Intellectual Property Law for Engineers, Scientists, and Entrepreneurs. Howard B. Rockman
be important. Remember, however, that the reduction to practice need not culminate in a working embodiment or model of the invention. Illustrations, drawings, screen shots, CAD files, and sketches of a workable concept also constitute a constructive and acceptable reduction to practice. Thus, you need not have a working model to file a patent application, or to prove derivation. In many instances, the filing of the patent application itself constitutes the constructive reduction to practice of the invention. Even though you do not have a working model of your invention, drawings and/or sketches that show how your invention will work and is constructed are enough to start the patenting process on its way.
The reduction to practice, however, must be of the complete invention that you ultimately are going to be claiming as the invention to be covered by your patent. The subject of claiming your invention will be covered in detail in Chapter 10. Thus, it is important to conclude from your conception, diligent efforts, and reduction to practice that the invention will work for its intended purposes, and will work the way you will ultimately describe the invention in your patent application.
Using drawings corresponding to your invention, and a written description of the structure and operation of your invention, a patent application will be prepared and filed with the U.S. Patent and Trademark Office. Therefore, it is important that, prior to meeting with a patent attorney or agent, you have a complete invention to submit for patenting, which includes the complete reduction to practice of the invention, either on paper or on a computer screen, or with the help of a working model. Again, it is not necessary or recommended to have a working model of the invention before you proceed to discuss the patenting process with your patent professional. An “actual reduction to practice” consists of the production and operation of a working model of your invention. A “constructive reduction to practice,” which is more common, consists of an expression of the invention in a written or electronic medium, such that one skilled in the art could read that expression of your invention and understand its structure and operation. Again, the constructive reduction to practice must be a description of a complete and operable invention.
7.2.3 Witnesses
In a derivation proceeding, it is important that the inventor establish the acts of conception and reduction to practice that support the patentability of the invention. Documentary pieces of paper, electronic fixations on media, and scraps of other materials are usually challenged by the defense lawyer as lacking authenticity. By having your relevant documents signed and witnessed by other parties, and dated, these other parties can then testify at trial that they signed those documents when dated, thus proving their authenticity. Also, if you tell somebody within your project control group about your invention, they can testify that they discussed the invention with you at that time. However, it is important to remember that the invention should not be discussed with anybody working outside of the project control group involved in the development and/or production of the invention. Public disclosure of the invention during its development stage and reduction to practice stage, absent a signed non‐disclosure agreement (NDA), should be avoided.
7.3 THE INVENTION DISCLOSURE, AND THE INVENTION DISCLOSURE MEETING
7.3.1 Preparation of a Complete Description of the Structure and Function of the Invention, How the Invention Operates, and What Advantageous Results Are Obtained by the Invention
The patent application ultimately prepared covering the invention must contain sketches or illustrations showing the important elements of the invention, where the invention comprises an article of manufacture, machinery, an electronic circuit, electrical circuit or the like, as well as a specification comprising a complete description of the structure of the invention, followed by a description of one cycle of operation of the described structure. The description of the structure and operation of your invention are keyed to the drawings through the use of reference numerals and lead lines identifying parts in the drawing that are described in the patent specification, somewhat similar to technical drawings. Therefore, it is important that the inventor or inventors prepare an adequate disclosure of the invention, with sketches and a description of the structure and function of the operation, prior to meeting with the patent professional at an initial invention disclosure meeting. It is no secret that patent agents and lawyers charge for their time, and an inventor can save substantial time, and thus money, by shortening the time the patent lawyer or agent has to spend preparing the patent application. By preparing detailed sketches and descriptions of the invention for presentation to the patent professional, hundreds and possibly thousands of dollars can be saved in the cost of obtaining and prosecuting the patent application. There are additional materials and information that the inventor or inventors should bring to the invention disclosure meeting with the patent professional, which will be covered in more detail as this chapter proceeds.
Your initial invention disclosure must be clear, although it is not necessary that it be typewritten. Also, a good disclosure is not necessarily long, but the important features of the invention and their operation and advantages must be adequately disclosed. When submitting your invention disclosure, always give the benefit of the doubt to including more in your disclosure rather than omitting information. The patent attorney can help decide what information you provide should be made part of the patent application, and which should not. Any drawings or sketches you prepare to submit to the patent attorney should be clear and sufficiently detailed, and coordinated with your written description. This is accomplished by numbering the various parts of the invention on the drawing and keying the numbers with the written disclosure. If you submit alternative embodiments, also submit the drawings or illustrations directed to those alternatives. If a model of the invention has been prepared, submit the model to the patent attorney with the other descriptive materials. Photographs of your model can also be used as the basis for the drawings initially filed with the patent application.
The key factor in preparing the initial disclosure of the invention and its different embodiments is to remember to present all information you know about your invention, and the environment in which it functions, to the patent attorney, leaving nothing out. The more information about your invention in the patent application, the more difficult it is for a potential infringer to design around your patent coverage. As will be explained in Chapter 10, the claims in your patent application will be drawn to cover all embodiments of your invention, and hopefully these claims will later be interpreted to cover those competing devices marketed in the future that are directed toward solving the same problems that your invention is directed toward solving.
7.3.2 Disclosing the Best Mode of the Invention
The U.S. Patent Law, for many years, has required that the ones seeking patent protection disclose the “best mode” of practicing the subject invention in the patent application. This requirement is retained in the AIA, which ensures that their invention that goes into the public domain is the best version of the invention conceived and reduced to practice from the inventor(s), rather than some inferior version.
However, the AIA removes any penalty for failing to disclose the best mode of the invention in a patent application by stating that “the failure to disclose the best mode shall not be a basis on which any claim of a patent may be cancelled or held invalid or otherwise unenforceable…” (35 U.S.C. §282(b)(3)(A)). Despite this, 35 U.S.C. §112(a) of the new AIA Patent Law, in mandating the contents of a patent application specification, states that the applicant “shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.” The new law also provides that a patent application filed first in a foreign country and then filed in the United States does not have to disclose the best mode of the invention.
The consensus is that this removal of the defense of the failure to disclose the best mode in a patent application was enacted to accommodate global patent harmonization efforts, since, generally, foreign patent statutes do not have a best mode requirement.
In addition, in the way the AIA has changed this element of the Patent Law, it appears that, even though a patent applicant