IEEE TRANSACTIONS ON PROFESSIONAL COMMUNICATION. VOL PC- 2 2. NO 2. J UNI \919 103

Abstract-Several kinds o f writ ten invent ion disc losure are descr ibed and a checkl i s t o f their, c o n t e n t s (e .g . , date o f c o n c e p t i o n , funct ional descr ip t ion , drawing) is D e v e l o p e d . T h e patentabi l i ty , search disclosure is d i scussed in particular. In general , d i sc losures s l iould ( 1 ) provide a c o n c i s e descr ipt ion o f the i n v e n t i o n , ident i fy ing its f ield o f t e c h n o l o g y ,

"describing i ts major parts , and tel l ing h o w it w o r k s ; ( 2 ) state w h a t the inventor be l ieves t o be the novel feature and w h y it is an i m p r o v e m e n t ; ( 3 ) clearly label s ignif icant parts in an unc lut tered drawing; and ( 4 ) provide patent o r o ther references t o similar or de lated invent ions . Dis­c losures shou ld hot ( 1 ) ignore principles o f g o o d technical wri t ing; ( 2 ) e n c o m p a s s m o r e than o n e invent ion; or ( 3 ) inc lude e x t r a n e o u s material .

WRITING a disclosure is often the first step in communi­cating and protecting an invention. This is a task that

almost every technical person takes on from time to time, but few really approach thàt^task with confidence. The basic problem appears to be not so much the actual job of describ­ing the novel features of the invention as it is deciding jost Kow much to include, and often what not tb include. The problem of determining the content and scope of a disclosure is sometimes alleviated by having a set of writing guidelines to follow, or by having a previous disclosure document to serve as a model, t h i s supposedly relieves the writer of the problem of form and allows him-to concentrate on substance. Too often, however, a neophyte disclosure ^writer encounters conflicting guidance. The first set of guidelines may say "keep the dis­closure b r i e f . have every page witnessed" while the next mstruetion may advise "give full and comrflete'details.. . to whom has it been disclosed? When?" and so on. 'Is one.of these jigfit and the other wrong? No, but this defocusedap-proach often leads to the generation of a disclosure whicji is not really suitable for its intended purpose; and so, writing good disclosures continues to be as much an art as it is a discipline.

An attempt t o reduce the uncertainties of disclosure writing is made by reviewing the most common types of disclosure writing and by lifting and clarify iHg .elements which belong in disclosures generally. A combinaion of these types and ele­ments Is given in Table I, indicating the relative necessity of each element Jor each type of disclosure.

It is appropriate to insert a brief caveat at this point relative to patent rights, which are almost always associated with the subject matter of disclosures. AVide variety of legal consider­ations is attendant upon even the most humble invention. Therefore,*it is always advisable for the inventors or owners of an invention to seek the advice of a registered patent prac-

Manuscript received January 2 2 , 1 9 7 9 ; revised February 1 2 , 1 9 7 9 . - T h e aitfhof is a C o n s u l t i n g Engineer a n d Reg i s t ered Patent Agent»

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titïbner at an early stage in the disclosure wfiting process. This will assure that possibly valuable patent rights, both in the U.S. and in other countries, are protected. A good introduc­tory discussion on the first steps to take in the protection of patent rights can be found in chapter 4 of Seidel [ 1 ] .

TYPES OF DISCLOSURES

Six types of written disclosures have been selected as repre­sentative of the most common invention disclosures. These are listed along the fop row of.Table I.

Type 1 disclosure (laboratory notebook) includes all pre­liminary and informal write-ups of inventions; including test results and rough notes; more carefully prepared technical

-diaries; and sketches, photographs,of equipment, traces from recordirîg instruments, computer printouts, etc. Type 2 (tech­nical report) is used here to include a range of reports docu­menting technical subject matter in a cohesive way for technical or management people, e.g., in-house status reports, progress reports, smoothed-oiit compilations of notebook entries, and the like.

Patentability search disclosures (type 3) are disclosures con­veying an invention description specifically for the purpose of defining a search of prior art (issued patents) to determine novelty of the invention. These searches are often referred to as novelty or preliminary searches. In research-and-develop­ment-oriented companies, essentially the same form of disclo­sure is often used to make a preliminary business-and technical-' rAerit judgment on the invention before making a patent search.

