initial "inventor" interview (practical legal and business considerations)
DESCRIPTION
Initial "Inventor" Interview (Practical Legal And Business Considerations). Greg Allen 3M Innovative Properties Company. AIPLA’s Practical Patent Prosecution Training for New Lawyers. August 26, 2010. “Invention”. Prior Art. Claimed Invention. Business Purpose. - PowerPoint PPT PresentationTRANSCRIPT
Initial "Inventor" Interview (Practical Legal And Business Considerations)
Greg Allen3M Innovative
Properties Company
11
August 26, 2010AIPLA’s Practical Patent
Prosecution Training for New Lawyers
22
Business Purpose
“Invention”
Claimed Invention
Prior Art
World Leader In Precision Lenses For Industrial Applications
Business
33
Investigator InterviewBrief description of the patenting process– Including timeline
Costs/Fees
Potential Bar Dates– Disclosure– Sale/Offer For Sale
Proposed Filing Date
44
Investigator InterviewInvestigator InterviewAny IP Agreements involved?
For example• Confidential Disclosure Agreement• Joint Development Agreement• License Agreements• Government R&D Contracts
55
66
Business Purpose
“Invention”
Claimed Invention
Prior Art
Investigator InterviewWhat is the “invention”?
Does the “invention” address a problem?
Advantages of the “invention”
77
Investigator InterviewArt– How well does the client know the art?
Has any searching been done? What type and amount of searching done Patents/Publications Products
– Client’s– Others
Disclosures by client to a third party Third party information received
– With confidentiality agreement– Without confidentiality agreement
Pending applications
88
Investigator Interview
How is the “invention” different from the art?
99
Investigator InterviewWhat is the client’s business purpose for pursuing patent protection?–Wants/Needs
Strategic Plan
Competitors– Who are they?– What do they sell?– How do they sell it?
1010
Glass
1111
Glass-Ceramic
Specific Compositions• Required Components• Optional Components• Amounts
Properties• Transmittance• Infrared (IR)•Visible •Ultraviolet (UV)
• Hardness• Ts
• Tg
Lenses
Equipmentw/ Lenses
Specific Compositions
Properties
Other Articles
Articles
1212
Business Purpose
“Invention”
Claimed Invention
Prior Art
Investigator InterviewDraft or outline claims– Draft or outline independent claims
Categories– Draft or outline dependent claims
Reasons for dependent claims Additional patentable features/limitations Claim differentiation Product related features and limitations Other
1313
1414
Business Purpose
“Invention”
Claimed Invention
Prior Art
1515
§101(Subject
Matter)§103
§102
§§ 111, 115, 116
(Inventor(s))§112, 2nd ¶
§112
, 1st ¶
§101 (Utility)
§ 113 (Drawing) Claim
What work has been done?– Examples; will working examples be necessary?– Are any third parties involved?– Are any trade secrets involved?
Client’s trade secrets Third party trade secrets
1616
Investigator InterviewInvestigator InterviewWho’s been involved?Who’s been involved?
What needs to be done?/Who will do it?/When does it need to be done?What needs to be done?/Who will do it?/When does it need to be done?– Is additional searching needed?Is additional searching needed?– Are additional working examples needed?Are additional working examples needed?– Application draftingApplication drafting
ClaimsClaims DefinitionsDefinitions BackgroundBackground DrawingDrawing
– Figure(s)Figure(s)– Description of the Figure(s)Description of the Figure(s)
Detailed DescriptionDetailed Description ExamplesExamples Summary Summary AbstractAbstract Other?Other?
1717
1818
Business Purpose
“Invention”
Claimed Invention
Prior Art
1919
§101(Subject
Matter)§103
§102
§§ 111, 115, 116
(Inventor(s))§112, 2nd ¶
§112
, 1st ¶
§101 (Utility)
§ 113 (Drawing) Claim
QuestionsQuestions
2020