Memos of Invention - Attorneys
and Corporate Inventors
By Edward W. Funk, Ph.D.
As an important first step in the invention process, scientists and engineers are taught to maintain laboratory notebooks. They know, but often don’t follow carefully, the rules, to include 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, and 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, of the invention process.
At a certain point, the scientist may decide to submit a "memo of invention" (MOI), which 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 reserved for cases worthy of immediate attention. The rating of 1 usually means "No interest to the company—Release to the inventor.” For various political or technical reasons some MOI’s are not rated at first, and are held for review at the next meeting.
There are some criteria for high-quality MOI’s.
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. It is usually very persuasive when the MOI includes unexpected effects. The classic example is the discovery of Teflon -- an experimental problem led to production of a polymer that wasn’t just an annoying “goo” but had truly unexpected properties. Most inventions are not "bolts out of the sky" of radically new technology, but instead incremental discoveries that solve a problem known to the experts in the field. Highlighting this solution is an important part of a good MOI. The MOI should also include the three key parts required in the Patent and Trademark Office specification: (1) a clear written description of the invention, (2) information to enable a reasonably astute colleague to practice the invention and (3) the best mode of operation. While these may be significantly revised in discussions with the patent attorney, they do provide a starting point for the patent application.
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. In many cases, the inventor knows the prior art quite well. Some arguments why the MOI isn’t obvious in light of the prior art can be very helpful to a patent committee.
Fourth, the memo should have the correct administrative details such as references to lab books and the correct 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, as 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. They know the difference between “comprise” and “consist” and have some ideas concerning multiple dependent claims. In my opinion, it very much annoys the patent attorney to see proposed claims. 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 being 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 and 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 work best when the inventor has an established relation with the patent attorney and gives a "heads up" on which MOI’s 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.
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Dr. Edward Funk has 20 years experience with Fortune 20 companies, including
Corporate Research of Exxon and Corporate Technology for Honeywell. He
specializes in the area of intellectual property. He is the author of
six U.S. patents, and his R&D groups have generated over 60 patents.
He has a BS in Applied Science from Yale and a PhD in Chemical Engineering
from the University of California, Berkeley. He has been a consultant
since 1992, and holds a Visiting Professorship at the University of Illinois.