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The Interface of Technology and the Patent Process

Chapter 1-Attorneys and Corporate Inventors- Memos of Invention

Chapter 1-Attorneys and Corporate Inventors- Memos of Invention

Scientists and engineers are taught to maintain laboratory notebooks as an important first step in the invention process. They know, but often don’t follow carefully, the rules of including a reasonable description of an experiment and the data, an idea with a diagram, or a possible new process or device. The lab book usually has some coffee stains that give some authenticity. The book is signed by a colleague who usually signs about 100 pages with a single date. More on this later, but this is the beginning, even if somewhat flawed, beginning of the invention process.

At a certain point, the scientist may decide to submit a "memo of invention" (MOI). This is the basic request to have a patent application filed. The form of this is quite different from company to company but the purpose is the same. Most companies have a patent committee of technical people, and at times a patent attorney and business people, who rate the MOI’s. Typically the rating is 1 to 5, with 5 being for important cases for immediate attention. The rating of 1 usually means "no interest to the company"—release to the inventor. Some MOIs are not rated for various political or technical reasons, and are held for review at the next meeting.

There are some criteria for high-quality MOIs’.

First, is this something of current or potentially future business interest to the company? An MOI can get a high rating if the invention appears to be something that could affect a core business. A very small improvement in a large-scale process can be critical.

Second, the MOI should sell the invention. It should show how the invention improves the technical state of the art. Most inventions are not "bolts out of the sky" of radically new technology, but incremental discoveries that solve a problem known to the experts in the field.

Third, the MOI should include a reasonable summary of the prior art. This gives the reviewers a warm feeling that the writer of the memo has some reasonable appreciation concerning the novelty of the invention.

Fourth, the memo should have the correct administrative details such as references to lab books and the names of the inventors. Including a colleague who did not contribute to the invention raises a flag indicating possible future problems and undermines the credibility of the MOI as a legal document. An easy reason to lower the priority; someone will need to straighten out the inventors.

Now, a few things that should not be in the MOI.

First, the potential inventor should not express legal opinions concerning the potential invention. Attorneys are superb at sternly warning that such opinions can come back to haunt the inventor at a deposition or, more traumatically, on the witness stand.

Second, the MOI should be written in technical language and not sprinkled with legal language. The MOI should be written as a clear technical paper.

Third, the MOI should not contain proposed claims. Many inventors with some track record have a tendency to do this. In my opinion, it very much annoys the patent attorney. This is his area of expertise. You don’t write the prescriptions at the doctor’s office.

Fourth, the MOI should stand on its own for judgment. Some inventors include a section on the planned experiments to help define the invention. This often leads to the memo receiving a low rating and held for the next patent committee meeting. The MOI should be written when there is sufficient data or the concept is sufficiently complete for an evaluation.

At most companies, a highly rated MOI has been carefully "lobbied" by the inventor. This usually means assuring that the key technical people understand the invention, its significance, and are willing to support it in the meeting. The same background works well with people from the appropriate business unit. Initial contacts with the patent attorney works best when the inventor has an established relation with the patent attorney and gives a "heads up" on which MOIs are really important, and which may be of secondary importance.

In summary, a well-written and complete MOI gets the invention process working smoothly, generates enthusiasm for everyone involved, and paves the way for a rational evaluation of the MOI in terms of the three key criteria of an invention.

-Edward Funk, Ph.D.

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The Interface of Technology and the Patent Process

Chapter 1 of a 5 part series

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