Employee’s Inventions: Check-List for Preparing the Initial Meeting with the Patent Attorney

inventor interviewMany times, inventors and start-up entrepreneurs realize they need professional help in order to protect their inventions before the patent office. This is a good realization to have, as early as possible.

Unfortunately, not too many inventors and start-up entrepreneurs recognize that patent attorneys are (a) expensive and (b) substantially reliant on the information they receive.

Since, generally, only a few patent attorneys are exceptionally talented at drawing information out of inventors, the results a patent attorney will get from the meeting with the intentors will highly dependent on the efforts, the interviewee puts into communicating with the patent attorney.

The following checklist may be helpful as a guide for inventors to prepare for the initial consultation with a patent attorney:

1. Identity of the Inventor(s)

The following questions should be clarified in the consultation in the context of inventorship:

  • Who is or who are the inventor(s), i.e. who has participated in the implementation of the invention? Please note the full name and place of residence of every inventor. Additionally, it is also advisable to note the phone numbers or email addresses of the inventors. The patent attorney will need this information if any questions arise during the drafting of the application documents.
  • Will the inventors be unavailable for certain periods of time?
  • Who of the inventors have been in an employment relationship at the time of the realization of the invention or before? In this context, it is necessary to clarify whether or not there are obligations to transfer the invention to a company or the employer. This might for example be the case if the invention is not a free invention.

2. Identity of the Applicant

Before filing an patent application or a utility model application, the identity of the applicant (i.e. name and address of the business/residency) must be known. Only the applicant and his representative will be formally entitled to act in the procedure before the patent office, including for example to file a request or amend the claims.

A natural person or a group of natural persons may be designated as the applicant(s). Alternatively, a legal person or a group of natural and legal persons may be designated as the applicant (s). For example, the applicant may be a limited liability company (LLC) or a corporation.

The following questions should be addressed before the meeting with the attorney is scheduled:

  • If the applicant is not identical to the inventor: how was the invention transferred to and assigned to the applicant? For example, an employee’s invention may have been claimed by an employer or a company, or the invention was transferred by way of a contract signed after the invention was made.
  • What is the legal form of the applicant? Are there documents available which may document the legal form, e.g. register excerpts? What is the address of the company?
  • Is the applicant entitled to any state funding? For instance, in Germany a state funding may be requested in the form of “Verfahrenskostenhilfe” if the applicant is poor, or in the form of a “KMU-Patentaktion”, if the applicant is a small business. Similarly, in the U.S. the applicant may apply for a small entity status or a micro entity status. Are there any documents available, which may prove the eligibility of the applicant to the state funding?

3. Features of the Invention

The technical features and experimental data provided in the inventor interview will be crucial information to the patent attorney for drafting a high quality patent application.

  • Which are the technical features the inventors consider to be essential vis-à-vis the known state of the art? What is the inventive concept?
  • Is the invention predominantly an innovative product (or device) or predominantly an innovative process (or use)?
  • Which advantages or effects are achieved by the invention? Are there any disadvantages of the prior art products or processes, which have been overcome for the first time?
  • Has the invention been implemented? Is a working prototype available? If possible, the prototype should be taken to the meeting with the patent attorney. If a prototype is not available: what is the status of the development of a prototype?
  • Are there are documents (technical drawings, descriptions, experimental protocols) which describe the invention?
  • Are further experiments being carried out or has the development of the inventive product been finished?

4. Disclosure of Inventors

An invention can only be protected by a patent or utility model application, if the subject matter defined in the claims is both novel and includes an inventive step in view of the prior art.

  • Has the invention been submitted by the inventor as a manuscript for publication (dissertation thesis or scientific publication)? When is the expected publication date? The submitted manuscript should be bought to the inventor interview with the patent attorney.
  • Has the invention been disclosed in the context of lectures or presentations? Are there any lectures or presentations planned, which will disclose the invention? If so, will the auditory be sworn to secrecy. An obligation to confidentiality may for example result from a non-disclosure agreement (NDA) or an employment contract.
  • Has the invention been publicly disclosed or did any third party have access to the invention or the prototype?
  • Are there any prior patent applications, designating the same inventors as the inventors of the present invention? If publications documents are available, they should be brought to the inventor interview with the patent attorney.

