The current case was filed electronically with a Petition to Make Special based on Age.

During the invention disclosure meeting, I can count on running into the Kitchen Sink Invention at least once in five inventions.  The Kitchen Sink Invention is the result of grandiose expectations of the invention or extremely overbroad view of the invention.  The Kitchen Sink problem is the inverse of the myopic inventor.

The Kitchen Sink Invention is the one that is so broadly defined that it does everything.  Interestingly, I run into the Kitchen Sink Invention occasionally with software engineers, people with marketing perspectives, early stage entrepreneurs, and independent inventors.

The telltale sign of the Kitchen Sink Invention is the inventor’s statement: “It can do anything”.

A hallmark of a good software engineer is the ability to generalize a routine, feature, application, or other element so that it may be reused.  This characteristic may take some work on my part to determine the actual invention.

Marketing people tend to go on and on about the virtues of the invention without giving much meat or structure of the invention.  Early stage entrepreneurs and independent inventors also tend to fall into this category.

The disclosure meeting will go along and the inventor will state “it can do anything”.  Tongue in cheek, I ask, “Can it give me a haircut?”  Then, the inventor says “No, it can process any type of encrypted file system command applicable to CP/M operating systems.”  “Oh, I see that now.”  I write that down furiously because that statement is usually the heart of the invention very succinctly and precisely.

With brand new inventors, I often get a statement like: “There is nothing like it on the market.”  I sometimes hear this when we are talking in generalities about the invention and even before we sign an engagement letter.

The reality is that there is always something like your invention.  There is something the same size, same weight, and probably made from the same material.  Maybe your invention does something different or unique in a way no other device has done, but I guarantee I can find something like you invention in some way.

I get tipped off to the Kitchen Sink Invention when I feel like I am getting a sell job, or when the invention just seems way too good to be true.

I handle this situation by exploring the prior art.  I ask if anyone else has addressed this problem, and ask what was done to respond.  What was done by all those billions of people who didn’t have your invention?  I want to know how well those solutions worked and what the inventor did differently from those solutions.  Sometimes, I will ask about how the market has accepted the other solutions and what the inventor’s experience with the other solutions was like.

This line of questioning is directed at getting some context for the wonderful and broad capabilities that the inventor was pitching.

From my standpoint as a practitioner, I need to understand the structure of the invention.  I want to know that the lever attaches to the fulcrum, which is supported by the foundation, not that it promises to feed the world.  I cannot get you a patent on feeding the world, but I can get you a patent on a mechanism used to plant corn.

After I get the inventor to focus on the specific elements that make up their invention, I can gently focus on each element.  For each element, I want to gage how important the element is from a business standpoint and from a technology standpoint. 

From a business standpoint, does the feature differentiate it in the marketplace or make it more appealing from a cost, function, design, or competitive reason.  From a technology standpoint, I need to know if the feature is essential for the invention to function and if there are other ways to accomplish the same feature.

Part of the problem with the grandiose invention is cutting through the marketing fluff and identifying the elements that make up the invention.  Once we can identify the various elements of the invention, I try to cover each element in the interview and discuss its necessity and different ways to perform the element.  By the end of that discussion, I have most of the information I need to write a good, solid patent application.

Often, inventors stumble into two different pitfalls.  The first is myopia, where the inventors think their invention is much smaller than it may well be.  The other state is one of grandiosity, where the inventor thinks too highly of the invention.

In this post, I will discuss myopia.  In the next post, I will discuss grandiosity.

Myopic inventors see their invention as the only possible, the only logical, and the only rational implementation of a solution to a specific problem.  The myopic inventor believes that nobody in their right mind would come to any other conclusion than the invention.

A typical exchange may have the inventor extolling the virtues of the simplicity and elegance of the implementation, or describing it to have all kinds of extra features.  When I start to ask, “How would it work if it was done some other way?”  The inventor replies by shooting down the idea by finding fault in any other solution.

