Tuesday, January 22, 2008

Honesty with inventors - setting expectations

Some background on inventor-attorney/agent interactions

Inventor: Can we patent this?
Patent Person: 1) Definitely - I can get narrow claims on anything 2) Probably - but let me do a quick search and get back to you 3) No, the art is dead on, you stole this idea, disclosed it three years ago, sold it two years ago, and it was an obvious variant of everything ever known by everyone ever. Never bring me such worthless ideas again. Peasant.
Inventor: How much will it cost?
PP: 1) More than this idea is worth, 2) Thousands and thousands of dollars 3) It depends
Inv: How long will it take?
PP: 1) Longer than the useful life of this idea 2) Three years, plus or minus 3) It depends
Inv: What's the process?
PP: 1) What is this alleged process you speak of? 2) We'll go back and forth a few times with drafts and refinements until we're happy with the disclosure 3) We'll go back and forth a few times with drafts and refinements until you run out of money.

So it turns out that a big part of optimizing patent preparation, and having good answers for inventors, is having a good process for getting ideas into the office. By helping inventors do the pre-work, IP managers can make patent drafting far less painful for the attorney's, and less expensive for the applicant.

Below is a process IP managers can use to give to inventors and set expectations. There is another process that gets the claims sketched first, but it is far more complicated and would take far more than the time I have given myself to do this post. It is also possible, if the IP manager is admitted to practice before the PTO, for them to just draft the case. However, with lots of disclosures coming in, it is far more efficient to distribute the work. In any case, here's a detailed process:

  • Receive invention disclosure
  • Do a quick search from the invention disclosure
  • Meet with inventors to discuss invention
  • Meet with IP committee to fund application filing
  • Together with inventor, draft examples & drawings
  • Re-search art from examples
  • Review art and edit examples
  • Follow-up with inventors, together sketch claims from examples
  • Draft claims
  • Send Invention Disclosure, Claims, Examples, Drawings, and Art to law firm for application drafting
  • Hold invention and filing strategy meeting with drafting attorney, ip manager and inventor
  • Drafting attorney creates application first draft, which is sent to the IP manager for review
  • Inventor and IP manager review case, make edits
  • Attorney produces final draft
  • Inventor and IP manager review case, make (hopefully few) edits, return draft to drafting attorney
  • Application filed

Just about every step in this process can be optimized by an IP manager.

If you are overwhelmed by invention disclosures right now, make a spreadsheet with these categories as headers, then go through each disclosure and put them in one of the above categories. At least then you will know what needs to be done next.

Hope this is useful.


Anonymous said...

You can find a range of patent cost, patent attorney fees and patent insurance cost information at

Unknown said...

Great resource, thank you.

Hopefully the process above will cut the time spent by drafting attorneys to more like 10-12 hours per case. The next few posts will better detail how to do that.