Patenting an Invention in Your Organization

Disclaimer

The following comments are my understandings and experiences as an inventor while working for EDS, HP, and GM.  They do not constitute legal advice regarding patents and trademarks.

In my experience, often times, one finds innovative ideas during the course of doing one's job when one comes across:

•  A solution for an unsolved problem

•  An improved solution for a poorly solved problem

•  An existing solution that solves an unintended problem

What is an Invention?

    Invention = Conception of an Idea + Reduction to Practice

Reduction to Practice may be “constructive” - that is, a working prototype is available.  That would constitute Patent Nirvana!

Alternatively, Reduction to Practice could consist of clear description of how to do something (instructions and drawings) - which has been the case for almost all of my IP submissions.

Detecting an Invention

• Internalize what constitutes an invention
• Identify when/where to look for inventions
• Seek help from technical/business leaders to identify potential inventors
• Inventors may not always identify themselves
• Recognize that a patentable invention may be:
• A completely new concept, or
• An improvement, or
• A new application of an existing technology
• Identify potential inventions
• Look for unsolved problems
• Look for poorly solved problems
• Don’t test for patentability yet, but:
• A qualified non-inventor and/or a patent coach should review the invention
• Summarize the problem/solution as input to an IP Disclosure

Preparing an IP Disclosure

I had benefited by having many co-inventors; those persons who contributed at least one idea to the claim.  

Inventorship is a legal requirement, and must be accurate:

     •   No favoritism
•   No friendship
•   No customer sensitivity
•   No politics
•   No intentional exclusion

Please note that errors in inventorship may jeopardize a patent.

That inventor’s list may be changed during patent prosecution as the claims are modified. 

And that the primary inventor is usually the person who first conceived the invention.

Personally, I would like to encourage everyone to share their innovative ideas with their colleagues within the organization (but not outside of it since that could complicate filing for patent protection later).  

There is no limit to what others could do with your initial ideas if you do not take any ownership of it and be generous with them!  In those 3 companies, anyone could create and submit an IP to ANAQUA.

The companies I worked for had an Intellectual Property (IP) Office and I was encouraged to develop my innovative ideas and to submit them to a COTS package called ANAQUA (Anaqua Intellectual Property Management Software and Services) which was used by those companies for Intellectual Property (IP) management.

ANAQUA required me to fill in an online form with the following information:

     •    Administrative Information
•    Problem Statement
•    Solution Statement
•    Drawings
•    Compare and Contrast
•    Value to ORGANIZATION
•    Workaround Strategy

Many, but not all of those IP disclosures to ANAQUA led to Patents or to Trade Secrets. 

When to apply for Patent protection?

•   The invention can’t be kept secret

•   The invention can be easily discovered or reverse engineered by others

•   Natural course of development

•   The invention will end up in the marketplace

•   Market protection is important

When to make the IP a Trade Secret?

•   Very critical to core business

•   Breakthrough invention

•   The invention can be kept secret

•   Independent discovery by others is not likely

Key Patentability Requirements

•   Subject Matter - any new and useful innovations pertaining to 

     •   Machine
•   Article of Manufacture
•   Composition of Matter
•   Process 

(or any improvement thereof, including software & business methods).  

What can’t be patented are: Abstract ideas, Mathematical formulas, algorithms, and Source code; e.g. Pythagorean theorem cannot be patented: a² = b² + c²  but a machine that uses the Pythagorean theorem to bend steel rods into desired shapes is patentable 

Examples of Patents: 

Babak Makkinejad Inventions, Patents and Patent Applications - Justia Patents Search 

•   Utility

This is a very low standard.

 

The invention must do what it says it does.  This basically, challenges outlandish claims, things that are proven impossible, or unlawful such as Cure for cancer, Perpetual motion machine, atomic weapons.

 

•   Novelty

Not previously known or used in the US and not previously patented or published anywhere and not invented by someone else, not in commercial use, not sold to anyone, not offered for sale to anyone.

Note: The actions of the inventor can lead to improper disclosure and the loss of patent protection 

 

 •   Non-Obviousness

In addition to Novelty, a patentable invention must be non-trivial, involve substantial ingenuity and not be described in a combination of 2 or more references.  

 

 

Long-felt need and commercial success may support non-obviousness.  Please note that the inventor is in the worst position to determine obviousness; to the inventor, an invention is always obvious.

 

•   Specification

Written description of the patent application must show that the inventor is in possession of an invention.

 

•   Enablement

The patent application must enable a person skilled in the art to make and use the claimed invention "without undue experimentation".

 

•   Best Mode

The inventor’s favorite "embodiment" must be disclosed.

Creating an IP Disclosure

First, discover if your organization has an IP Office and learn their process for submitting and IP Disclosure. 

 

I have used the tools that were available to me at EDS, HP, and GM and recommend the following steps:

 

1. Create a Microsoft Teams channel for that IP
2. Create a OneNote document inside that channel to capture the IP
3. Create one tab within OneNote that contains all the required IP submission headings that ANAQUA expects.
4. Invite co-inventors – if applicable – to join that channel
5. Conduct regular brainstorming and collaboration meetings with other co-inventors to flesh out the IP.
6. Create a System Diagram that shows all the main elements of your invention; I used MS Visio as well as MS PowerPoint for that purpose.  (Each disclosure required at least one diagram which helped the Patent Attorney's to draft the Application.)
7. Fill-in the required IP submission headings in the corresponding OneNote tab as meetings progress.
8. Once satisfied with the results, populate the required fields in the submission form of ANAQUA with the corresponding text in the OneNote tab.
9. Do not spend much time on patent search since it is complex and non-trivial and as an inventor, I was not required to conduct extensive searches.  Furthermore, using search engines or AI systems can alert competitors, which you would want to avoid.

IP Disclosure Funnel

Invention-to-Patent Timeline

USPTO Actions

USPTO patent examiner may reject the patent application or raise objections. USPTO actions are a normal part of patent prosecution, and an inventor should not feel negatively about a USPTO action.

Patent Sites

US Patent Office

•   www.uspto.gov/patft

•   https://patentcenter.uspto.gov/#!/

Free Patents Online
 
•   FPO IP Research & Communities