Patent Attorney

What is an Invention Disclosure?

An invention disclosure is a detailed, written record of the invention that is provided to a patent attorney. It is not a formal patent application, but rather a comprehensive description of the idea, its features, and its potential uses. The invention disclosure acts as a blueprint, capturing the essential innovative aspects of the invention so the patent attorney can transform it into a concise, clear patent application. Additionally, the invention disclosure is often used to formulate and guide a prior art search (“prior art” is a term used to describe publicly available information or the current state of the art). A thorough invention disclosure results in a more accurate prior art search, which, in turn, allows both the inventor and the patent attorney to better understand where the invention stands, along with charting a path to best position the invention within the inventive space. Properly disclosing the invention at an early-stage results in a smoother, more cost-effective patent prosecution process.

What Should an Invention Disclosure Include?

· Title of the Invention: A clear and concise title that accurately reflects the invention.

· Inventor(s): Full names and contact information of all inventors.

· Description of the Invention: A detailed explanation of the invention, including, for example, how the invention works or operates, how the invention is made or constructed, and how the invention is used. Oftentimes, drawings, diagrams, flowcharts or photographs, if available, are helpful.

· Problem Solved: Explain the problem the invention addresses and how it provides a solution.

· Advantages and Benefits: Highlight the unique advantages and benefits of the invention over existing technologies.

· Potential Applications: Describe the various ways the invention can be used.

· Prior Art: List any existing patents, publications, websites, products, or other publicly available information that relate to the invention, even if the prior art seems different than the invention.

Why is an Invention Disclosure Important?

· Proper Documentation & Working Through the Invention: Putting ideas into writing forces a level of clarity and precision often absent in the purely mental concept. The act of translating thoughts into words requires a structured approach, demanding that terms are defined in a meaningful way, ensuring logical connections, and highlighting any potential inconsistencies. This process helps to flesh out vague notions, revealing gaps in understanding, and prompting further refinement and clarity. By externalizing the ideas into a written record, a tangible representation is created that can be critically examined transforming the once abstract concept into meaningful guidance for the patent attorney and those conducting the prior art search.

· Streamlining Preparation of the Patent Application: The disclosure serves as a foundation for the patent application, providing the patent attorney with the necessary information to draft accurate and comprehensive claims.

· Investment and Licensing Opportunities: A well-crafted patent invention disclosure can easily be transformed into a powerful way to generate investment and licensing opportunities. By simply modifying the document in a way that targets potential investors and licensees, the invention disclosure offers a clear articulation of the invention's value and potential. By meticulously documenting the invention's unique features, advantages, and applications, the disclosure can be used to attract potential licensees and investors. Moreover, the invention disclosure can also highlight the invention's potential to solve industry-specific problems or carve out new market niches, attracting businesses seeking innovative solutions. Presenting the invention disclosure in an efficient, streamlined manner enables the potential licensees or investors to quickly assess the invention's suitability for their needs and recognize the invention’s market relevance, fostering confidence in its commercial viability, and ultimately creating opportunities for licensing agreements and the ability to generate investment funding.

5 Key Points and Reminders for New Inventors:

1. Document Everything: Keep detailed records of your invention, including sketches, notes, and prototypes.

2. Maintain Confidentiality: Treat your invention as confidential at least until you have filed a patent application. Avoid public disclosures or discussions that could jeopardize your patent rights.

3. Avoid Public Disclosure Before Filing: Do not publish, present, or publicly share details about your invention before securing protection.

4. Don't Delay: File your invention disclosure as soon as possible after conceiving your invention.

5. Seek Professional Help: Consult with a patent attorney to ensure your invention disclosure is properly prepared and to understand the patent process.

Final Thoughts:

The invention disclosure is a critical first step in protecting your intellectual property. By creating a comprehensive and well-documented disclosure, the groundwork for a successful patent application is laid, which can ultimately increase the chances of securing exclusive rights in the invention.

Lloyd & Mousilli boasts a team of experts in patent and intellectual property law. Let us employ our extensive experience helping early-stage innovators to receive the fullest patent protection over the novel idea at the earliest date to ensure priority. We have overseen patent strategies for consumer products at some of the largest technology companies and want to share this experience with you. The different teams at our firm, led by seasoned attorneys, work in synergy to help businesses seamlessly weave their patents throughout their broader business strategy. We will ensure that any equity agreements, assignment rights, employment agreements, non-disclosures and all other relevant documents accurately reflect the scope and rights regarding your innovations. Our goal at Lloyd & Mousilli is to help clients accomplish their long-term goals by working closely with them at each stage and tailoring our advice in accordance with the client’s aspirations and needs.

For legal assistance, reach out and consult with the Lloyd & Mousilli patent legal team or set-up a free consultation through our website for questions about invention disclosures, patent applications, or any questions relating to intellectual property or other business needs.

The Intersection of SaaS and Patents: Protecting Your Software Innovation

Software-as-a-Service(SaaS) is a cloud computing service model in which access to software is often provided through a web application on a subscription basis. In this manner, the software, itself, is located on external or remote servers, rather than on servers located in-house. SaaS has become a dominant business model for major companies, enabling them to deliver their software products on a subscription basis rather than a one-time flat fee. This creates several advantages for the SaaS provider, by allowing the service provider to reach a broader range of clients as the entry cost is reduced. In addition, under a SaaS model, the long-term profit gains on a single piece of software has a higher ceiling, and the provider can send updates to the client and provide better control and support over their product without requiring an on-site technician or for the client to make a new purchase. As the SaaS market continues to grow, so too does the need for intellectual property protection. Patents can play a crucial role in safeguarding SaaS innovations and providing a competitive advantage.

