About four years ago, I received an invention disclosure from an inventor that I found very instructive. The inventor's first name is Curtis. Curtis had described his invention in a methodical fashion. Instead of going right to the invention, he started with the base system, or what would be considered the prior art. He showed, step by step, what he did to the base system to arrive at the invention. The final invention was a product of solving the challenges he encountered as he transformed the base system into a new invention. As I reviewed the invention disclosure, it occurred to me that I may have found a new ally in rebutting prima facie case of obviousness.

Innovating companies 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 disclosures 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.

Suppose that in an experimental study an inventor has found that an element x is critical to a new discovery. The inventor has discovered good results when x has a numerical value of, say, 1. Based on these good results, the inventor submits an invention disclosure to his company’s patent department.

At a later time, a patent practitioner starts the process of converting the invention disclosure into a patent application.  In an effort to broaden the scope of the claims, the patent practitioner asks the inventor for a range of values for element x. At this point, the inventor has moved on to other projects.  The inventor had conducted the experimental study with x=1 and stopped when good results were achieved. The inventor thinks x could be in a range from 0.5 to 7.5 but does not have any hard data to support this range. Nonetheless, the inventor delivers the prophetic range to the patent practitioner, who faithfully renders the range in the specification with the customary preferable range, more preferable range, and most preferable range verbiage.

“Who is an inventor?” is often a tricky question and can be a source of contention when several people work on a particular project that becomes the subject of an invention disclosure, and eventually the subject of a patent application. It is often erroneously assumed that if one contributes in any way to a project, one must be an inventor.  But, whether a contributor to a project is an inventor or not depends on the contribution made and what can be claimed as novel and non-obvious in view of prior art.

Establishing and implementing a global strategy for citing information material to patentability of an application to the U.S. Patent and Trademark Office are germane to procuring enforceable patents.  Ideally, such global strategy can be implemented on a computer system so that citation of information becomes an automated, rather an arduous, process, thereby facilitating compliance with duty of disclosure.  The following is a description of a global strategy for managing citation of information material to patentability in related co-pending applications.