Many potential clients do not know what to expect at their first office consultation, especially if this is a first encounter with the intellectual property system in the United States. Here is a brief discussion of the topics that should be addressed during your first session.
The best manner in which to approach an initial consultation is to compare it to your initial visit to a new physician. Most patients understand that they will complete several forms and questionnaires before the physician will see them, with information about insurance as well as date of birth, and social security number. A medical history is also necessary, so the physician can better understand your symptom or which diagnostic tests to recommend.
Similarly, with your intellectual property attorney there is completion of an initial questionnaire before you address your invention and fees. Completion of this form requires your contact information, including full legal name, e–mail address, residential mailing address and commercial mailing address if one exits. There should also be entries for the entire client’s phone numbers and a facsimile number if available. The consultation date should also be recorded, as well as the nature of the intellectual property for the consultation.
Once this form is completed the discussion turns to your invention, its development and preservation of earlier models and drawings if applicable. The most recent prototypes and other product development information are the best items for the consultation, as well as detailed technical drawings. Let’s assume that your goal is to patent a new product. If you attend the meeting without a written description of the invention, detailed drawings or a technically accurate prototype, there is little the attorney can do for you to do. To continue the analogy, this situation is very similar to the expectation of the physician’s diagnoses without a physical examination. In other words, the more information the patent attorney is provided, the more helpful he or she can be in advising a strategy for the patent application. The patent attorney must also inform you at this meeting whether the invention is patent eligible. For example, many methods for accounting, financial planning and other economic activities no longer qualify for patent protection, even if they are new and significant improvement over existing methods.
The attorney will next ask about public exposure of your invention. Any such exposure, as well as offers to sell, sales, descriptions in printed and on-line publications and filing for protection in other countries, triggers a one-year grace period for submitting a patent application in the United States. Furthermore, the attorney explains how specific public exposures of your invention by yourself and third persons may immediately prohibit filing a patent application in the United States or other countries. The attorney should also explain the implications and consequences of the ‘first inventor to file an application’ statute in the United States with respect to your specific project.
Finally the attorney will determine whether there are deadlines running, or any third person with an ownership and/or shop right interest in the invention. The attorney must also resolve whether other persons contributed to the features of the invention, because patent law requires that they must be designated as co–inventors under certain circumstances. If there is a viable patent eligible invention after this investigation, the attorney will provide a fee sheet, and you will systematically review and discuss these fees together.
© 2012 Adrienne B. Naumann
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