In our last article, we discussed how to prepare for your initial meeting with a patent attorney. Now that you have had an initial meeting with your patent attorney and have decided to engage the patent attorney, it is time to discuss your invention with the patent attorney in an invention disclosure meeting (IDM). The following will give you a sense of what to expect in that IDM. A productive IDM is key to a successful drafting and examination of the patent application and enforcement of the resulting patent.
Before the IDM, it is typical for an inventor to provide written materials to the patent attorney describing the invention. Acceptable materials include: (1) documents that describe the invention to those who can build the invention (e.g., a design specification or a functional specification); (2) documents describing the invention to company management, and (3) documents prepared by marketing personnel to inform potential investors or customers. With these materials, your patent attorney will become familiar with the terminology relevant to your invention and know what initial questions to ask.
Depending on the nature of the invention and your patent attorney’s familiarity with the subject matter, the disclosure meeting may take anywhere from a half hour (such as in simple mechanical cases) to a couple of hours. For example, disclosing a software invention to a patent attorney having a background in computer science usually take 50-60 minutes, but it is not uncommon for an IDM to take two hours, particularly when the software context is new or the invention is complex. Consequently, a significant amount of time is required to understand the context. Once the context is understood, then the novel aspects of the invention may take only a few minutes to describe.
Telling A Story
A patent application tells a story, beginning with a problem that your invention solves. It is prudent to include, in a patent application, a description of the problem along with one or more prior solutions (or attempted solutions) to the problem. This description will help the patent attorney better understand the novelty and non-obvious factors of your invention and subsequently increase the chances of convincing a future patent examiner to grant a patent. Specifically, non-obviousness factors include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results. The description of the problem and prior solutions is often included in the Background section of a patent application. The other main sections are the Detailed Description section and the Claims section, which are described in more detail below.
Acronyms and Terminology
It would be safe to assume that your patent attorney is not aware of company-specific acronyms and technologies unless the patent attorney has worked with your company in the past. Thus, some education on your part may be needed to help your patent attorney understand the context of your invention. Also, depending on the initial meeting with your patent attorney, it may be safe to assume that your patent attorney is not aware of industry-specific acronyms and technologies.
With this in mind, a patent application is likely to include genericized terminology and description in place of company-specific technologies and perhaps even industry-known technologies. Remember, a patent application is intended to not only cover your invention, but variations of your invention that rely on the same core novelty. While it may be acceptable to reference existing technologies in the patent application, because technologies change frequently it is important for a patent application to generically describe what existing technology does, though such a description may be brief.
Some inventors assume that the more details included in the Detailed Description section, the narrower the scope of the invention. It is important to note that the Claims section defines the scope of the invention, not the Detailed Description. Also, the more details an inventor provides for inclusion into the Detailed Description, the more likely it is that the patent application will survive the examination process at the Patent Office. The descriptions need to be sufficiently detailed to enable a reader of the patent application to practice the invention. Furthermore, many times, language from the Detailed Description is needed to justify minor amendments to the claims that will help get the patent application allowed.
An indication that your patent attorney understands the invention is the asking of many questions, even ones that seem basic. You can be justifiably worried if your patent attorney nods his/her head the entire time without asking any questions. (This may be a sign that the patent attorney is too prideful to appear ignorant or is simply ignorant.) If this happens, you can almost guarantee that the patent application will fail at its job of describing and claiming the invention properly. On the other hand, a patent attorney who asks many questions is one who is very likely to understand the invention and produce excellent work product.
The Claims section includes multiple claims, including at least one independent claim and typically multiple dependent claims. A claim is a brief description of the core inventiveness of your invention. To be valid, a claim should be fully described in the detailed description portion of the patent application. The main independent claim should exclude all unnecessary features. In case the independent claim does not stand (whether during the examination process or during a post-grant proceeding), a dependent claim acts as a backup claim that recites features that are not already recited in the corresponding independent claim. Dependent claims often recite additional technological context or extensions of the invention.
To obtain the broadest and most valid claims possible, it is good practice for the patent attorney to verbally walk through what the main independent claim might look like. For example, if the invention is a new software process, then the patent attorney should ask whether performing steps A, B, and C is what is new and obtain confirmation from you on the generic language to use.
We hope the foregoing gives you a better understanding of the IDM process, what to expect in an IDM, and how to be better prepared for your next IDM. Our intellectual property professionals have many years of experience conducting effective IDMs that result in clear descriptions and claims that accurately capture the key aspects of the respective inventions. You are invited to contact us today about protecting your inventions. Remember, a great patent starts with a great IDM.
Disclaimer: This article is purely a public resource of general information that is intended, but not guaranteed, to be correct and complete. It is not intended to be a source of solicitation or legal advice and is for informational and entertainment purposes only. The information is not intended to create, and receipt does not constitute, an attorney-client relationship. The laws of different jurisdictions may be implicated, and facts and circumstances can vary widely. Therefore, the reader should not rely or act upon any information in this article, but should instead seek legal counsel for individualized legal advice. For more information, please contact a firm attorney through www.hickmanbecker.com.