Patent Law

Setting The Stage and Issuing Warnings for the Invention Disclosure Meeting

By Russ Krajec, Esq.

This is part of a series of posts that deal with Invention Disclosure Meetings.  The first one discusses the Art of the Disclosure Meeting and the second talks about Doing the Disclosure Meeting.

I like to start my disclosure meetings by covering a few important areas.

I first try to explain the general process. 

I explain that in the disclosure meeting I want to capture the essence of the invention, along with as many different variations that may be possible.  I also want to understand what has been done before and what is different about the invention over the prior art.

I set expectations for when I will deliver a document for them to review and what I expect that document to be.  Since I work on a fixed fee basis, I try to give the inventors a complete and thorough document, as complete as I can possibly make it.  I don’t like to include questions in the text for them to answer.  Generally, I send them informal figures and have formal figures ready when the application is filed.

I commit to a due date for my deliverables.  In every case, I give an estimate that I reasonably believe I can beat by several days.  I want to beat my dates whenever possible.

Once the process is explained, I have one warning: do not criticize my claims in an email.  Most of my inventors are tech savvy and use email for everything.  I stress to them that even though out conversations may be protected by attorney/client privilege, there is no need to generate unnecessary problems. 

I paint them a picture of their competitor’s attorney standing in front a big easel with their email blown up to giant size, explaining to a jury “The Inventor himself said that this claim is not patentable” or “Look, the Inventor said this limitation is too broad”.

I implore them to call me or send an email requesting a telephone call.  We can talk about the claims all we want, beat them around, get other people’s opinions, or argue about them, but please do not write those kind of comments and send them to me.

Full post as published by Anything Under the Sun Made by Man on February 23, 2009 (boomark / email).