We did it our way: initial patent consultation 3

In my previous two articles I addressed information and subject matter which every inventor and/or business person should bring to an initial consultation for a United States utility patent application. Believe it or not, there is still more information which should be forthcoming to the patent professional during this initial office consultation.

First and foremost, the client must confirm the correct identities of all the inventors and the owners of the invention. In the United States inventorship and ownership are not legally equivalent and the difference is very important. Inventorship defines who conceived of and thereafter created the prototype, and inventorship cannot be changed by contract or other agreements. On the other hand ownership designates those persons who have the right to prevent others from using, creating and selling the invention. The most common example of this dichotomy is an employee of a company. As part of his or her written employment agreement the employee generally transfers any right he or she may have to any invention he or she creates (i) during employment or (ii) that is otherwise related to the employment, assuming the appropriate state law is in place. As a result, the corporate owner of the invention may not be comprehensively knowledgeable about invention’s technology in a practical sense. Nevertheless only the company has the right to file a patent application thereon and sell the invention (if the application becomes a patent) if the employee has signed the transfer agreement.

The correct inventors must be listed on the United States patent application as well as the declaration which accompanies the application to the patent office. Designated inventors cannot be persons who provided funding, equipment or other assistance if they did not contribute to the conception of the invention. Furthermore, suppose that several business partners are designated inventors, but subsequently these the partner’s part ways. In this situation the names of dissatisfied former partners cannot be removed from the application and declaration if these persons contributed to features which the former partners intend to protect.

The inventor/business person should also inform the patent professional if a United States provisional patent application has been filed for the invention. If so, was this a ‘does it yourself’ submission? Or did another patent professional draft and submit it to the United States patent office? In either event, that potential client should bring a photocopy of the provisional application to the meeting, so the patent professional can evaluate this filed application. For example, even if the provisional application was professionally drafted, it may not include patent eligible features developed subsequent to the filing of the provisional application. There may also be a non-extendable deadline for submission of a full-fledged U.S. utility patent application in addition to the deadline for converting the provisional application into a utility patent application. Filing of a provisional application will not necessarily meet the utility patent deadline which is triggered by events that could be unrelated to the provisional application. The provisional application also will not ‘grandfather in’prototype changes which were either (i) created after filing of , or (ii) were not sufficiently described in, the earlier related provisional application.

On the other hand, the provisional application may be technically sufficient and no further improvements need be submitted. The patent professional can then save the client significant time and fees by converting the provisional application into a utility patent application before the provisional application expires.

© 2012 Adrienne B. Naumann
Ms. Naumann does not endorse or sponsor the advertisements at adriennebnaumann.wordpress.com

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