Law & Legal & Attorney Intellectual property Law

Patent Disclosure for Selling an Invention


    • The U.S. Patent and Trade Office (USPTO) provides limited requirements for the invention disclosure and the format of a disclosure benefits from many degrees of freedom. It can be handwritten in a notebook or formally typed in an electronic file. The court focuses on the content of the document more than on the format of the text. If you have the intention of selling the invention disclosure, you will be more comfortable handing out a computer-typed version (and therefore a file that can be reprinted as well) of the document. One important detail refers to numbering the pages of the disclosure to ensure that some pages are not omitted in future negotiations.


    • Typically, an invention disclosure starts with the name of the invention, the names of all the inventors involved in the concept and their contact information. The document then sets the stages and describes the circumstances under which the idea was conceived. This may cover a few phrases about the problem that was investigated, and the thoughts that led to the idea.


    • The best invention disclosures provide numerous details about the new idea. The description covers drawings or equations substantiating how the new concept may work well to address the problem. It extensively covers other possible ways to deploy the invention to meet other needs. Frequently, it shows that with slight alterations of the original concept, the same objective can be achieved, according to Arnold B. Silverman, J.D., partner at the law firm Eckert Seamans Cherin & Mellott. An invention is best protected when the document elaborates with assembly and user instructions. The disclosure should prove effective against most attempts to usurp the concept with an analysis of why these methods bring great advantages over the current industry practices.


    • The document must be signed by two witnesses who can be company employees or experts in the field and they must initial each page. The only requirements for the persons signing the document are that they are not directly involved with the research work to avoid a conflict of interest, that they read the document and that they understood the content, according to David R. McGee, Executive Director, Technology & Industry Alliances, University of California, Davis.


    • An invention disclosure typically stays in your file or in your company's database. It resurfaces only if debates arise about the name of first inventor of the concept. In companies where creativity enters the day-to-day life, employees use notebooks with numbered pages in which they capture their ideas daily and ask colleagues or managers to witness and sign their notebook. This precaution facilitates the process of proving first-to-invent claims should a competitor invent a similar novel concept and attempt to commercialize it.


    • The invention disclosure becomes the foundation for a patent. Issuance of a patent will block a competitor from manufacturing or selling a product using the patented concept unless they pay a licensing fee to you. The invention disclosure will not block someone else but just prove that you were first to invent in the case you and someone else happen to patent the same idea at about the same time. Therefore, it is important to file a patent shortly after writing an invention disclosure.

    Selling Power

    • A patent has greater selling value than an invention disclosure. With patent rights, a licensee can launch the commercialization of the product. With an invention disclosure, the company has the proof in its files that someone different from the competitor came out with the idea. In the eyes of the purchaser, the invention disclosure becomes a tool to invalidate someone else's patent.

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