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.

Background

As part of the new rules, an applicant must disclose to the Patent Office any group of patent applications that are filed within a two month window where the applications are commonly owned and at least one inventor is in common.  Every time an inventor is listed on two patent applications, a trigger causes the inventor’s employer to file a bunch of declarations against interest.

One of the best ways to eliminate this burden is to eliminate filing two or more patent applications with common inventors within the two month period.

The Patent Office discourages applicants from spacing out their applications to avoid this rule, as it can be seen as inequitable conduct.

However, there is a tendency to add people to a list of inventors in many corporations.  In my own experience as an inventor, I have seen managers add inventors to a patent application because they viewed patents as more of a recognition and reward system than as a legal document with specific legal requirements.

The mechanism by which inventors are recognized and rewarded within a company may play into who is listed as an inventor.  In many companies, in an effort to include as many inventors as possible, the companies may pay each inventor a reward regardless of the number of inventors.  Quite frankly, this leads to having many patent applications that include long lists of inventors.

These long lists of inventors play havoc with overlapping applications under the new rules.

Recommended System

I recommend reviewing patent recognition systems so that the systems properly reward the true inventors but eliminate those inventors who may be questionable.

In the reward system where a fixed amount of money is paid to each inventor, there is a tendency to include questionable or marginal inventors.

In a reward system where a fixed amount of money is divided between all the inventors, there is a tendency to exclude questionable or marginal inventors.

My recommended reward system may set a fixed amount of money, say $2000 or $5000 for the total reward.  The money would be divided amongst the inventors based on their participation.  The person who writes the invention disclosure should receive a count, each participant in a disclosure meeting with the patent attorney should receive a count, each substantive reviewer should receive a count, and each inventor who signs the application should receive a count.  The money will be divided up between inventors based on their counts.

In this system, a person who writes the disclosure, attends the meeting, and reviews the application may receive 4 counts when they sign the application.  Another inventor may participate in the meeting and sign the application for 2 counts.  A third may only sign the application and receive 1 count.

The total number of counts is 7, so the first inventor would receive 4/7 of the total money, the second 2/7, and the third 1/7.

Such a system encourages each person to actively participate in all phases of the patent preparation process, which usually takes up valuable work time.

Some tweaks may include giving the disclosure writer 2 or more counts for writing the disclosure, since inventors tend to be notoriously slow to write a good description of their idea.

The other subtle feature of this system is that inventors will have a vested interest in limiting the number of inventors, and invention disclosures will tend to have one or two inventors listed, rather than twelve or more.

Another twist is that the Examination Support Document may be forced where two applications are filed nearly simultaneously.  The PTO may assume that they cover the same patentable material and force an Examination Support Document unless you can prove that the applications do not cover the same material.

(As a side note, I have spoken to several patent attorneys/agents about the new rules and I have not yet found one who would even agree to write an ESD, no matter what the cost.  The reasoning is similar to why I will not file accelerated examinations.)

Each of the various requirements put on the applicant presents several problems, including the specter of patent invalidity and possibly inequitable conduct if the various support documents and petitions are not properly done.

In some situations, I used to espouse a kitchen sink approach to patent prosecution, where you load up a patent application with as many ideas as possible, get an early filing date, and file many continuation applications as possible.  This strategy can blanket an area of technology very effectively and makes the best use of early disclosure.  The strategy also could be used to tailor claims to an infringer so that lengthy and costly court battles may be averted entirely.

In view of the new rules, I think another strategy may be better suited.

This strategy is very targeted and narrow, and looks to find specific areas that may be infringed in the future, but does not include any more than it needs.

The targeted strategy is driven from the need to avoid overlapping applications and avoid the potential that a continuation application may need to be filed.

The steps are as follows:

1.  Define a very specific strategy for patent coverage over the entire scope of the technology you wish to cover.  The strategy must be driven by the current and potential business needs of the client, as well as the possible turns a technology may take.

