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Review Invention Disclosure

The patent manager and/or the patent committee can be primarily responsible for the review and evaluation of invention disclosures.

The patent manager can take immediate, unilateral action on disclosures that so require, identify those that should be rejected out of hand, and those that should be deferred for consideration by the patent committee.

The patent committee is recomended to meet no less than on a quarterly basis to review candidate technologies. The patent manager and/or patent committee can review and evaluate the various invention disclosures, and action each disclosure as a patent application (utility or provisional), a defensive publication, a trade secret, or to be held over for later consideration. These decisions can consider the following criteria with respect to each invention disclosure:

  • The degree of novelty (or “newness”) and level of inventiveness (or non-obviousness) of the invention.
  • The technical merit of the disclosure.
  • The strategic importance of the relevant technology from a business perspective.
  • The detectability of infringement of an eventual patent by a competing product.

Outside IP counsel can be requested to attend the patent committee meetings. Such attendance can be beneficial in that Outside IP Counsel can have an insight into the value of the relevant technology concepts, can benefit from discussions regarding such concepts by the Patent Committee, and will be in a position to assist in the decision making process.

At the meeting, each invention disclosure can be presented and potentially include a problem statement, a technical overview, and the advantages of the invention.

The patent coordinator can document each of the decisions and also document any action items arising with respect to invention disclosures.

The patent coordinator can distribute: (1) a summary of decisions by the Patent Committee, and (2) a summary of action items and associated due dates to be completed.

 

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