Patent application disclosures (type 4) include all written efforts directed to producing a fqrmal application for filing in the U.S. Patent and Trademark Office. A patent application is supposed t o include welkthought-out, smooth-reading, detailed descriptions, anc^ usually is written by or under the direction of a registered patent, practitioner.

Defensive publications (type 5) are generally disclosures of inventive concepts considered to have little commercial value per se; but which are published as a defense against patenting by a subsequent inventor; after a year they become an absolute bar to patenting by anyone. Thus, defensive publications offer freedom of actiôn-but not patent protection-to the inventor. For examples of this highly specific type of disclosure; see one of the monthly publications listed in reference 2.

The UdS. Patent and Trademark Office has a program to re­ceive and to keep on file disclosure documents (.type 6) sub­mitted by inventors.- These are generally informal disclosures written by individual inventors who 'thereby obtain the benefit of a recorded date, which may subsequently'be used as proof

03'61-1434/79/060Q-0105$00.75 © 1979 IEÇE

Writing an Invention Disclosure J A M E S F. C O T T O N Ε

Il I I T R A N S A C T I O N S ON PROI ! S S I O N A I . C O M M U N I C A T I O N . VOL. P( 22 , NO. 2, JUNI 1 9 7 9

/ = required; O v = opt iona l

of date of conception oY the invention disclosed. A Govern­ment booklet [3) is available outlining this program.

DISCLOSURE ELEMENTS

Development of a list of elements which should be included in these types of disclosures proceeds readily from a quick review of why disclosures are needed in the first place. The major legal and technical purposes served by disclosures in­clude the following:

A. Proof of conception of the invent ion-when and by whom B. Proof of operativeness-description of specific invention

involved and key details of how it functions C. Proof of reduction to practice if actually built and tes ted-

when and by whom, and with what results D. Actions affecting possible patent protection.

This tabulation is not exhaustive, but it serves our immediate needs. For a more comprehensive treatment of the purposes and mechanics of disclosures, see chapter 2 of Forman [4 ) , from which these were extracted. Also, chapter S of Tuska [5) has a good discussion of records of inventions and stan­dard disclosure types.

For item A the elements needed are

1. Date of conception of the invention] 2. Names of inventors and their relative contributions 3. Overview description of the invention with sketches 5. Witnessing of the written description.

Similarly, item Β gives rise to disclosure elements 5 through 8:

5. Functional description (in moderate detail) 6. Drawings showing the structural parts and their interrela­

tions

7. Illustrative uses best use-and other possible uses 8. Theoretical or mathematical description if available.

The 14 items in the left-hand column of Table 1 represent a working set of disclosure elements derived from-purposes A-D, which we can use as a first approximation to the factors that should be found in a disclosure document. The numbered ele­ments are grouped by brackets to the lettered item with which they are most closely related. Elements 4 and 10, both recit­ing witnesses, differ in that element 4 requires only that a witness see (and understand) the written description of the in­vention, whereas element 10 requires that a witness see the invention after it has been reduced to practice (actually working).

In the following sections we first briefly discuss the labora­tory notebook and then proceed to a detailed discussion of the patentability search or evaluation disclosure. This kind of dis­closure is often the first written description-beyond his tech­nical no tes - tha t an engineer or scientist is asked to provide. Yet it may also be the most critical because it can form the basis for deciding whether to seek a patent. Finally, we for­mulate a set of do's and don *ts for disclosure writing.

LABORATORY NOTEBOOK.

The most common technical disclosure written on a day-to­day basis is found in the laboratory notebooks of employees of research-and-development-oriented companies and in the notes or diaries of independent inventors. These disclosures tend to be informal documents and usually provide a time series of entries, often relating to a number of different proj­ect? under way at the same time. Technical people are at ease with these modest disclosures that can serve as very useful evidentiary documents. The early entries provide the best

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proof of date of conception of an invention; they fairly well specify what the invention is; and, in the >case of joint inven­torship, they often clarify which inventor initially made what contribution. To so serve, it is only necessary that the inven­tion be reasonably well described in writing, that the descrip­tion be signed and dated' by each participant, and that the entry be properly witnessed. For an elaboration on the keep­ing of laboratory notebooks, see reference 6.

