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Wealth of Ideas, November 2006
The US Patent and Trademark Office (USPTO) has announced
plans to discontinue its Invention Disclosure Program
(the IDP).
The IDP was initiated to address the need to establish
the date of conception for an invention. Prior to the
IDP, inventors would mail their invention disclosures
to themselves in a self-addressed envelope, which was
kept sealed until the need arose to prove the date of
conception. Under the IDP, an invention disclosure is
active for up to two years. If a patent application
referencing the invention disclosure is filed within
two years, the disclosure becomes a permanent part of
the prosecution history (aka the file wrapper). If not,
the disclosure is destroyed.
The USPTO came to the conclusion that this program
was no longer needed. Firstly, many inventors misunderstood
the program, believing that filing an invention disclosure
gave them some sort of legal protection or patent pending
status, which it did not. Second, an inventor can file
a provisional patent application instead of an invention
disclosure, which would indeed give the invention a
patent pending status.
Unfortunately, many inventors also misunderstand the
purpose of a provisional patent application. While a
provisional patent application does have its place,
when an inventor uses it to postpone the filing of a
utility patent application, they do themselves a disservice.
They think they can simply convert the provisional application
into a utility application within the allowed one year
time frame, and add claims. While it is true that a
provisional application need not have claims, the claims
requested in a utility application may be limited in
scope by the rudimentary support found in the originally
filed provisional application. Many patent attorneys
draft patent applications by first crafting claims and
then going back to the specifications to provide necessary
support for the claims. This cannot be accomplished
with a provisional application, which is often filed
pro se (by the inventor), and which often provides insufficient
information which may narrow the claims.
With termination of the IDP, some inventors may consider
filing a provisional application instead. However, in
order to be effective, a provisional application must
include a complete description of the invention. Preferably,
it should be drafted by a competent patent attorney.
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