Writing Technical Disclosures
There are a number of key issues with which disclosure writers should be familiar. Technical disclosures as a publication vehicle have several unique characteristics that you can leverage. In addition, the various purposes for and methods of use of technical disclosures can alter the content in the disclosure or the way disclosures are written.
Flexible, controllable technical disclosures
Anonymity - Published technical disclosures have several unique advantages relative to other publications. For example, unlike conventional publications, disclosures can be published anonymously, allowing an author to safely disclose information that might otherwise be useful to a competitor's intelligence function or that could be offensive to a business partner. Clearly, certain instances of the customer/supplier control tactics might be quite problematic if your publication could be linked back to you.
Speed - Another advantage of the published technical disclosure is that it can be published extremely rapidly (relative to peer review publications). In fact, technical disclosures can be published in minutes, as opposed to weeks or months. Every day counts in matters pertaining to publication of inventions and patentable technology, since the outcome of patent prosecution and interference actions often depends on differences of days or weeks.
Format Flexibility - Even the formats of published technical disclosures can vary significantly, depending on the particular goals of the author and the complexity of the disclosed technology. The length of disclosures ranges widely, and many can be found that are less than a page long although some are many pages. A typical disclosure is one or two pages in length and often contains nothing other than a title, an abstract, and a description of the invention, although it may also contain graphs, chemical structures, process charts, citations, tables of data, etc.
Content Control - Finally, since they are not subjected to peer or editorial review, the author has full control in determining the content. This should be used to your advantage in your writing. For example, you can choose which pieces of an invention to disclose and which to keep secret. Or you can provide market information regarding the potential value of the invention if your purpose is to advertise your pending patent. You can choose your context and citations based on how you want readers to think about your technology, or you can suggest wide ranges of applications. It all depends on your goals in writing the disclosure, as the next section describes.
Solving Business Problems and Managing Risk with Technical Disclosures
Technical disclosures fall into one of three general categories, based on the goal behind the disclosure:
a) Impacting future patentability of an invention via anticipation or lack
of novelty
b) Impacting future patentability of an invention via obviousness
c) Not aimed at impacting patentability (for example, disclosures aimed at
promoting technology for licensing)
a) Impacting patentability via anticipation
In order for a publication to anticipate an invention, the publication must be "enabled" and must describe the exact same invention. But what is enablement? For your disclosure to be considered "enabled," it must describe the invention in sufficient detail to enable a person having ordinary skill in the art to carry out the invention without undue experimentation.
To provide enablement, certain characteristic content is usually included in a technical disclosure. For a composition of matter invention, writers often include relevant synthetic procedures, formulas, equations, experimental conditions, compositions, etc. For a method or process invention, it is often useful to include flow charts, diagrams, or chemical equations. A disclosure describing a machine invention will usually contain diagrams and figures showing the essential elements of the invention. An article of manufacture invention will normally contain figures of essential elements. In lieu of including these items, it is permissible to include citations to these enabling items if they exist in other publications.
Generally, there is no compelling reason to publish this type of disclosure with full authorship. Indeed there are reasons to argue in favor of anonymous publication, including the possibility of straining important business relationships if the disclosure catches the attention of customers or suppliers, and the possibility of facilitating competitive intelligence against your company.
b) Impacting patentability via obviousness
A patent will be rejected if prior art makes the invention obvious. The wording of section 103 of Title 35, United States Code, is typical, indicating that a patent should not be issued "... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains..." Disclosures aimed at an obviousness rejection are the most common type. A patent examiner can combine multiple prior art references to arrive at a rejection based on obviousness. Therefore, brief disclosures that do not contain a lot of detail, and are not enabled, can still be effective in preventing a future patent. The possibility of an obviousness rejection gives rise to many short technical disclosures that are little more than a brief description of an idea. However, patent rejections based on obviousness may be somewhat easier to
Solving Business Problems and Managing Risk with Technical Disclosures defeat than those based on novelty. The reason for this is that in the case of obviousness rejections, certain secondary considerations can be taken into account to demonstrate non-obviousness. These secondary considerations include indications that others have previously failed to solve the problem solved by the invention; the invention solves an unrecognized or otherwise insoluble problem; the invention enjoys rapid commercial success; the invention solves prior inoperability; or the invention solves a problem in a way that is contrary to the prior art's teaching.
Thus, it is fair to say that in terms of potential for preventing a patent, a more detailed disclosure is generally better. Nevertheless, the extra effort involved in writing a fully enabled disclosure and the additional amount of information disclosed to competitors must be carefully weighed against the benefit. Since an examiner can combine multiple references to arrive at an obviousness rejection, it can be beneficial to include references and/or citations in your disclosure to increase the likelihood of an examiner finding related prior art. However, this is far from being a requirement, since the examiner may combine your disclosure with prior art you don't reference, and in ways you can't currently imagine.
As with disclosures aimed at impacting novelty, there is generally no compelling reason to publish this type of disclosure non-anonymously.
c) Not aimed at patentability
Many technical disclosures are published that are not aimed at preventing future patents by others. Goals of disclosures that fall into this category include promotion of licensable technology, luring competitors into adopting your patent pending or patented technology, or promotion of a technical standard. Due to the diverse nature of disclosures in this category, it is not possible to provide guidelines on format or style, since the specific goals and subject matter will dictate the appropriate format and content.
Clearly, if the goal is related to overt promotion of technology for licensing, it is important to publish non-anonymously and include contact information in the appropriate bibliographic fields during the publication process. In this sort of situation, it is also important to use an industry-standard lexicon to help interested searchers find your disclosure. For the same reason, it is useful to include references to appropriate categories and/or product names.
