TAKEAWAY: Disclose to your company’s legal counsel or patent attorney all written materials prepared in relation to your new software or mobile application. Include any wireframe diagrams, screenshots, and/or mockups, regardless of what form they are in. If you don’t have any existing examples, work with your company’s developer, illustrator, and/or patent attorney to sketch some illustrative dataflows and screenshots.
Many inventors of software and mobile applications have difficulty determining how to disclose their invention to their company’s patent attorneys for the purpose of preparing patent applications. Software and mobile applications can be especially challenging as compared to other inventions because they often develop quickly from an idea into a functioning app, without as much re-design, testing, and approval that would go into something like a new consumer device.
In general, inventors of new software and mobile applications should be as thorough as possible about compiling any relevant technical documentation, such as any of the following:
- slides or other presentations regarding the software or mobile app, including business justifications for the technology, and potential “use cases” or variations;
- internal-facing “product requirements documents” or “technical requirements documents”;
- system architecture diagrams, including blocks or boxes depicting various system devices, such as web servers, client devices, and the Internet;
- flowcharts and/or ladder diagrams depicting what messages and/or data will be sent back and forth between the user’s client device, any web or mobile app servers, and/or any third party servers or other user devices; and
- pseudocode, or any other written code or materials you have prepared regarding the new software or mobile application.
This documentation can take the form of hand-written notes or sketches, PDFs, Word documents, PowerPoint presentations, or any other electronic files. Often, the best approach is to disclose to your patent attorneys essentially any written materials prepared in relation to your software or mobile application. You may even be advised to prepare additional sketches or descriptions if your existing materials are relatively early-stage. Being over-inclusive in the disclosed documentation can be beneficial because the value of patent applications is often correlated to the breadth and depth of their technical disclosure, among many other things. If the amount of materials becomes voluminous, it can be helpful to use Dropbox, Box, or any other secure site for sharing materials, instead of emailing them.
As always, when collecting and preparing invention disclosure materials, it is best to focus on providing details on the most novel and innovative aspects of the software or mobile app. For example, it can be advantageous to focus more on detailing novel data flows, user interfaces (UIs) and databases, as opposed to generic and commonplace data/presentation architecture layers or predictable business motivations. Finally, as always, be sure to document the individuals involved in app’s conception, especially with respect to any third-party developers with whom your company should have favorable IP agreements in place.