I don ‘t have a thing to wear: initial patent consultation

Business persons are often confused about the information and items to bring to an initial consultation with a patent attorney. My article resolves this confusion so everyone may confidently go forward to a first meeting concerning their United States utility patent application.  As a preliminary matter, a person must recognize the point at which he or she is ready to consult the attorney. Do you have a product that contains a significant and/or unexpected improvement over other products in a particular industry? If so, you must provide detailed drawings or an operable prototype for a physical product such as a toy or tool.  Free-hand sketches, prototypes, written technical information, engineering drawings, architectural drawings or a combination of these items, are necessary when the patent attorney evaluates  improvements to previously existing subject matter. If a person arrives at the patent attorney’s office with only a vague idea of the invention, then there is insufficient information to continue this initial conference.

If a person has a new chemical or other material, he or she should know the formula, the method of creating it, and optimally also create a physical property sheet. This information should be clearly written and appropriately organized prior to the consultation. It is also helpful, although not necessary, that the new client be aware of similar preexisting products in the same industry or other industries. If these products exist, do they solve the same problems in the same manner as the client’s invention? The potential client should bring photographs or articles (including online), of similar devices or products, as well as technical, scientific and medical journals and newsletters in the invention’s relevant technology or industry. Notebooks describing the process of device or software development also are necessary.

Earlier prototypes, obsolete prototypes, sketches and technical drawings for models that were ultimately discarded are extremely helpful for at least two reasons. First, these discarded items provide the patent attorney with a more in depth understanding of your invention, as well as the extent of its prior research and development. In fact, some of these discarded models may also be patentable and included within a single application along with your final prototype(s).

The second reason: If a United States utility patent application is filed, the chances are very high that a patent examiner may initially reject the invention on the presumption that it is too similar to previously existing subject matter. Fortunately, although United States patent law has changed substantially over the past several years, one may still overcome a similarity rejection by demonstrating that product development was not straightforward or predictable. The best demonstrations are photographs of discarded models and sketches of inoperable prototypes which support the existence of convoluted product development with ‘blind alleys.”

Interestingly, an initial visit to the patent attorney is much like the initial visit to a physician. The patient must complete forms with personal health information as well as previous operations and medications. The physician will then conduct a physical examination with urine and blood specimens. The reason: with optimal information the physician is better equipped to properly diagnose an ailment and treat it properly. Similarly, your patent attorney cannot maximally evaluate the invention and thereafter advise without the most and best information that the business person/inventor can provide.

© 2012 Adrienne B. Naumann

Ms. Naumann does not endorse or sponsor the advertisements at adriennebnaumann.wordpress.com.


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