11 November 2012

What to take to the meeting?


You have finally decided to visit a patent attorney. But what should you take to the meeting?

It's important that you do your best to explain the state of the art. You should have been doing quite a bit of research yourself. If not, here's a link to a post with some searching tips.

This is important, because it can help your patent attorney to distinguish your invention properly. Not only that, but the advice that you receive should be directed to the unique features of your invention. Investigate novelty searching with your patent attorney. The more you know about the prior art before embarking, the better.

You need to bear in mind that patent attorneys need to define and describe the invention in a document consisting of A4 pages. It can be very useful to have a set of drawings as a starting point. The drawings don't need to be technical. They can simply be hand sketches. The patent documents must contain a description of the invention that is sufficient for a person of ordinary skill in the field to understand how to replicate an example of the invention. Drawings are a good place to start.

The golden rule is to put as much information as possible into the specification. It is generally not possible to add material at a later stage. So you will need to make sure that your patent attorney is given all the information that you have at your disposal. Rather prepare too much material as opposed to too little. Let your patent attorney decide what to omit or include.

You need to make sure that the inventor(s) is correctly identified. This is not a matter of choice. The identity of the inventor is a question of fact. Failure to identify the inventor(s) can be a ground for revoking a granted patent. So it's important that you provide the patent attorney with accurate details of the inventor. It is better to be conservative here. Anyone who has contributed to the invention in some material way should be named as an inventor. You should make sure that there is an agreement as to the identity of the person or legal entity that is to own the intellectual property associated with the invention if the owner(s) is not the inventor(s). In such a case, your patent attorney will need the inventor(s) to execute an assignment form.

The question of ownership can create real problems, especially once the invention starts to generate cash flow. I strongly recommend that a company be formed when there are two or more inventors involved. The inventors can then assign their rights as inventors to the company and can hold shares in the company.

And, finally, never forget the importance of confidentiality until such time as the patent application has actually been filed.

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