.Only a few of the 14 disclosure elements need to be included. Specifically, elements 1 through 4 would be required as indi-

. cated in the first column of Table I. If the laboratory note­book description pertained to an invention already assembled, operating, and undergoing evaluation (no matter how tenta­tively), then the technical data being written could serve as proof of reduction to practice, and elements 9 and 10 would also be needed.

PATENTABILITY SEARCH DISCLOSURE

The primary purpose of a patentability search or evaluation disclosure is to convey enough information on a particular invention to enable a reasonably thorough search of relevant prior art to be made. This sounds simple enough, but judging from the high percentage of search disclosures which are seri­ously inadequate, it is apparent that this writing task is mis­understood by a large number of disclosure writers. The defi­ciencies range from too little disclosure to too much disclosure and include disclosure of irrelevant material. A disclosure containing too little information often fails because the patent searcher is forced to guess, or to make assumptions about, the details of the invention which were not written into the disclo­s u r e s needless risk. A (disclosure containing too much infor­mation often fails because the reader is forced to choose which of the variations of the invention the writer, or inventor, really had in mind, or to search them all—which is time consuming and expensive. Disclosures containing irrelevant material, such

as market penetration projections, parts lists, company trans­mittal memos, and the like, also fail simply-because they clog the input filter of the reader and consume time for which no beneficial communication is obtained.

Only elements 3, 5, 6, and 12 (Table I) are necessary for this type of disclosure. Elements 6 and 12 may in some cases be superfluous, and elements 2, 7, 11., and 13 are optional. Ob­viously, an overview description of tjie invention and a sketch (element 3) are necessary for the searcher to establish the field of the invention, and the functional description (element 5) must provide enough detail for the searcher to determine which specific structural or functional elements, or processes, etc. are pertinent. Drawings (element 6) beyond the sketch level are required if the key to the invention (the poini of novelty) is such that it can be better identified pictorialry than by written description. Drawings are also required if sketches by themselves cannorprovide the detail necessary *d show the key features. If the invention is a very broad one, or if it per­tains to some highly generalized method or process, a simple flow or block diagram may be all the pictorial disclosure required.

By pointing out where prior art features stop and the present invention begins (element 12), the disclosure aids the searcher by telling him what problem is being solved or how the inven­tion is an improvement over, or is significantly different from, what already exists. This information allows the searcher to concentrate in those technical areas devoted to thrfeatures of the invention which contribute to the improved device or re­sult. Hjâj avoids plowing up old ground and producing refer­ences sHbwing devices and methods of which the inventor is most likely aware.

Length

Because of the broad range of inventions which are regularly •encountered, it is nearly impossible to say with precision how

1 0 8 I hi I T R A N S A C T I O N S 'ON PROI I S S I O N A I . .COMMUNICATION, VOL. PC 2 2 . NO. 2 . J U N I 1 9 7 9

much disclosure would be considered adequate by theevaluator or searcher. If the invention is related to a very simple struc­ture, for example, a unique geometry or shape of a fusé ele­ment, only a simple drawing or two and a page of text would be enough to mafte the disclosure complete. On the other hand, a*i invention related to a digital filter for a satellite» al­timeter using charge-coupled devices to implement a Fast Fourier Transform might require several drawings and several pages of text to provide a complete disclosure.

Each disclosure must be considered on its own merit, but a simple quantitative guideline is'possible. It can be presumed that the reader, evaluator, or searcher, has a fair working knowl­edge oj the technical subject matter involved. Thus, the inven­tor or writer can first set forth the general field of the inven­tion and then proceed directly to the believed point of novelty. It is usually not desirable to include a Jot of elementary Ν or introductory matter Unless, for example, the writer believes such material while basic is not widely known or properly understood by most people in the field. An invention of mod­erate complexity can most likely be fully disclosed for patent­ability searching using one to three sketches or drawings and one to two pages of written text.

