis for patent applications; multiple invention disclosures could be submitted for the same invention and converted to multiple patent applications; an invention disclosure covering a species of an invention could be submitted and converted into a patent application before an invention disclosure covering a genus of the invention is submitted and converted into a patent application; and so forth. The implications of these inefficiencies are obvious and can be far-reaching.

It may be possible to avoid the inefficiencies mentioned above using a process for capturing inventions that involves regular and close interactions between a patent practioner and inventors. Here, the term “inventor” is used in its ordinary sense to mean one who invents or devises something. The process may be referred to as "Invention Capture" and involves a series of steps, as explained below.

Educate. The patent practitioner starts the process by talking to the inventors and their managers about what they should do, or be aware of, while conducting research or developing new products in order to ease the process of procuring patents and maximizing value of patents.

Brainstorm. The patent practitioner then organizes and moderates a brainstorming session with the inventors and their managers. During the brainstorming session, the inventors and their managers discuss recently completed and ongoing research and identify new discoveries and improvements, no matter how small.

Document. The patent practitioner later generates one or more invention disclosures from notes jotted down during the brainstorming session. Along with blueprints of the inventions, from which patent applications can be prepared, the invention disclosures include indications of the level of importance of the inventions to the company, as understood by the inventors and their managers. The patent practitioner solicits the inventors’ and managers' comments on the prepared invention disclosures and makes any necessary changes to the invention disclosures.

Deposit. The patent practitioner asks for signatures on the approved invention disclosures and submits the completed invention disclosures to "an invention disclosure bank" managed by the innovating company. At a later time, the innovating company can evaluate the invention disclosures in the bank and selectively convert them to patent applications.

Monitor. Finally, the patent practitioner may set up alerts for patenting activities in the fields of technologies relevant to the submitted invention disclosures, as defined by the U.S. Patent Classification System, WIPO’s International Patent Classification System, or European Patent Classification System, or using keywords in the invention disclosures.

1. An innovating company is a company that gets new stuff—goods or services—or participates in getting new stuff to the marketplace.

2. A good invention disclosure is one that functions as a complete blueprint for preparing a patent application, as a guide for constructing claims that are useful to the company and a stumbling block to the company's competitors, and as a tool for evaluating the relevance of the invention to the company's business and patenting strategies.