As I ask if there are other ways to implement the idea, or when I suggest something different, I can see the inventors bristle with the thought that someone could be so ignorant as to not see the elegance of their solution.  Some inventors can get outright belligerent and nasty, arguing to the death that no one would implement something other than the way they did it.

I try several different tacks when confronted with this situation.  I will try to restate the invention from a very broad perspective and ask if the inventor agrees that my statement captures the invention.  I then ask a few questions.

I will ask the inventor if someone did just a portion of their solution, should that person infringe on their patent?  Often, the inventor will agree and I will start asking them which parts of the invention, if infringed, would be the most important.  I will gently chip away at the different elements of the invention and have the inventor describe the different elements separately.  I ask the invention to tell me which elements are more important than others.  In addition to getting the inventor to think outside his box, this helps me capture a few independent and dependent claims.

The myopic inventor comes in the form of the inventor who is focused on a single product.  Typically, this inventor has been working on the product for a long time and has been so focused on making the product work and getting it into production, that the inventor has not spent time thinking outside the box.  When asked about a different way to do a specific feature, the inventor may state “We didn’t do it that way”.

In this situation I explain that I don’t care about the product that they are shipping today.  For effect, I tell them that I don’t want to describe their product, but I want to describe their competitor’s product.  I want to describe what the market will do when they see your product and try to copy it.  (I don’t say “what will the product look like when your competitors improve on your invention” because that just gets the inventor to dig in their heels even more.)

I also explain that I don’t care about today’s product because I need to make their patent relevant 10, 15, or 20 years from now.  I don’t know what technologies are going to be available two decades from now, but I need to describe their invention in a way that it makes sense with whatever technology exists.

Still another way to deal with inventor myopia is to start to explore where the inventor’s concepts may be applied in other technologies.  I try to think of other industries that might use a similar process or device, or imagine performing the process on a micro or macro level.  How would the invention perform if the device were microscopically small or as large as a house?  Would the process work differently on a laptop computer or a large server farm?  How would your invention look if it were mass produced and sold on the counter of every convenience store and discount store in the country?

Some inventors will take a couple of these questions or suggestions and run with them, generating many new insights and helping me to sift the critical components from the trivial.  Many times, these meetings can be powerful brainstorming sessions that yield an invention that was much, much larger than the original concept the inventor thought we were going to discuss.

These questions have several different purposes.

The first point of the questioning is to flesh out and sort the important features from the trivial features.  The important features may be from a technology standpoint, such as features without which the invention cannot function.  In some cases, the important features may be business related, such as features that are readily copied or features that we know a competitor is likely to copy.  The important features need to be captured in the independent claims.

The second point of the questioning is to set up expectations for the patent application in the minds of the inventors.  My technique for writing patent applications requires deconstructing the invention to its essential features and reconstructing the description to include all variations of the essential features and any additional features.  This technique provides the broadest and most efficient coverage of the technology space, and I want the inventors to expect to see that in the patent application.  By having this conversation in the interview, the inventors are much more comfortable with the patent application when it arrives.

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.

Every patent agent/attorney does their disclosure meetings differently.  I like to do my meetings in person.  There is nothing like being in the same room as the inventors, drawing on a white board, and reading those unspoken but noticeable body language cues.

The disclosure meetings always seem to go better when it is in person.  I think there are several variables at play.

The first is that the inventors know that I am taking the time to make their invention a priority.  By traveling to their place of business, seeing their factories, and being in their environment, I show them that this is important.  I also get a good sense of who they are and what they really do.

The next is that I can form some kind of personal relationship with the inventors.  When I do a disclosure over the phone, I am an anonymous voice in a box.  If the inventors have an issue with a patent application I write, they can be nasty and unforgiving in their comments and can be resentful in helping me understand the invention and their view of the invention.  By being physically present and getting to know them just a little bit, I have a much better chance of having the inventors help me rather than fight me during the review and comment of the patent application.