5. Prior Art Used for the Invention

The inventors should present to the patent attorney the internal or publicly available prior art documents known before realizing the invention. This ex prior facte knowledge can help the patent attorney to answer the question, whether or not the invention was based on an inventive step. The invention includes an inventive step if it was non-obvious in view of the known prior art at the time of completing the invention.

  • Does the invention have any connections to existing products or processes of the applicant? If so, what modifications have led to the successful realization of the invention? When have the existing products or the processes been published and have they been protected by patents or utility models?
  • What alternative sources of information of the applicant are available (websites, presentations)?
  • Has the invention been stimulated by publications of third parties? Which publications have been considered before completing the invention?

6. Prior Art Searches

It is strongly recommended to carry out at least a cursory prior art search before the patent application is drafted by the patent attorney. The knowledge of the most relevant prior art ensures that the invention can be reduced to its essential features, which will form the basis of the claims to be filed.

  • Have the most relevant prior art documents been identified by a novelty search? A first overview of the most important documents can be obtained using search tools of various patent offices. Which databases have been used, by whom and to which extent? Which search strategy was applied?
  • Should a supplementary research be carried out by the patent attorney before the patent application is drafted? A supplementary search will often be useful when the invention is in a technical field, which the applicant has just entered and wherein the prior art is not yet fully known to the applicant or the inventors.

7. Commercialization and Market Analysis

Generally, a patent or utility model application will secure a monopoly to the applicant, which should cover the specific product or process to be marketed. The claims of the patent application should be drafted in a way to make sure that the protection of the specific product or process is maximized.

Typically, patent application will only be filed in countries wherein the the product or process will be marketed.

  • What are the characteristics of the final product or process to be marketed? In which countries will the product or process be offered for sale? Which customers will be addressed?
  • Will the invention be marketed by the applicant or will a patent be licensed out by the applicant?
  • Who are the main competitors in the market? What are the competitors’ products? Is there a high likeliness that any competitors will copy the protected product/the protected process?

Ultimately, the decision as to which features are to be protected and in which countries protection is sought will depend on the economic needs of the applicant. However, a patent attorney may provide in the meeting information on the expected costs in the process of obtaining the patent as well as advice on the general enforceability of claims in the respective countries. This information should be taken into account in the process of decision making.

8. Special Case: Inventions in Biotechnology

If the invention resides in the fields of biotechnology, for example relates to genetic engineering, microbiology, protein or enzyme technology, the following further questions should be addressed in the inventor interview.

  • Did the inventors use constructs or organisms which are not publicly accessible in the invention? If so, have the constructs or organisms been deposited in a microorganism bank or will the constucts or organisms be deposited in future?
  • Does the invention include new gene sequences? Has a BLAST analysis been carried out? Are the gene sequences available in electronic form? Note the genebank database accession numbers.
  • Which gene sequences are state of the art or may be found in nature?
  • What are the most relevant domains of the gene or of the polypeptide sequence? For instance, the regions encoding the antigen binding site of an antibody encoding gene sequence or the regulatory regions of a DNA sequence may be relevant.

9. Special Case: Inventions in Chemistry

If the invention resides in the fields of chemistry, for example relates to a chemical substance, a medical agent or a chemical process, the following further questions should be addressed in the meeting with the attorney.

  • Is the method of synthesis of the compounds generally known?
  • Can the formulas of the inventive compounds be reduced to a lead structure or a chemical substance class, with all or a significant number of its members providing the technical effects of the invention? Which are the substituents or residues usable with the lead structure or chemical substance class?
  • Which substances have been synthesized in particular by the inventors?

10. Summary: Checklist for the Meeting with the Patent Attorney

In view of the above mentioned questions the most important facts concerning the invention should be noted before the meeting with the attorney is carried out. A copy of the note can be handed over to the patent attorney during the meeting or afterwards.

Most likely, the patent attorney will have further questions concerning specific aspects of the invention while drafting the patent application. Ideally, the contact information of all inventors and the company are given to the patent attorney in the meeting.

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