Documenting is an important step on the path to successful execution of IP strategy, however inventors are often more interested in solving technical problems and inventing than in documenting their inventions. After all, they chose to be engineers and scientists, not English majors! Nevertheless, documenting is a crucial step to IP protection, and new inventors should be trained about why documentation is important, and how to do it properly.
Documentation involves two key processes: the inventor's notebook and the invention disclosure form. U.S. patent law still awards patents to the “first to invent,” so it is incumbent upon the inventor to have documentation to prove date of conception and diligent reduction to practice. With the 1995 U.S. patent law changes, inventors outside of the U.S. have the ability to prove invention date, as do inventors residing in the U.S.
The inventor's notebook process includes documenting inventions in bound notebooks with space on each page for inventor and witness signatures and dates. Electronic inventor's notebooks are gaining popularity, particularly in pharmaceutical research. If IP culture is not well-established, periodic verification of compliance may be advisable.
Invention disclosure forms are created to ask the inventors the most relevant questions about their inventions and to focus the post inventing process. The forms are a way to help the IP attorney begin to define the invention for patent filing. Carefully crafted invention disclosure form questions can help the inventor both focus the invention on a particular business need and broaden the scope of the invention. Providing training in the form of invention disclosure workshops helps inexperienced inventors shorten the amount of time it takes to complete a disclosure form.
If the inventors are aware of what type of information is important to the patenting process, they can spend less time fretting about the answers to the questions on the form. Documentation can help inventors to plan their experimentation better and reduce the amount of laboratory work required. Although interviews with the inventors may be necessary to fully understand the invention, the initial disclosure facilitates the review process and docketing the invention.