I typically record the disclosure meeting with a digital voice recorder.  Other people use a video camera to record each inventor as they talk. 

I use a recorder simply for the fact that doing a disclosure meeting is arguably one of the most difficult (but fun) things I do.  Think about it.  In a short hour or two, I have to understand an invention that may be the result of two year’s work by an inventor, who is at the cutting edge of technology and an expert in the field.  I have to absorb the full context of the invention and appreciate the subtle nuances of as many aspects of the invention as possible.

Often, the very first description that an inventor gives is the sum and substance of the entire invention.  This description often has carefully chosen words filled with nuance and precision that I cannot possibly understand when I first hear it.  However, I capture this description in the recording and I can go back to it after the disclosure meeting and, only then, appreciate what was said.  Listening to the inventor’s initial description after going through the invention disclosure process has opened my eyes on many occasions.

I take copious notes during a disclosure meeting, noting language and terms that I want to discuss in more detail, or capturing the essential pieces of the invention as I prompt the inventors to discuss various aspects of the invention.

By the end of the disclosure meeting, I generally start writing some claims.  In doing so, I read them back to the inventors for comments and criticism.  In some cases, I will go through each essential element of the invention and ask how important is that element and discuss different ways the element may be performed.

I used to schedule an hour for a disclosure but I found myself hustling too much to gather the information I needed.  I have gone to an hour and a half or even two hours in some complex cases.  I know what it is like to have to go to these meetings as an inventor and I know that, if you are indeed a contributor to your company, your time is valuable.  I am very sensitive to that fact and try to get in and get out as efficiently and quickly as possible.

In the next couple posts, I will talk about how I like to start the disclosure meeting and then a couple ways of steering the inventors to pull the whole invention out of them.

A good disclosure interview is an opportunity to shape the invention into something that makes sense for the business as well as sets the proper expectations for the inventors.  A good disclosure meeting is also brutally exhausting if done well.

I do all of my patent cases for a fixed fee.  Because of this, I need to be efficient and thorough at every step.  I view the disclosure interview as the most essential step that helps me do the highest quality work for a reasonable price.

There are patent attorneys who will do a disclosure meeting and pass their notes off to an associate to write a patent application.  This is usually done so that the associate who does not contact the client.  Typically, the partner wants to protect the client from being ‘stolen’ by the associate or some other trivial reason.  This is an asinine practice and a huge disservice to the client.

It is critical that for me to write a good application, I need to fully understand the invention.  I cannot craft claims that are broad and can be properly allowed if I can’t explore the invention with the inventors.  I can’t meet the company’s business goals if I don’t have clear direction from the business managers.  Anything less, and I am shooting in the dark.

One of the most tangible ways the patent agent/attorney adds value is helping the inventors fully flesh out the scope and applicability of their invention.  This is done by alternatively looking at the breadth and narrowness of their invention, as will be described in a couple of later posts.

The patent disclosure interview is by far and away the most fun of the entire patent drafting process.  Throughout the invention disclosure meeting, I attempt to capture the essence of the invention, but also explore how broad or narrow the invention can be applied.  In doing this process, several subtle things happen: I gain some credibility with the inventors because they feel comfortable with me and confident in my understanding of their baby, and I subtlety set their expectations for what they can expect from me.

During the disclosure interview, I am throwing out my version of the invention for comment and criticism.  I want to test out claim language and make sure it is technically descriptive yet properly scoped.  I also want to set the version in their minds so that the patent application they get will be instantly familiar, understandable, and makes common sense when they read it.

The IP Section of the Colorado Bar Association, in conjunction with Silicon Flatirons hosted a debate between representatives from the Obama and McCain campaigns today in Denver.  Jonathan Alter, a columnist and editor for Newsweek moderated the discussion between attorneys Ed Reines and Ray Gifford representing the McCain campaign and professors Christopher Sprigman and Arti Rai representing the Obama campaign.

