You are an inventor and you have an appointment to speak with a patent attorney about your invention. In addition to answering your questions, the purpose of the initial interview is to provide the registered patent attorney with a description of your invention, information regarding public disclosure of the invention, and information helpful to the attorney in drafting a patent application. The following are some of the topics to be prepared to discuss.
Ownership of Invention:
The most common situation is where an inventor developed an invention while employed by a company that could assert ownership of the invention. You should come prepared to discuss the employer’s line of business and the similarity to your invention, whether you developed the invention without the aid of your employer’s workspace, tools, and other resources, and whether you signed any agreements, especially any agreements to assign inventions to the employer. You should bring a copy of any employment agreements.
Another issue is co-inventors. You should come prepared to discuss any co-inventors or persons who may consider themselves co-inventors. Inventors are those who creatively contribute to the creation of an invention. You should be prepared to discuss persons who helped conceive of the invention. While someone who merely comes up with an idea is not a co-inventor, a person who both comes up with an idea and helps figure out how to implement the idea could be a co-inventor. You should also be prepared to discuss persons who helped build a prototype or otherwise implement the invention. While someone who merely follows instructions to build a prototype is not a co-inventor, a person who is hired to build a prototype and who then creatively makes design suggestions to overcome implementation problems could be a co-inventor.
Public disclosure of the Invention
In the United States, you can be denied a patent if before the filing of a patent application, the invention was publicly used, on sale, published, patented, or otherwise made available to the public. In some circumstances a one year grace period is available. Other countries have similar laws, many without a one year grace period. While the law on public disclosure is beyond the scope of this article, you should be prepared to discuss the date of the invention, and each third party who knows of the invention, whether they signed a non-disclosure agreement, and the dates of each disclosure. Copies of any publications, sales brochures, or webpages should also be provided. Information on prior patent applications or patent publications should also be provided. Also, if you are planning to engage in any of the above activities so that your patent application can be prepared and filed before you engage in any of the above activities.
Previous state of the art
What problem does your invention solve and how were things done before your invention? Had others recognized the problem or were you the first the appreciate the problem. Had there been previous attempts to solve this problem. If so, how are these previous attempts different from your invention? Have you searched for previous patents or publications to see if your invention is novel? If so, it is important to provide information on your methodology and the fruits of your search.
Be prepared to discuss competitors and their competing products. Photographs and marketing materials may be useful. Any information about competing patents is especially important.
Have you built a prototype or had one built for you? Were there special challenges that had to be overcome? Were there any unexpected results? If others helped you build a prototype, did they sign either a non-disclosure agreement or an agreement to assign any improvements they came up with? Copies of any such agreements are helpful.
Method of using
Sometimes how an invention is used can be an additional element of novelty. What are some examples of how the invention can be used? Do any of these uses arguably have novelty independent of the invention itself?
It is preferable to obtain a patent on an invention whose use can be easily detected. This makes a patent more valuable. How would someone detect that a third party is using your invention? In some cases, detection is easy. For example, if someone is using a new type of hammer, it would likely be clearly visible when being used. In other cases, detection is difficult. For example, if the invention is some software, it may be difficult to determine what software a computer is using without expensive testing. It may be possible to draft patent claims to make infringement easier to detect. Be prepared to discuss with the patent attorney how infringement of your invention would be detected.
All of your previous patents should be brought to the attention of the patent attorney. This is especially true if your current invention is an improvement over something that you previously patented.
Obligation to assign
If you are planning to assign the invention and/or patent application to another, this must be discussed with the patent attorney. If you have a business entity (e.g. a limited liability company (“LLC”), corporation, etc.) bring the organizational documents and be prepared to discuss.
While the above is not an exhaustive list of possible topics, being prepared for at least the above will make your initial inventor interview with a patent lawyer more efficient and productive. And will enable them to provide you with better advice.