The Disclosure Document Program was a service provided by the United States Patent and Trademark Office (USPTO) that allowed inventors to file a description of their invention with the USPTO in order to establish the date of the invention. The purpose was to establish the date of the invention for the purpose of the then-existing patent law and its “first to invent” rule.
The USPTO Disclosure Document program ended in 2007. So, inventors are now advised to have friends or others witness a complete writeup of their invention. An inventor can get two of their friends or associates to witness their inventor’s notebook. Or, they might have their patent attorney witness the notebook or other documentation describing the invention.
If friends serve as witnesses, they must be capable of understanding the invention. They should make a recommended notation of “read and understood” on each relevant page of the notebook that they sign and date.
The witnesses must not stand to gain from the invention. The reason to have two witnesses is to protect against the possibility that one of them becomes the death, incapacitation, or “tainting” of one of them.
A witness is tainted if they stand to gain or are shown possibly not to have understood the invention. A notary would work only if the notary could later testify as to what was on the page at the time, which is not likely.
The USPTO now applies the so-called “first to file” rule in awarding patents. This rule states that whoever is the first to file a patent application for an invention owns the rights to that invention, even if that person was not the first to come up with the idea. The America Invents Act went into effect in March of 2013, at which time the U.S. changed from a “first to invent” to a “first to file” rule.
Before 2013, the U.S. patent law applied the “first to invent” rule and the Disclosure Document Program was part of that system. A patent was awarded to the inventor who could prove that they were the first to think of the invention and put it into practice. This was true, even if the first inventor was not the first to present a patent application. Now, however, the “first to file” patent rule applies to every U.S. patent filed on or after March 16, 2013.
Why Would I Have Wanted to File a Description of My Invention with the USPTO?
An inventor may have wanted to file a description of their invention with the USPTO in order to protect their right to a patent. Filing a disclosure document was a way to prove that the inventor who filed the document was the first to think of the invention.
If anyone else stole the invention or tried to patent the same invention, the inventor could use the filed disclosure document as evidence that they were the actual, original inventor and the one entitled to a patent of the invention.
For How Long Did the USPTO Keep A Disclosure Document on File?
The USPTO kept a disclosure document for 2 years. After that, the USPTO destroyed it unless the inventor who filed it referenced the disclosure document in a patent application filed within the two year period.
The separate letter filed in the related patent application would identify not only the patent application, but also the Disclosure Document by its title, number, and date of receipt in the PTO. Acknowledgment of such letters would be made in the next official communication or in a separate letter from the USPTO.
Inventors also had to keep in mind that any public use or sale in the United States or publication of the invention anywhere in the world more than one year before the filing of a patent application on that invention would prohibit the granting of a US patent on it. Foreign patent laws in this regard were possibly much more restrictive than US laws. This compilation may have been what led to abandonment of the Disclosure Document Program and the “first to invent” system.
What Did I Have to Include in My Submission to the Disclosure Document Program?
The USPTO requirements for the disclosure document program were fairly minimal. However, an inventor had to include a few items to successfully file their description:
- A Disclosure Document: The inventor had to include a description of their invention. The best descriptions explained how to make and use the invention, as well as its use or utility, especially in chemical inventions;
- Drawings: The inventor was able to include drawings, but videos and working models were not accepted as part of a disclosure document packet;
- A Cover Letter: In addition to the description, an inventor also had to submit a letter stating that they were the inventor and intended the submission to be used for the disclosure document program. There was a Disclosure Document Deposit Request form on the USPTO website that could serve as a cover letter;
- Filing Fee: There was a $10 filing fee.
A standard format for the Disclosure Document was required to facilitate the USPTO’s electronic data capture and storage. The Disclosure Document was required to be on white letter-size or A4 paper, written on one side only, with numbered pages. Text and drawings had to be dark enough to permit reproduction with commonly used office copying machines. If a document was submitted on oversized paper, it was rejected. Attachments such as videotapes and working models were refused.
The original submission was not returned. A notice with an identifying number and date of receipt in the USPTO was mailed to the customer, indicating that the Disclosure Document could be relied upon only as evidence and that a patent application had to be diligently filed if patent protection was desired.
Did the Date of Submission of the Disclosure Carry Over to My Patent?
A disclosure document served only to prove that the person who submitted it was the first to conceive of the invention. The date of its receipt in the USPTO did not become the effective filing date for the inventor’s patent.
Did Submission of the Disclosure Document Mean I Could Wait for Two Years to File for a Patent Without Losing Any Benefits?
Waiting for two years to develop an invention described in a disclosure document program was not advised. While submitting a disclosure document may have proved that the inventor who filed the document was the first to think of the idea, they also had to show that they had been diligent in developing their invention and in applying for a patent.
As mentioned above, the USPTO kept Patent Disclosure Documents for two years and then destroyed them, if the Office had not received a separate letter in a related patent application for the invention within the two year period. In other words, if a patent inventor took a 2 year vacation from working on patenting their invention, they were likely to lose out to another inventor even if the inventor could prove that they thought of the idea first.
Should I Contact a Patent Attorney?
As can be seen, the patent application process is subject to change. If you have any questions about the current process for patenting an invention, or about how the program works at the present time, an experienced patent attorney should be able to answer the questions you may have. A patent attorney can guide you through the process to a successful patent of your invention
