INVENTION DISCLOSURE WRITING WORKSHOP May 6, 2004 Presented by: Hunter Auyang Bella Fishman

2 Goals of the Workshop Learn what is a patentable invention Learn how to complete an invention disclosure form Learn who is an inventor of new idea

3 "Question yourself" concept: What problem did you solve today/yesterday/last month? How did you solve the problem? Is this the only solution or others possible? Do you know if the competitors have similar problems? If the answer is “YES”, how are they solving their problems?

4 Documenting Your Ideas Write all ideas in a lab notebook Chronological order Evaluation of Invention Dated

5 Documenting Your Ideas Lab Notebook Spiral or stiff cover, pages permanently bound Consecutively numbered pages Date of entry of material Use ink which precludes erasure

6 Defining the Invention Preparing a disclosure of the invention Documentation Drawings History of Development Differences from prior art

7 Preparing The Invention Disclosure Invention Disclosure Form (DI-1) Intended for use by inventors in preparing their written submissions of new ideas/inventions legal/forms/index.html

8 Preparing The Invention Disclosure (cont’d) Data Information Sheet (DI-2) Intended for use by patent liaisons and/or R&D managers in gathering information

9 Preparing An Invention Disclosure Briefly, describe the problem that you worked on and its solution. Describe the previous attempt to solve the problem, if any. Explain (if possible) why your solution is the best. Describe what features are unique and valuable

10 Inventorship Applicant for patent in the US Inventor The person on behalf of the inventor Inventor refuses to cooperate Inventor cannot be located Inventor is dead

11 Who Can Be An Inventor Inventorship consists of two phases The conception of an idea The reduction of an idea

12 Who Can Be An Inventor (cont’d) Requirements A single inventor group of inventors who contribute some creativity to either phase of the invention The degree of inventorship is irrelevant Contribution to the invention as set forth in the claims Keep good records of the contribution of each inventor

13 Determination of Inventorship (cont’d) True Inventor Contribution to the inventive concept or to making the invention a reality, and that contribution is recited in the patent claims May not physically work together or at the same time

14 Determination of Inventorship (cont’d) Not True Inventor Person(s) who merely follows the direction of another, without providing a creative input, no matter how much work was involved Legal Department Determination Preliminary and final decisions

15 Inventorship Inventorship Test Form in mind a definite and permanent idea of operative invention Conceive a part of the invention as claimed Independently design experiments or resolve a problem that made whole or part of invention operable

16 Inventorship (cont’d) Inventorship Test Advise the inventor on improvement of the inventive concept that is a part of the claimed invention Contribute by suggesting new experimental design Make unexpected discovery during experimentation and recognize the discovery as new and useful

17 Determination of Inventorship Requirement of Law The patent application must include all persons who are true inventors, and exclude those who are not inventors for a patent to be valid

18 Mark Twain’s Definition of a New Idea “There is no such thing as a new idea. It is impossible. We simply take a lot of old ideas and put them into a sort of mental kaleidoscope. We give them a turn and they make new and curious combinations. We keep on turning and making new combinations indefinitely; but they are the same old pieces of colored glass that have been in use through all the ages.”

19 Contact Information Hunter Auyang Bella Fishman Debbie Kus