From Concept to Patent Number: A road map for a productive relationship between inventors and patent counsel

Tuesday, January 5, 2016 - 16:08

Patent attorneys often have the reputation of being a unique class of professionals, not unlike the individual inventors with whom they work during the process of obtaining patent protection for new products and technologies. Unlike other legal professionals, patent attorneys are required to pass a federal bar examination that is administered by the United States Patent and Trademark Office (USPTO). To sit for this federal bar examination, a lawyer must have at least an undergraduate degree in science or engineering, or have completed a certain amount of college coursework in one or more areas of science. In fact, many patent attorneys were research scientists or worked as chemical, mechanical or electrical engineers before they practiced law, and some even have one or more graduate degrees in a technical discipline. 

 

The Initial Inventor Meeting

Many inventors, who often also have technical backgrounds, do not necessarily know that the lawyer with whom they are meeting can speak their language and can understand the complexities of the subject matter that is to be discussed in the initial attorney-client meeting. Without this awareness, the inventor may be somewhat skeptical with regard to what can or should be accomplished when meeting with an attorney for the first time, and the initial meeting may be difficult or simply unproductive.

Accordingly, after a few less than productive first inventor meetings, I developed a short monologue that I deliver each time I meet with an inventor for the first time. Rather than launch immediately into a discussion of the invention, I tell the inventor, in a brief but complete way, about the 12 years that I spent as a research scientist at Battelle Memorial Institute in Columbus, Ohio, and about the very interesting and challenging contract research in which I was involved during my time there. I also mention the 18 years that I have been practicing patent law, during which I have been responsible for handling a great many patent cases, involving everything from biotechnology to medical devices to consumer products. After my short self-introduction, I ask the inventor to provide me with a brief educational and professional summary. 

For me, engaging in this initial 10- to 15-minute discussion between patent attorney and inventor has proven to be very effective with regard to breaking the ice and establishing an initial level of trust between the parties. Inventors and other clients all want their attorney to listen carefully to their issues and concerns, and demonstrating to the client that you, as a patent lawyer, are uniquely suited to understand what they are about to reveal, goes a long way toward laying the foundation of a productive relationship.

 

The Invention Disclosure Document and the First Independent Claim

I often tell an inventor with whom I am meeting for the first time that patent attorneys are not omniscient and that inventor input and candor are critical. I personally hold myself out as primarily a facilitator whose job it is to capture all of the relevant information and turn that information into a coherent and concise, legally enforceable document that will be clearly understood by the USPTO and by the federal courts, should that become necessary. 

To accomplish this goal, I ask the inventor to complete a basic invention disclosure form that provides all of the relevant technical information about the invention that is to be the subject of the patent application. Candidly, this is often where the inventor-attorney relationship encounters its first real obstacle. Many companies that engage in ongoing research and development provide their inventors with a form document that is to be completed when an invention occurs. These documents often are lengthy and complicated and include questions that most busy scientists and engineers will simply not take the time to answer.

When given a 10-page invention disclosure document to complete, many inventors will write a few sentences, attach a rough hand drawing or unlabeled CAD drawing, then submit the document to the appropriate internal party, such as an intellectual property manager. When those documents come to me, the first thing I have to do is go back to the inventor with a large number of my own questions in an attempt to gather the information necessary to write the patent application. Inventors can be frustrated by this interaction and may complain to their managers that the patent lawyer “just doesn’t get it.” To avoid this scenario, I recommend a very simple invention disclosure form that includes these four basic requests:

i) in one to three paragraphs, please describe the invention in general terms and include a description of the area of technology to which it relates (e.g., food pathogen detection, friction stir welding, etc.);

ii) in one to three paragraphs, please describe the shortcomings of, or problems associated with, earlier related technologies (e.g., too complex, too expensive, etc.) and provide a description of how the invention effectively overcomes these shortcomings or problems;

iii) please provide a detailed description of the invention that includes an explanation of its function and a complete list of all the ingredients in a formula, all the steps in a process or method, or all the structural and mechanical components in a device; and

iv) please provide one or more structural formulas, labeled schematics or labeled illustrations of the invention, including all of the constituent parts shown in proper relation to one another. If CAD drawings are offered, I ask that the inventor be certain to label all of the parts so I do not have to fabricate names of my own. 

