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Harvesting Engineers’ Ideas through Invention Disclosure

Medical device companies make their money by developing innovative products and selling these products to the surgeon and hospital marketplace. The key precursor to the development step is the “harvesting effort.”

What is the harvesting effort? It is the internal process usually performed jointly with legal and R&D departments in which organic ideas are hatched to meet clinical/marketplace needs. The harvesting effort begins with product development engineers who come forward and submit their ideas for internal review and vetting. Why is this stage of the product development cycle so difficult? Often engineers are so busy that they do not have the time to sit down to brainstorm and document their idea. Many companies have recognized this stumbling block and provide financial incentives to their engineering staff to make the idea disclosure step more attractive. Companies that do so are usually swimming in submitted disclosures, while those that do not provide such incentives have to put forth a significantly higher level of harvesting effort to get any disclosures from their product development engineers.

Remember: Ideas are not patentable. Ideas are a concept, not an invention. An invention, though, is patentable. After a person comes up with an idea, he must put in the effort to move it from a concept to something more complex. This happens by sitting down and further developing the idea to give it more substance until it reaches the point of conception.

An example of this process may look like this: A surgeon comes to a company and complains that he has difficulty holding onto a patella to reset it when doing a total lance procedure. One of the knee engineers has an idea for holding onto the patella. He takes the initial concept and starts reviewing different ways to secure the patella, eliminating the bad ones and retaining the good ones. Finally the engineer decides on a way to hold the patella using a unique construct. He then expands on the construct to develop a user friendly clamping mechanism that can be combined with the construct. The engineer then takes this instrument idea one step further and uses a 3D printer to produce a prototype. EUREKA, the product engineer has moved the idea from a concept to an invention.

Once the idea transitions to an invention, the harvesting effort moves on to the invention disclosure stage. Most companies have their own form style or use the form developed by their outside patent attorney. The invention disclosure process, from which a completed written form is produced, has a definite purpose: (1) Describe the invention in detail, (2) Explain how it operates, (3) State the advantages of the invention, (4) List the names of the inventions, (5) Reveal any prior disclosures, uses or sales, (6) Address questions of existing prior publications, and (7) Identify any known prior art and/or competitors.

Companies may have ulterior motives for asking the engineers to complete the invention disclosure form. This type of document helps the inventor to organize her thoughts and give a clear explanation about her invention. Once completed, the form serves as evidence of “conception” of the invention and arguably could be interpreted as constructive reduction to practice.

When meeting with a new engineer or just refreshing the engineering staff on the reasons to fill out the invention disclosure form, several tips should be emphasized. The first is to describe what specifically makes your invention different from others and provide detailed answers as to why your invention is better and what makes it better. Answers to these questions will help the patent attorney draft the application to emphasize these points as well as use them during prosecution if an obviousness rejection is received. A second tip is to explain any unusual terminology that may be used. The third tip is to describe in detail all of the parts of the invention. If possible, use computer models or sketches to ensure completeness. Also, describe how these parts work together and how they are different from the prior art/competition. The fourth tip is to ask the inventor why he did things in the way described and not in some other manner. Inquire further as to how he could have accomplished the same end but differently. These questions push the inventor to think of alternative designs and methods that in the future may be competitor design-around attempts. The fifth tip dovetails with the fourth in that it also motivates creative forethought on the part of the inventor that can yield predictions regarding the potential derivations of future competitors: Tell the engineer to allow her imagination to run wild when answering these questions and not to limit herself to the existing prototype or computer models.