Almost any disclosure which grows beyond a very Few pages invariably loses its focus on the single invention which is being disclosed. This is especially true if the disclosure includes material written by different authors or written over an ex­tended period. A related magazine or technical journal article, a bulky technical progress report, or a somewhat related U.S. patent can each provide enough different slants or shifts in emphasis from the basjc concept to obscuie the exact point of novelty that the disclosure writer wanted searthed.

Use of Support Materials

There are situations, however, where support materials can be beneficial to a patentability search disclosure if handled properly. A good general rule when such materials have to be included is to clearly annotate them to point out the pertinent parts or to mark them to show what is and what is not relevant to particular aspects of the invention. For example, citing patents (element 12) of which the inventor is already aware can be helpful in establishing a field of search or in pointing out some device or method which is closely related to the in­ventor's. The disclosure writer should include notations such as "Patent 123 is included to show the kind O F ac jnotor con­troller I'm talking about and the class/subclass where this one was found," or "Patent 456 shows in figure 4 and describes in column 6 what I mean by a digital closed-loop improve­ment ." Similarly, magazine articles, technical publications, product brochures, photographs, and the like might be used sparingly t o supplement a disclosure if they are predigested by the disclosure writer and then clearly annotated to point out which parts are pertinent, arid why.

D o ' s A N D D O N T S

The following lists of do's and don 7s summarize the factors to consider wnen writing patentability search disclosures.

.DO • . . provide a short descriptive title'\\)r%\he invention. • . . . provide a concise description including (a) the general

field of technology (environment) for its application; (b) the invention's major parts (structure); and' (c) how it works (function).

• . . . state what the inventor believes to be the novel feature and how it is an improvement or significantly different from the state of the art.

• . . . provide one or more drawings, clearly labeling the major parts and where key functions are accomplished.

• . . . provide references to related devices or descriptions in the form of clearly annotated supporting materials.

DONT » . . . use abbreviations, acronyms, or jargon. (Avoid in-house

or trendy words and phrases; rely on widely known and ac­cepted words which have withstood the test of time.)

• . . . attempt to disclose more than one invention in a disclo­sure. (If the subjects uf separate disclosures are closely, re­lated, have them searched at the same.time.)

• . . . use excessive detail describing items that would be well-known to a person having reasonable knowledge of the gen­eral subject matter.

• . . . provide large manufacturing drawings or overly elaborate or artistic drawings. (Select - cut out or photocopy -perti­nent parts and cross out nonrelated parts or views.)

• . . . use different names for the same entity in various parts of a disclosure.

• . . . provide large quantities of support material for general background information. (Review all support material first and clearly mark the pertinent portions. Show the correla­tion between the names or terms used in the support mate­rials and those in the disclosure.)

• . . . attempt t# have a patentability search disclosure serve as an all-purpose document by including extraneous material.

REFERENCES

11J Α. H. Se idel , What the General Practitioner Should Know About Patent Iaw and Practice, American Law Inst i tute and A m e r i c a g r Bar A s s o c i a t i o n , Phi ladelphia, PA, 1 9 7 4 .

| 2 | IBM Technical Disclosure Bulletin, IBM Corp. , A r m o n k , N Y , 1 0 5 0 4 ; Research Disclosure, Industrial Opportun i t i e s Ltd . , H o m e w e l l , Havant , Hampshire P 0 9 1 E F , U n i t e d K i n g d o m ; Xerox Disclosure Journal, X e r o x Corp . , S tamford , CT 0 6 9 0 4 .

131 "Disc losure D o c u m e n t Program,** U.S . D e p a r t m e n t o f C o m m e r c e , Patent and Trademark Off i ce , Washington , D C 2 0 2 3 1 , 1 9 7 6 .

( 4 ) H. I. F o r m a n , E d . , Patents, Research and Management, Central B o o k C o . , N e w Y o r k , 1 9 6 1 .

(5J C D . T u s k a , Patent Notes for Engineers, 7 th e d . , McGraw-Hill B o o k C o . , Inc . , N e w Y o r k , 1 9 5 6 .

(6J R. V . H u g h s o n , ' T h e Right Way t o K e e p Laboratory N o t e b o o k s , " IEEE Trans, Prof Commun., voL PC-22 , n o . 2 , p . 8 3 , June 1979 ( th is issue) .