Verna Law, P.C. Invention Disclosure Form

Important information for you to know…

Handling of Your Confidential Information:

Please note that confidentiality of your disclosure to us as a licensed attorney in the states of New York and New Jersey, and a separately registered patent agent is covered under rules governing ethics/behavior of practitioners registered with the United States Patent and Trademark Office (USPTO). For further information on this, please see 37 CFR 10.57 <http://www.bitlaw.com/source/37cfr/10_57.html> , 37 CFR 11.106 <http://www.bitlaw.com/source/37cfr/11_106.html> , and 37 CFR 11.107 <http://www.bitlaw.com/source/37cfr/11_107.html>.

What is not a Patent?

A patent cannot be obtained upon a mere idea or suggestion. Patents are granted for a new machine, manufacture, process, etc., and not upon the idea or suggestion of the new machine, manufacture, process, etc.. A complete description of the actual machine or other subject matter for which a patent is sought is required.

What is a Patent?

A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States.

There are three types of patents:

1) Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

What Can Be Patented?

The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained. Generally, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,” subject to the conditions and requirements of the law.

The word “process” is defined by law as a process, act, or method, and primarily includes industrial or technical processes. The term “machine” used in the statute refers to apparatus, instruments, devices, appliances, mechanisms, and the like. The term “manufacture” refers to articles that are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.

Novelty And Non-Obviousness, Conditions For Obtaining A Patent

In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if:

“(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” or

“(2) the claimed invention was described in a patent issued [by the U.S.] or in an application for patent published or deemed published [by the U.S.], in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”

There are certain limited patent law exceptions to patent prohibitions (1) and (2) above. Notably, an exception may apply to a “disclosure made 1 year or less before the effective filing date of the claimed invention,” but only if “the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed… from the inventor or a joint inventor.”

In patent prohibition (1), the term “otherwise available to the public” refers to other types of disclosures of the claimed invention such as, for example, an oral presentation at a scientific meeting, a demonstration at a trade show, a lecture or speech, a statement made on a radio talk show, a YouTube™ video, or a website or other on-line material.

Verna Law, P.C. continually reviews invention disclosures and technical business opportunities in order to assess their potential for patenting, licensing or commercialization. We will assess the patentability, licensing and/or commercial potential of your technology or business in accordance with United States Patent and Trademark Office (USPTO) rules 37 CFR 10.57, 37 CFR 11.106, and 37 CFR 11.107 governing confidentiality and ethics.

Please complete this form completely and supply all the requested information accurately. For all requested dates, list month, day, and year. A copy of this document should be kept in your own records. Submit your disclosure to Verna Law, P.C. at 80 Theodore Fremd Ave. Rye, NY, 10580 or anthony@vernalaw.com and wil@vernalaw.com.

Verna Law, P.C. Invention Disclosure Form:

Inventor's Name

Inventor's Email Address

Inventor's Residence Address

Inventor's Phone Number

Second Inventor's Name

Second Inventor's Email Address

Second Inventor's Residence Address

Second Inventor's Phone Number

Title of Invention

When did you conceive or think of the invention?

When did you first sketch or create a drawing of the invention?

When did you create a prototype of the invention?

When and how did you first test the invention?

When did you first disclose or describe the invention?

When did you first sell the invention?

Circumstances and Date of Conception/Invention (including Experimental Use):

Who/What Entity sponsored the R&D or provided services in its development?

SUMMARIZE WHAT YOU CONSIDER TO BE THE NOVEL PRINCIPLES OF THE INVENTION:

Description of the Invention (including purpose, drawings, description of parts, how the invention/parts are used, novel features, advantages). The description should set forth the operation of the process describing each step of the flow chart and its relationship or interaction with the components monitored, controlled and/or created by the process.

Is the concept of the invention applicable to other problems and fields or interest? If so, what are they and how would the principles of the invention be used?