The luncheon was well done.  Each participant was well prepared, knowledgeable, and articulate on the current issues regarding patents and copyrights.  All the participants agreed on the same underlying principle: intellectual property rights are important and should be protected.  In general, both sides agreed on the general goal of more rigorous patent examination that would, in theory, result in stronger patents.

While several issues such as patentable subject matter, the makeup of the Federal Circuit, and appointment of PTO management were brought up, solid answers were not forthcoming, but the general recognition of the importance in IP protection and its role in the economy was emphasized.

The questions raised by the audience, and the representative’s responses, reiterated the importance of patent rights for the independent inventor, bio-pharma, and venture capital startup businesses.

The Obama camp has a patent reform proposal, which is discussed by PatentHawk and PatentlyO.  Some of the ideas were lightly discussed at the luncheon, but not thoroughly.

Personally, I think that some of the ‘reform’ ideas that have been floated around, such as the ‘gold plated’ patent and other options are mere gimmicks that do not address the fundamental problem.  The fundamental problem is not glamorous nor are fixes to the problem.  Glamor is more politically expedient, I guess.

The ‘problem’ is that patents being issued today do not generate the confidence and respect in the public that, as a matter of public policy, one would expect.  The bad press and attacks on patents in general have eroded confidence in all patents.  An inventor who obtains a patent cannot enjoy as much of the benefits of the patent as public policy would dictate.

The ‘solution’, which is almost universally touted, is to improve patent quality.  Patents should be issued for inventions which are new, useful, and fully disclosed.  Inventions that do not meet all three requirements should not be issued.  Seems pretty simple, but the execution of the solution is down and dirty and decidedly not glamorous.

Since we are in an election year, there seems to be a desire to propose all sorts of silver bullet ‘solutions’ to a supposed ‘problem’.  In the Obama suggestion of a ‘gold plated patent’, there would be a system where there would be two classes of patents, a ‘gold plated patent’ and a second-class patent.  I cannot imagine any situation where I would advise a client not to choose the ‘gold plated’ option, meaning that every patent application would go into the ‘gold plated’ queue and the PTO backlog would only be worse, presuming that the ‘gold plated’ process took even more Examiner time.  In the end, what is gained?  A gimmick that does the opposite of what was intended.

The argument for the ‘gold plated’ patent is that some patents, such as a goofy new mousetrap for an independent inventor is somehow less important than a new cancer drug for Big Pharma.  For the independent inventor, the goofy new mousetrap could well be the keystone to launching a business and it deserves the same, thorough examination that the new cancer drug should receive.

From my standpoint, the silver bullet gimmicks, programs, and other ‘solutions’ seem to be a great way to have something to propose and talk about, but it makes life more complicated in the long run.  Complexity adds cost and uncertainty, which adds more cost and less perceived value.  Simplicity may be a better, but decidedly unglamorous route to take.  It is a shame that simplicity and streamlining are not politically expedient.

However, I was glad to know that advisors to both candidates had a firm grasp of the issues and fundamentally agreed that strong Intellectual Property rights would be good for the country as a matter of policy.  I left the luncheon feeling like both sides had much more agreement than disagreement.  Professor Sprigman pointed out that even though there will be a lively debate as to the implementation details, everyone on the podium had the same basic goal.  His point was that both sides are in much more agreement than disagreement.

Remember that patents are merely business tools, and they are useful when they give your business an advantage over a competitor.  Taking a license, even when your company may not currently infringe, may be appropriate in some cases.

In one situation, having a license may give your company access to patent rights that you may actively use against a competitor.  Such a license may give you an exclusive license or an option to convert to an exclusive license.  In many cases, an exclusive license may enable someone to exercise the patent rights within a specific territory, such as a state or other designated area.

The exclusive license may enable you to send cease and desist letters and obtain injunctions against a competitor that may infringe the licensed patents.  The license may also enable you to write sublicenses to competitors and obtain royalty payments for the use of the licensed patents.  The sublicense may act as a tax, making the competitor less profitable and your company more profitable.

