All inventions start out as an idea. Sometimes that idea is part of a concept involving a particular technology. Sometimes it is an approach to solving a problem. Sometimes it is a way to improve something that is already in the marketplace and being sold. But one thing is for certain: An idea is not an invention.

“Idea” is defined by the Merriam-Webster dictionary as: (1) “a thought, plan or suggestion about what to do,” (2) “an opinion or belief,” and (3) “something that you imagine or picture in your mind.”  None of these three definitions seems to require anything particularly precise, but rather imply something that is pretty malleable. For example, while a plan can actually be quite detailed and have a rigid time frame and/or mandatory actions, it can also be exceptionally vague.

Consider the difference between the statements, “Let’s discuss business over lunch,” and, “I’ll see you at lunch at 11:45 a.m. on Tuesday, March 3, 2015, at Firefly on El Camino Real in Encinitas, CA. At noon we’ll discuss recent sales, at 12:15 p.m. we’ll discuss salaries, at 12:30 p.m. we’ll discuss whether we need a new employee, and then we will leave for the office by 12:45 p.m.” Perhaps both statements could be considered an idea or plan for lunch, but the first statement is amorphous – we don’t know what day, what time, where to go, what will be discussed, etc. It would be hard to organize that lunch or be prepared for the discussion without asking many more questions. The first statement is clearly an idea for lunch.

On the other hand, the second statement gives us much more guidance. We have the critical information – where to be and when, and what to expect during the allotted time because we have an agenda. In other words, we have a much better understanding of what our behavior has to be in order to participate in the meeting. So this statement is more akin to an “invention” for a process for a lunchtime meeting.

While the example above is unquestionably an oversimplification of the difference between an idea and an invention, it does illustrate one of the first tenets of inventions: That is, inventions have tangible specifics. An invention means that you, the inventor, have a complete conception of how to bring the invention into being –  the necessary know-how so that you can fully describe the invention and teach how it is made and used. You don’t need to actually make and/or use the invention, but you do need to be able to communicate in writing how that is done.

Most entrepreneurs find that when they first sit down and try to communicate their invention in writing, it becomes painfully obvious that they are still in the “idea” stage. That is because without some details that essentially lay down parameters or boundaries, it is difficult to know what is encompassed by the invention and what is not. But because figuring out what details are needed is not always easy, many entrepreneurs find answering a series of questions to be beneficial.

Invention Disclosure Form

An invention disclosure form generally lists a number of questions that helps the entrepreneur turn the idea into an invention. These questions not only help the entrepreneur to focus his thoughts and move from idea to invention, but also have the added benefit of identifying the information that should be included in a patent application. The following questions are particularly helpful:

• What is the purpose of the invention? What does it do? How does it do it? What problem is it solving?

• What parts/steps define the invention in its best or ideal form? What does each contribute? Are any parts/steps new or used in a new way? Which parts/steps are conventional or old technology and used as they have been in the past? Do any of the parts/steps interact?

• List all of the parts or steps that are essential/required. Is the interaction of any parts or the order of any steps critical? Ask yourself what would happen if this part/step were left out or changed – would the invention still work?

• Are there any critical ranges required in order for the invention to work? For example length, weight, pressure, temperature, hardness, elasticity, rigidity, distance, size, etc.? Are there any parts that must be made of a particular material(s) (e.g. a knee replacement device made of titanium)?

• Prepare a sketch of the invention that includes all essential parts and give each part a unique label (e.g. 1, 2, 3, etc. or 101, 201, 301, etc.). Focus on the essentials and omit unnecessary details and any measurements unless they are critical to the operation of the invention.  If the invention is a process or method, prepare a flow diagram.

• List the alternatives – how could the parts/steps be changed or substituted with equivalent parts/steps without changing the basic invention? Identify any “generic” descriptor for the parts/steps listed (e.g. “fastener” to describe nails, screws, tacks, etc.; “plastic” to describe polypropylene, polyethylene, polyvinyl, etc.).

• Is it possible to combine/change/eliminate any of the parts or steps?

• How could you improve the invention? What would be added? What would be removed?

• Could the invention be used for anything else besides what you intend (e.g. a monkey wrench used for tightening pipe junctures and also as a jar opener)?

After questions such as these have been answered, the idea has normally metamorphosed into an actual invention that can now be described with specificity and in concrete terms. Importantly, this process also helps to identify aspects of the invention that will either simply not work and must be redesigned or aspects that could serve as the starting point for the second generation product/process.

Once the invention has been fully conceived and described, the inventor can begin to figure out whether it meets the novelty and non-obvious requirements for patentability. The essential features of the invention are now apparent and to see whether the invention is actually novel, the inventor can search for those features in the patent, scientific and technological literature. The results of this search will also give the inventor a reasonable idea as to how similar the invention is to other products, devices, methods, and procedures that are currently in use or have been used in the past. The more differences that exist in the structure of the invention or the way in which it works, the less obvious (or more non-obvious) the invention becomes.

Susan Gorman, Ph.D., Esq., is principal of Gorman IP Law, a law firm focused on helping companies leverage intellectual property assets to maintain a competitive advantage, enhance market share, plan for growth and better manage resources and expenses. Through a proprietary process, Gorman IP Law helps businesses build a formal IP strategic plan that defines your business goals, establishes benchmarks and allows you to better project costs. Dr. Gorman can be reached at susan.gorman@gormaniplaw.com.

The information contained herein has been prepared by Gorman IP Law, APC, for informational purposes only and is not legal advice.