Toedt one and done inventor interview approach 100.3682

Patent-disclosure meetings:A ‘one and done’* approach * Mostly D. C. Toedt III Attorney at law – intellectual property Houston dc@toedt.com O: (713) 364-6545 LinkedIn: dctoedt Rev. 100.3682 Copyright © 2010 D. C. Toedt III 1

Inventorpresentation The traditional approachAttorneynote-taking No Ready? Attorney Inventor drafting review Yes File pat app

Three frequent dislikes: 3

The time required … 4

the cost … 5

the inventor frustration 6

What causes these dislikes? 7

1. The invention is a technical advance… (presumably) 8

2. …but the lawyer is a lawyer (and so must play ‘catch-up’) 9

3. And, everyone’s busy 10

Not much we can doabout these issues. 11

Let’s focus on three other causes 12

4. Inventors’ presentations aren’t always well-organized 13

5. Attorney’s notes are likely to be incomplete … 14

… prompting follow-up calls … 15

… and inventors aren’t always thrilled to be interrupted 16

6. Attorney doesn’t want to risk leaving out anything important … 17

… so, drafts a ‘dissertation’ … 18

… which needs more editing by the inventors … 19

… increasing the time required … 20

… and the cost … 21

… and the inventors’ frustration 22

There is a better way 23

‘Proof of concept’ exampleU.S. Patent No. 5,631,830:Dual-control schemefor improved missilemaneuverabilityAssignee:Lockheed Martin Corp.(no endorsement implied) 24

Another exampleU.S. Patent No. 5,917,822:Method for providingintegrated packet servicesover a shared-medianetworkAssignee:Xerox PARC (Palo AltoResearch Center)(no endorsement implied) 25

How it’s done 26

No notes (!) 27

Instead: Draft, with the inventors:• starter claims, plus• ‘footnotes’ … … in person, or … 28

… via on-line screen sharing 29

Three basic stepsto walk the inventors through: 30

1. Ask: What would someone pay for … 31

… and focus on that (to start with)Technology focus: ‘What would some-“We came up vs. one pay for’ focus:with a neat way “We’ve come up withof inhibiting the a way of making aactivity of the Doo- hay-fever medicationHickey enzyme in that gives relief for upthe human body.” to 24 hours.” 32

2. Outline a ‘business plan’ as a method claim100. A method of relieving hay fever for anextended period of time, comprising:(a) manufacturing a new decongestant compound;(b) acquiring a spray bottle; [etc., etc.] 33

3. Expand the ‘business plan’ claim boundaries as much as the prior art will allow 100. A method of relieving hay fever nasal congestion [1] for an extended period of time, comprising: [1] Nasal congestion: Nasal congestion could result from a variety of causes such as, for example, hay fever or a sinus infection. 34

… adding necessary details(a) manufacturing a new decongestantcompound comprising a mixture ofpowdered unicorn horn [2] and groundpepper; [3] [2] Unicorn horn: A unicorn may be attracted by sprinkling chocolate chips on any convenient unicorn trail. [3] Ground pepper: Cayenne pepper is pre- ferred, but black pepper has also been found to work satisfactorily. 35

[Dependent claims can be useful]110. The method of claim 100,wherein the ratio of powdered unicornhorn to ground pepper is in the rangeof 1:1 to 1:5. [4] [4] Ratio: Proportions from 1:2 to 1:4 have been experimentally verified; proportions ranging from 1:1 to 1:5 are expected to work satisfactorily. 36

Sketch roughdrawings;number thecomponents: 37

Brainstorm w/ inventors: • Do claims distinguish over prior art? • Are claims targeted at what competitors will actually do? • Any problems proving infringement? • Future products / ser- vices? Licensing to other industries? 38

Repeat for other‘business plan’claims 39

Result:A disciplinedsurvey of‘the invention’ … 40

… withimmediate,on-the-flyinventorcritique &feedback … 41

… that caneasily be editedinto a patentapplication 42

(Editing tip:Copy the ‘businessplan’ and ‘footnotes’and tweak them into ***a prose narrative) *** 43

Payoffs: 44

Inventors prefer thisapproach, because… 45

… an intense session nowmeans less editing work later 46

Lawyers like the BIGhead start on legal drafting 47

Applications get filed faster(File a provisional application the same day, even) 48

Cost: Comparable, or better 49

Good training vehicle for: andJunior attorneys, Invention-patent agents – disclosure‘sit second-chair’ authors 50

Adaptable to different fields 51

Further reading Reengineering the Inventor Interview, in Journal of the Patent & Trademark Office Socie- ty, vol. 78, p. 19, http://goo.gl/WbHZ 52

For more information D. C. Toedt III Attorney at law – intellectual property Houston dc@toedt.com O: (713) 364-6545 LinkedIn: dctoedt 53

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Toedt one and done inventor interview approach 100.3682

by DC Toedt on Dec 10, 2010

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Toedt one and done inventor interview approach 100.3682 — Presentation Transcript