 

I have found that using this very basic format for an invention disclosure form encourages inventors to focus on what really needs to be provided and usually results in a mostly complete document from which I may draft the patent application. A detailed and complete invention disclosure document typically makes drafting a patent application much faster and may result in significant cost savings to the client with regard to attorney’s fees.

After I have received a completed invention disclosure form, or if one has been provided to me before the initial inventor meeting, in almost all cases, I meet with the inventor in person to draft at least one independent claim. Drafting one or more claims together helps the inventor understand what patent claims are and helps me be certain that I understand the invention and have identified the key points of novelty on which to focus. I always ask in-house counsel or key business personnel, such as a chief technology officer, to participate so that I can gain an understanding of the commercial markets into which the relevant product or technology will be introduced. In my opinion, patent claims that are drafted in a business vacuum may not be worth the paper on which they are written. In other words, your patent claims should read on your products and technologies and protect your market position.

 

The Patent Application and Patent Prosecution

With all of the necessary information in hand, I then draft the patent application based on the invention disclosure and upon any prior art patent documents or other documents of which I have been made aware, either by the inventor or from previously conducted patent searches, if any have been done. I provide the inventor with a complete patent application that includes, when possible, formal patent drawings based on CAD images, solid models or photographs provided in the invention disclosure document. I ask each inventor to carefully review the application and confirm that all relevant details are correctly shown in the drawings and described in the specification section of the application. 

This is often where the inventor-attorney relationship encounters its second real obstacle. In-house patent counsel and key internal business personnel must require the inventors to carefully and fully review any draft patent application received from outside counsel. A patent is an esoteric combination of a legal document and a scientific document, and careful attention must be given to reviewing draft applications for accuracy and completeness. New matter cannot be added to an application once it has been filed with the USPTO, so the time for careful review is before an application has been filed. The inventors must be honest and open with the patent attorney if there are mistakes in the application, and the patent attorney must be willing to listen carefully and make any required corrections. Published patent applications and issued patents live on in infamy in the public record, so there really is no margin for error when drafting patent documents. Working as a team, an inventor and a patent attorney can create a solid, accurate and enforceable patent.

After the patent application has been filed and the USPTO has reviewed the claims, the first USPTO Office Action will most likely include a rejection of some or all of the claims originally submitted with the application. While it is primarily the responsibility of the patent attorney to review the rejections and any prior art patents or other documents cited against the claims by the patent examiner, it is often very useful for the inventor to also review the Office Action and the cited prior art. The inventors may effectively assist the patent attorney with developing claim amendments and arguments for overcoming the rejections of the patent examiner. 

In my practice, I report each USPTO Office Action to the client and solicit the inventor’s input, when appropriate. I am always eager and willing to hear an inventor’s input and have on many occasions found their insight to be very useful in obtaining allowance of the patent claims. However, as with the rest of patent practice, responding to Office Actions is a time-sensitive and deadline-driven task. Accordingly, patent attorneys should solicit inventor input as soon as possible, and inventors who wish to participate in developing responses to an Office Actions should be willing to have timely discussions with their patent counsel. Missing deadlines is never a good thing, and in the world of patents, it can result in the irretrievable loss of patent rights. Thus, both inventors and patent attorneys must always be cognizant of time limitations and work together to meet all critical deadlines.

 

An Ongoing Engagement

Drafting and prosecuting a patent application through issuance as a patent typically requires two to three years or more. Thus, the relationship between the inventor and the patent attorney is an ongoing, iterative relationship in which communication will always be important. I believe it is better to err on the side of too much communication rather than too little communication. New developments in products and technologies occur all of the time as research and development is not a static process. Inventors and their managers must be willing to regularly reach out to their patent attorneys and engage in the dialogue discussed in this article for the sake of protecting future versions of products and technologies, as those things come into existence. As a patent attorney, I am always here to listen, and I look forward to each new patent case.

 

Courtney J. MillerMember of the intellectual property group and patent division in the Columbus, Ohio, office of McNees Wallace & Nurick LLCcmiller@mwncmh.com