INVENTION DISCLOSUREWRITING WORKSHOP

May 6, 2004

Presented by:Hunter AuyangBella Fishman

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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

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"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?

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Documenting Your Ideas

Write all ideas in a lab notebook

• Chronological order

• Evaluation of Invention

• Dated

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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

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Defining the Invention

Preparing a disclosure of the invention

• Documentation

• Drawings

• History of Development

• Differences from prior art

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Preparing The Invention Disclosure

Invention Disclosure Form (DI-1)

• Intended for use by inventors in preparing their written submissions of new ideas/inventions

• http://vnet.varianinc.com/vcommu/corp/ legal/forms/index.html

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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

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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

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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

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Who Can Be An Inventor

Inventorship consists of two phases

• The conception of an idea

• The reduction of an idea

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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

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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

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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

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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

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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

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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

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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.”

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Contact Information

Hunter Auyang 650.424.5078 hunter.auyang@varianinc.com

Bella Fishman 650.424.5086 bella.fishman@varianinc.com

Debbie Kus 650.424.4814 debbie.kus@varianinc.com