Such a license may be obtained whether or not your company infringes the technology.  The license may be another weapon in your arsenal that may give you an advantage over a competitor.  By exercising the patent rights against a competitor, you can bring the competitor to the bargaining table and obtain royalties against the competitor’s ongoing operations, for example.

The key here is to consider getting a license when you believe a competitor may use the technology.

First, remember that this is business.  It is not an opportunity to “play office”.  It is not an opportunity to get over on The Man.  You have to have something of value when you come to the table.  In order to be compensated, you must be able to supply something that has a value.  This may be your expertise, your experience, your grunt labor, or your creativity.  In many cases, your business value may be a combination of one or more of these factors.

Understand what that value is.  Try to quantify it and try to explain it at least to yourself.  Know where your value is so that you can know how to advertise, know how to price your services, and, very importantly, know when to walk away from bad business.

Second, while it may look like a solo practitioner is ‘successful’, don’t assume that it was easy.  There are plenty of sleepless nights and nervous days when the work dries up and the savings dwindle, and many late nights drinking pots of coffee when the work finally arrives.

There is a reason why a vast majority of attorneys are in a firm.

Third, look at the long term value of each action you take.  This translates into how you invest your resources and how you interact with others.  Remember that this business is very slow.

Look at the long term value of each interaction with other people, and treat people exactly how you want to be treated.  This business, like many others, is predicated on relationships.  By investing a few minutes having a conversation with someone, you never know how it may turn into something useful down the line.

Patent work, at least in my experience, has a very long gestation period.  Some of my current clients took two to three years before I was able to start working for them.  For example, I had a very refreshing and memorable conversation with one gentleman at a tradeshow in 2000, and he called in 2006 with some work for me.  Taking a very long term view of business development is essential for success, however, it can be difficult to weather long droughts. 

The best remedy for weathering the drought is to keep expenses very low.  Have very little debt, live well within your means, and manage your expenses.  You don’t have to be miserable, but a paid-for five year old vehicle gets you to the same place at the same time as a brand new $85K luxury sedan.

Every person who goes solo has their own personal reasons for doing so.  For me, it fits my work style, and it allows me the flexibility to address certain client needs or go after opportunities that would be impossible in a small firm, let alone a large firm.  I like the ability to do creative market development, to be able to keep clients exceptionally happy, and to seek out unique opportunities.

For those of you thinking of taking the plunge, solo is not for everybody.  However, it can work if you are ready for it and are willing to put the effort into it.  It is hard to underestimate the effort, but it is also hard to underestimate the real and potential benefits as well.

Over the course of a year, I may have personal contact with maybe a hundred or more inventors.  In many cases, these people are solid engineers, scientists, or developers who have identified a problem and solved the problem in an elegant manner.  These inventors are the bread and butter of my day to day job, and they are always pleasant and responsive and working with them is a joy.

There are a couple of those inventors who have this intangible ‘thing’ about them that makes them special, and really gets me excited to work with them.  These inventors are absolute experts in their field and whose excitement and giddiness about their technology is infectious.  These inventors have an intuitive understanding of their technology that transcends the typical engineer or scientist.

This year, I distinctly remember a handful of inventors who were not just able to explain their invention, but there was this intangible and deep understanding that was way more than the conventional person.  It was like their understanding was far more than book learning: it was a true expertise.

I had the pleasure of meeting such an inventor last month, and his enthusiasm was contagious.  During the course of the meeting, he was grabbing sample parts off his bookshelf to explain various things, scribbling on a whiteboard, and, before I knew it, two hours had elapsed.  I left that meeting excited to be part of something cool and knowing that I could bring my ideas, enthusiasm, background, and technical expertise to the table. 

I get the pleasure of working with the best and brightest people in many different companies and with many good ideas.  And the job is even more special when I get to work with one of the shining stars within that group.