0

My company has encouraged me to patent a recent discovery. Is it recommendable to disclose contextual details in the abstract or not?

Let's say the discovery found was inspired in the specific product my company is designing, but the principle holds for some other applications beyond this specific product. To ground the discussion, this is a self-driving vehicles related discovery, but it could apply also to drones or virtual reality devices. Which of the following two descriptions is more desirable?

  • How to use X and Y sensor to derive magnitude Z.
  • How to use X and Y sensor from a self-driving vehicle to derive magnitude Z using these algorithms.

In other words, should I try to make the description as generic as possible or clearly relate it to the product we are building, even if this reduces the IP area this discovery could be comprehending?

  • Are you putting together a summary to give to the company’s patent counsel? – George White Feb 25 at 1:18
  • I am filling the template they sent me. This includes invention title, an abstract, and two other confidential sections where the background of the invention and the description of it are detailed – A. Frenzy Feb 25 at 1:29
  • 2
    The patent practitioner will decide on these issues in drafting the application. You need to make sure they have the information needed to do a good job. – George White Feb 25 at 1:32
  • 1
    Just communicate as clearly as possible to the patent attorney or agent. Nothing you provide will go unedited to the patent office. – Eric S Feb 25 at 2:58
2

I writing this as an inventor who worked for a large company rather than a patent attorney. I've worked with several patent lawyers to draft and file patent applications. In general, the process is to describe to your lawyer everything you can about the invention. Many companies have a disclosure form to start this process. Fill it out as completely as you can, but don't worry too much about the wording. You will get to know your lawyer very well as the application is drafted. It is important that you describe all the applications of the invention you can think of as this will guide the attorney to obtaining the broadest coverage.

| improve this answer | |

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.