New inventors often get confused with the “detailed disclosure” that they need to provide their attorneys to procure a meaningful patent. While the general tendency is to disclose as minimum as possible (fearing a competitor may copy or steal the idea if disclosed in detail ), such a mindset will most probably result in failure with no patent rights.
It is important to recognize that patent rights can only be secured if you’re willing to disclose your invention fully. If you’d like to keep it a secret, you should hide it under lock and key and call it a trade secret. There is no “middle ground,” and an attempt to “have the cake and eat it too,” will only result in failure (and thousands of dollars wasted in legal fees).
Because a patent application requires full disclosure on how to implement the invention, also known as the “enablement requirement.” This means that you should disclose your invention in as much detail so that a person of ordinary skill in the art (of your invention) should be able to read your disclosure and implement your invention without any guess work or decision making of their own.
Note: If you used a black-box, where things happen “auto-magically,” that reasonably will not be considered as part of your invention — because you did not describe how to implement it and a person of ordinary skill in the art has to become the decision maker on their own — so whoever discloses the black-box, logically that aspect becomes their invention — not yours!
How to Write a Detailed Disclosure for Your Patent Attorney in 3 Steps?
1. What is the unique aspect of your invention?
As an inventor you should always proceed methodically. First write down what is the unique character of your invention — the feature that deserves a patent. Please note, one unique patent worthy feature per application or disclosure.
2. How is the unique aspect of the invention implemented — that is, how are you implementing the invention?
For the feature disclosed above, explain the “know-how” — how is it implemented (or going to be implemented)? This answer will need flow charts, diagrams, etc. Outputs/ results have no meaning unless you are willing to describe how you achieved those results.
3. Have you explained in enough detail so that a person of ordinary skill in the art could combine the answers in questions 1 and 2 to replicate your invention WITHOUT any guess work or decision making of their own?
If your answer is YES — Stop; send it to your attorney.
If your answer is NO — go back to question 2 and flesh out more details.
Your task compared to that of your patent attorney
It is important to reiterate that as an inventor, you (not your attorney) are the subject matter expert of your invention — your attorney has two goals: (i) strategize the innovative concept, and (ii) based on the strategy, procure you the broadest patent rights possible. While patent attorneys can usually “fill in the blanks” you still need to do the heavy lifting and explain the concepts in detail, as you probably know more about the subject matter of your invention than your attorney does.
Read question 3 again, and keep on providing details until the answer becomes yes. Golden rule: when in doubt provide more information.