Does data exist to support concept/invention? Have prototypes, products, apparatus, compositions, etc., been made and tested?

What are the closest competing technologies, products, etc.? Who else is working in this technological field (other academics, companies, etc.)?

Why is this invention an improvement over existing technologies?

Prepare and send to anthony@vernalaw.com and wil@vernalaw.com a complete written disclosure of your invention, including any sketches, diagrams, drawing prints, figures, etc. which will aid in understanding this invention. Please note that written disclosure must be sufficiently detailed that it can be used to reproduce the invention. Point out important novel features and claims. Every feature that you want to claim as novel must be capable of being reproduced from the written disclosure. The detailed written disclosure should include the following items:

A brief discussion of the problem solved by the invention
Description of the invention, including a specific embodiment. Point out important novel features and claims. State advantages of the invention and design trade-offs, if any, made to achieve these advantages. Describe any experimental results. In order to meet legal requirements, the description must be sufficiently detailed to enable one skilled in the art to make and use the invention. Following are guidelines for preparation of the description:

Mechanical Devices: Include a detailed description and drawings which illustrate all essential elements of the invention and the environment in which it is used. The description should describe the structure key-numbered to the drawing(s) and the operation of the structure including the functional relationship between all elements. To the extent known, alternative embodiments should be described.

Electrical Devices: The description for hardware-based electrical devices is the same as for Mechanical Devices.

Circuit-based Inventions: Include a detailed description and circuit diagrams reduced to standard components for parts of the circuit that are new. Standard components, such as amplifiers, microprocessors, logic gates, etc. can be represented as labeled blocks. The description should describe all of the blocks and components of the circuit and their interaction.

Computer Program-based Inventions: Include a detailed description, a schematic of the components monitored and/or controlled by the program, the physical structure (such as computer memory) associated with the program, and a general functional flow chart of the program illustrating the steps of the program in carrying out the invention at a level of detail from which one skilled in the art can understand and implement the program. Also include detailed flow charts sufficient to enable a programmer to write the software. The description should set forth the operation of the program, describing each element of the flow charts and its relationship or interaction with the components monitored and/or controlled by the program. All user interfaces should be described, including user inputs and program outputs and interaction with the user inputs.

Business Method Inventions: Include a detailed description, and a detailed flow chart illustrating the steps of the business method at a level of detail from which one skilled in the art can understand and practice the business method. Describe in detail any similarities to existing business methods, as well as the key differences between existing business methods and the invention. If the business method will be implemented using a computer program, the description should also include the information required for Computer Program-based Inventions.

Internet-based Inventions: The description should be the same as for Computer Program-based Inventions. If the invention is a business method, the description should also include the information required for Business method inventions.

Chemical Inventions (materials and/or processes for making them or for using them to make other things): Identify all essential materials (in chemical terms-not trade names) used and alternatives therefor. All significant variables needed to define the invention must be identified, quantified and discussed. Depending on the nature of the invention, such variables might include: treatment/reaction times, temperature, pressure, concentration, particle shape/size, viscosity, crystal structure, phases, porosity, pH, density, tensile strength, polymer chain length, etc. Each variable should be quantified in terms of an operative range and a preferred embodiment (e.g., “the heat treatment is carried out between 100ºC and 200ºC, and preferably 165ºC”). The function/purpose of each variable should be described including a statement as to what happens if the variable falls outside the operative range (e.g., “Component A serves as a plasticizer for Component B. Below 100ºC, Component A will not mix with Component B, and above 200ºC it evaporates”). Finally, a recipe for at least one detailed working example should be provided. Preferably, several examples should be provided covering the full range of the significant variables used to define the invention. Processes: Include a schematic of the components monitored, controlled and/or created by the process and a flow chart of the process illustrating the steps of the process at a level of detail from which one skilled in the art can understand and implement the process. The description should set forth the operation of the process describing each step of the flow chart and its relationship or interaction with the components monitored, controlled and/or created by the process.