2.  Draft a complete set of claims for each targeted area.  Each element of the claims should be carefully and thoughtfully considered for the language, the scope of coverage, any way the claims may be construed or misconstrued, how an infringer may infringe, and for how it differentiates from the known prior art.

3.  Only after the claims are completed, analyze the claims with the inventor and the business manager, reviewing the areas described in step 2.

4.  Draft a specification that addresses each and every claim and every feature of every claim, and avoid any additional material if at all possible.  Each feature must be described completely, but avoid adding other ideas that may be patentably distinct and that you may wished were a stand-alone patent.

One interesting twist to the new rules is to attempt wherever possible to force a restriction by including patentably distinct sets of claims.  Each divisional application is a separate family of applications for the purposes of continuation applications and RCEs.

The new rules may tend to force less disclosure and much more tailored specifications that may stand or fall on the first couple Office actions, rather than specifications with all sorts of material that may keep an application alive through several continuations.  This may lead applicants to perform good searches based on the claim set of step 2 prior to drafting the specification of step 4.

The net result is a shift from large, comprehensive patents that may disclose a broad range of concepts to those which are very narrow and even skeletal.  Instead of ‘promoting the progress’ by encouraging as much disclosure as early as possible, I think the new rules encourage the exact opposite.

This discussion is by nature very broad and sweeping, but based on the strategies that the new rules seem to favor.  I am sure that many situations may cause other strategies to be used within the new rules, and I will discuss them as they come up.

In both cases, the attorneys did an interview over the phone with me and both attorneys appeared interested in my idea and seemed to listen attentively to everything I said about the invention.

Having only been through the patent process a couple previous times as an inventor, I considered it a great honor to get a patent and the recognition for my ideas.

The first attorney wrote in painstaking detail every minute feature of my product, including just about every screw in the design.  The patent application went on for pages and was the most painful thing I had ever read in my life.  I could not figure out what the attorney was trying to do, but I read every word of it and had no guidance or basis for commenting on what he wrote.

The first attorney was adamant that I read the document and comment on it, but I could not edit 25 pages of cryptic, badly written run-on sentences used in long paragraphs that spanned pages.  After forcing myself to read it, I just figured that this was what patents were supposed to be.

The second attorney explained the invention in broad strokes, summarizing the concept well, and then showed several examples of how the invention worked.  His application was easy to read and very concise.  I could skim through his document and pick up what he was writing almost immediately.

It was not until I read the second one that I realized how awful the first one really was.  From my current perspective today having written several hundred patent applications, I am ashamed for that first patent attorney and his poor clients.

There are a few things to note from my little story.  First is that the inventors often have a terrible frame of reference for what the patent application should be and how to evaluate the patent and the attorney.  From my innocent and ignorant perspective, the first attorney came across well and really buttered me up during the interview.  I even got to go to his office to sign the papers and was referred to as ‘the inventor’, which was pretty cool at the time.  I walked away from the experience thinking pretty highly of the attorney, even though he was, in my current opinion, bordering on utterly incompetent.

In other words, lots of schmoozing can cover up a tremendous amount of incompetence.

This can have effects in both directions: a bad personal interaction may lead to a bad perception even though the work product is beyond reproach, while a good personal interaction may cover up even the worst work product.

Another thing to note is that how gullible a new inventor may be.  It is easy for the inventor to be enamored with the glorious thought of getting a patent, but take whatever is given as gospel.  Because the inventor has no reasonable frame of reference, the inventor must go on what he knows, which is the personal interaction.  That does explain the success of many invention submission companies.

As a practicing attorney, I incorporate these lessons by doing a couple things.  First, I always treat my inventors well.  After all, they are my livelihood even when the business decisions are made by someone else.  The second is to try to give them a frame of reference for what to expect and how to judge a patent application.  Obviously, the first time they read a patent application they cannot compare it to anything else, but I try to define some standards by which they can judge it.

By knowing what the inventor is going through, I can hopefully provide as much value as possible to the client, whether they can appreciate it immediately or not.