From "Wealth of Ideas" e-newsletter, November 2006

The US Patent and Trademark Office (USPTO) has announced plans to discontinue its Invention Disclosure Program (the IDP).

The IDP was initiated to address the need to establish the date of conception for an invention. Prior to the IDP, inventors would mail their invention disclosures to themselves in a self-addressed envelope, which was kept sealed until the need arose to prove the date of conception. Under the IDP, an invention disclosure is active for up to two years. If a patent application referencing the invention disclosure is filed within two years, the disclosure becomes a permanent part of the prosecution history (aka the file wrapper). If not, the disclosure is destroyed.

The USPTO came to the conclusion that this program was no longer needed. Firstly, many inventors misunderstood the program, believing that filing an invention disclosure gave them some sort of legal protection or patent pending status, which it did not. Second, an inventor can file a provisional patent application instead of an invention disclosure, which would indeed give the invention a patent pending status.

Unfortunately, many inventors also misunderstand the purpose of a provisional patent application. While a provisional patent application does have its place, when an inventor uses it to postpone the filing of a utility patent application, they do themselves a disservice. They think they can simply convert the provisional application into a utility application within the allowed one year time frame, and add claims. While it is true that a provisional application need not have claims, the claims requested in a utility application may be limited in scope by the rudimentary support found in the originally filed provisional application. Many patent attorneys draft patent applications by first crafting claims and then going back to the specifications to provide necessary support for the claims. This cannot be accomplished with a provisional application, which is often filed pro se (by the inventor), and which often provides insufficient information which may narrow the claims.

With termination of the IDP, some inventors may consider filing a provisional application instead. However, in order to be effective, a provisional application must include a complete description of the invention. Preferably, it should be drafted by a competent patent attorney.