In my last article I discussed the ‘stuff’ a business person/inventor should bring to the initial consultation with a patent attorney or agent in the United States. These items are essential to obtaining the maximum benefit from this consultation. However ‘stuff’ is only half the story, because there is information the patent professional should receive prior to providing a meaningful recommendation and strategy.
The inventor must answer the following questions. First if the inventor is employed, has he or she relied upon the employer’s resources to develop the invention? Was the invention developed during employee time, or with the employer’s money and equipment? Was the expertise of other employees used during regular working hours? Was the device or product field tested on the employer’s premises and on “company time?”
If all these answers are yes, then the next question is: Does the employer employ more than five hundred persons of any labor category? Was the product developed at a university, and/or was a government agency provide funding or equipment? If there is no employment relationship, was a third party involved, such as another company or investor? Do these third persons, the employer, or other business qualify as independent inventors, small businesses, not for profits or micro-entities? These answers inform to the patent professional whether another entity owns your invention or whether your employer has the right to use your invention without paying a royalty. Most important for the businessperson/inventor is the determination from this information of the quantity of non-attorney government prosecution fees. For example, insufficient mandatory government fees may be submitted to the patent office because other entities have rights to the invention, but these entities do not qualify for discounted government fees. Unfortunately, if a resulting patent is eventually challenged by third parties, then the patent will be void and unenforceable because of this insufficient payment.
Other necessary information for the initial consultation includes: Has the inventor and/or invention owner signed contracts that transfer ownership of the invention or otherwise comprise rights in confidentiality or non-compete agreement? This information must all be documented as part of your patent application file. The inventor or invention owner must also recognize the earliest date when your invention was exposed to the public, offered for sale, described in a printed or online publication, or described in a patent application filed in another country. Beginning in March 2013, there are additional consequences when the inventor or other parties engage in certain activities related to the invention. The true inventor must be aware of these consequences to effectively supersede claims of persons who would file an application to the same invention prior to the true inventor.
Does the inventor/owner intend to file an application both in the United States and other countries for the same invention? In some countries the inventor cannot file an application for an invention that has been publicly exposed at any time. On the other hand, does the inventor intend to maintain the invention in confidence during the patenting process? If so, and if an application is the first in a series on related products, then the best bet is to refrain from filing internationally until there is United States patent protection. The reason? Generally the United States patent office publishes all submitted patent applications at uspto.gov, and even if the application does not become a patent. After this publication, all the application’s technical information becomes publicly available and unprotected unless a patent results from the application. Furthermore, after September 2012 third parties can view applications at uspto.gov and submit documents to your patent examiner to prevent an application from becoming a patent.
© 2012 Adrienne B. Naumann
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