Software Following the Wake of Alice

There is a common misconception that software and patents are incompatible with one another, or that obtaining a patent on a software-based invention is impossible following the landmark case of Alice Corp.v. CLS Bank Int’l, in which the Supreme Court decided “that the claims at issue are drawn to the abstract idea… and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”

The impact immediately following this case “led patent examiners to increase rejections based on patent-ineligible subject matter relative to all first office action decisions in affected technologies.” Consequently, this caused a shift away from inventors seeking to patent inventions that involve computers and software.  In an effort to provide some consistency in evaluating software-based invention, the United States Patent and Trademark Office (USPTO) has since issued the “2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), [which], had a much larger, statistically significant effect on examination uncertainty, particularly in Alice-affected technologies…. Showing that after one year, the 2019 PEG decreased uncertainty about patent subject matter eligibility determinations in the first action stage of patent examination by 44% for Alice-affected technologies.” This is good news for those in the software industry, particularly the SaaS space.

Understanding SaaS Patents

Obtaining a patent on a SaaS-based invention can be challenging due to the complex nature and distributed architecture commonly involved in these inventions.  In this manner, SaaS patents are often directed to the underlying technology or processes that enable the delivery of the software service to the end consumer. For example, a SaaS patent application can focus on the core processes or unique or novel steps which are performed, either in the cloud or on the client’s machine, to advance the technology and drive the SaaS application. In some cases, if the SaaS product provides a unique user interface or graphical model, a design patent may be applicable to cover any unique aesthetic features that the SaaS program provides, either to the consumer or other users.

Regardless of what portion of the SaaS model or aspect of the business that is trying to be protected, there is likely something that can be considered and analyzed for patentability. A good rule of thumb when deciding whether an invention is patentable, and particularly a SaaS invention, is to ask whether the service is merely taking a known idea and performing it on a computer, or whether the invention is entirely novel or adds some new advancement to the technology or field. Of course, it is best practice to check with a patent attorney who can walk you through the difficulties and nuances of patent law in order to ensure the invention is protected and granted the broadest possible protection.

While a patent may be right for many situations involving SaaS inventions, there may be certain specific instances where treating some portions of the model as a trade secret may be an alternative form of protection. Trade secret protection requires that specific steps are taken to maintain the secrecy and status of the invention as a trade secret. If this is something that seems to better suit the particular invention, check with an intellectual property attorney to ensure the required mitigating steps have been taken to maintain secrecy and legal protection.

Conclusion

Patents can provide significant protection for SaaS inventions, helping to secure market share, deter competition, and attract investors. By understanding the key considerations for SaaS patents and developing a strategic approach, you can maximize the value of your intellectual property and drive your business forward.

Lloyd & Mousilli boasts a team of experts in patent and intellectual property law. Let us employ our extensive experience helping early-stage innovators to receive the fullest patent protection over the novel idea at the earliest date to ensure priority. We have overseen patent strategies for consumer products at some of the largest technology companies and want to share this experience with you. The different teams at our firm, led by seasoned attorneys, work in synergy to help businesses seamlessly weave their patents throughout their broader business strategy. We will ensure that any equity agreements, assignment rights, employment agreements, non-disclosures and all other relevant documents accurately reflect the scope and rights regarding your innovations. Our goal at Lloyd & Mousilli  is to help clients accomplish their long-term goals by working closely with them a teach stage and tailoring our advice in accordance with the client’s aspirations and needs.

If you are in need of legal assistance, reach out and consult with the Lloyd & Mousilli startup legal team or set-up a free consultation through our website for questions about SaaS inventions and their patentability or any of your intellectual property or business legal needs.

Why are Examiner Interviews beneficial?

Examiner interviews are the not-so-secret weapons of patent prosecution. If conducted strategically, an interview with your patent examiner can potentially be the driving force that leads to a successful registration. 

An examiner interview can provide several benefits, including: 

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Examiners are only human; misunderstandings in the written communication between the examiner and the applicant can often be clarified with a face-to-face discussion. Your conversation may unearth information you otherwise would not have obtained. For example, your examiner may have misunderstood your claim as you’ve written them. A verbal explanation may provide the necessary clarity that the examiner was missing. 

_{‍Cost and time reduction}

On average, each Office Action response costs about $3,000. An interview with the examiner can potentially reduce the number of refusals issued against your application, saving you money and cutting down the prosecution time. 

‍When and how can you request an interview?

Once a first refusal has been issued, patent applicants are entitled to an interview with their examiner. There are three ways to submit a request for an interview: 

(1) Fill out a PTOL-413A form 

(2) The USPTO’s online Automated Interview Request (AIR) system

(3) Call your examiner directly to request an interview

‍Tips for a successful interview:

Simply attending the interview isn’t enough; preparation is key. Some ways to prepare for your interview are:

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Come prepared. Examiner interviews are typically 30 minutes long - make the most of your time by being as concise and efficient as possible. Prepare an itinerary for your discussion, including all questions and arguments you have for the examiner.

_{‍Ask for input}

An interview allows you to directly request the examiner’s recommendations for improving the claims in your application. For example, making note of the claim language the examiner uses is a strategic way to improve your arguments; they are not likely to reject their own language, so take advantage of this opportunity to receive their direct input. 

‍Ready to take the plunge on a patent application?

Patent applications are tedious and complex. It can take the average person months to learn the ins and outs of patent prosecution. Applying on your own is always a risk, as one small mistake can lead to drastic consequences regarding cost and time delays. 

Lloyd & Mousilli has dedicated intellectual property attorneys who are experienced in the patent application process. We can assist with the preparation and filing of your application, as well as offer strategic guidance on your overall intellectual property protection. 

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