10 Questions About Patent Prosecution That Every Inside Counsel Should Be Able To Answer for Their Inventors
10 Questions About Patent Prosecution That Every Inside Counsel Should Be Able To Answer for Their Inventors

Well trained inventors are essential to building a high-quality patent portfolio that won’t blow the budget. The questions below are based on an informal poll of questions frequently asked of patent attorneys by inventors within large organizations, but they also apply to smaller companies and startups. They can form a starting point or a supplement to your inventor training.

Before reviewing the questions, inside counsel should first ask “Who trains my inventors?” and “How often?” Hopefully, the answer is not “nobody” and “never,” but even if it is, this article can provide a basic framework for your program.

Can you give me an overview of the patent prosecution process?

This is often heard as “What do I need to provide to you and when?”, “How do I review the draft application?”, or “When can I expect my patent?” Providing a few slides on the basic patent prosecution timeline, including when input is needed from the inventors, can help new inventors get their bearings and participate meaningfully in the application process.

What is actually protected by the patent?

This question is sometimes heard as: “How did they get a patent on that?” or “Can they use this? It’s in our patent!” Inventors often are insecure about what their patent, or their competitor’s patent, actually protects.

35 U.S.C. 112(b) essentially tells us that the claims define the subject matter regarded as the invention. Case law emphasizes the primacy of the claim in determining just what the patent protects. The oft-heard Giles Rich quote “The name of the game is the claim” is probably the best way to get this across to your inventors. This, along with a few elementary examples of things that are protected – or not protected – by some simple example claims, will give inventors a better grasp of what is covered.

Is our communication privileged?

Inventors rarely ask this directly – it is more often heard as “Is it okay to send this to you in an email.” Fundamentally, attorney-client privilege works the same in the patent context as it does in other legal contexts. The communication must be made in confidence, between the client and the attorney, and be primarily for the purpose of securing an opinion on law, legal services, or assistance in some legal proceeding . There is case law explicitly holding that invention records typically constitute privileged communications , and a corresponding privilege has been extended to patent agents in the limited context of their authorized practice before the USPTO .

For the purposes of your inventors, a slide in your presentation outlining some basic communications hygiene (e.g., not copying anyone outside the company, or discussing matters other than the patent application), along with some examples of good and bad email communications, should go far here.

Who is supposed to be listed as an inventor?

Inventors often are interested in who should or should not be included in the list of inventors, and who is listed first.

The MPEP tells us that “[t]he threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor” . Case law tells us that “…the test for conception is whether the inventor had an idea that was definite and permanent enough that one skilled in the art could understand the invention…”

What these phrases mean can take a lawyer to understand. A good way to communicate this concept to inventors is with a few slides explaining that an inventor must contribute to the conception of at least one element of the claimed invention, and then providing a simple fact pattern with examples where certain people are inventors, and certain people are not inventors. In some organizations, depending on the culture, it also may be prudent to expressly state that a person should not be listed as an inventor solely because they are your supervisor, or that a person may need to be listed even if they only contributed to a minor part of the invention (e.g., a dependent claim).

How do I comply with the duty of disclosure?

New inventors usually first encounter this issue when we send them a form paragraph explaining that they have a legal duty to disclose information material to patentability to the USPTO. Because it is a real and unfamiliar legal obligation, inventors rightly are concerned about what they might need to do to comply with it. Fortunately, compliance is relatively straightforward for inventors, and a few slides explaining what they do and do not need to disclose (yes, tell us about things that you happen to know about, and no, you don’t need to search for it, etc.) can head off unnecessary questions and anxiety.

What is the status of my application?

Some inventors, particularly those who retain an ownership interest or are eligible for incentives, are keenly interested in the status of their application. The USPTO’s public PAIR service is a convenient tool that inventors can use to check the status of their application on their own, after it publishes (18 months from filing in most situations).

Do I need to provide you with figures?

Surprisingly, inventors do not always feel that is necessary to provide a drawing when describing their invention to attorneys. We will generate these for the application of course, on our own or in collaboration with the inventor, but the inevitable additional back-and-forth increases expense and erodes efficiency. Train your inventors to provide at least two figures – one should be a very simple block diagram that illustrates what is new in the application, in context with other components, and the other should be very simple a flow chart which illustrates how it is used or made. We will modify and augment or supplant these, but providing us with the inventor’s take on these two views is one of the easiest and most effective ways to increase efficiency in the application drafting process.

Is this patentable?

Inventors sometimes will ask this question of their own application or of a competitor’s. Inventors themselves, however, often are the most versed in the universe of prior art that might exist and are in a good position to provide a preliminary, lay assessment of patentability if they are provided with a basic understanding of novelty and obviousness . A few slides explaining the basics of novelty and obviousness can make it easier for inventors to answer this question for themselves, or with your help.

How are patents different from other forms of IP?

Trademarks, copyrights, and trade secrets each have their own semester-long introductory courses for a reason. Use a few slides of your presentation to explain that patents are a right to make, use, offer for sale, sell, or import a patented invention, and typically they cover machines, manufactured articles, industrial processes, chemical compositions, electronics, better mousetraps, and so forth. Trade secrets cover commercial information that is not known or easily found out by the public and typically cover similar material to patents, as well as economic information. Trademarks indicate the origin of goods or services. Copyrights are rights in original works of authorship. Such simplified basics will head off the surprising number of inventors asking whether they can patent their logo.

What is my incentive to pursue a patent?

Inventors often view the patent process as separate from their “actual” job, as an engineer or otherwise. Do you provide cash bonuses for inventors to file invention disclosures? For issued patents? Do you provide awards or recognition? Such incentives can not only ensure that inventors are focused on the patent application process, but can ensure that your company’s inventions are diligently captured by the inventors in the first place.

These questions are just the start, but they can help you to put together or update a basic training program for your inventors. There is no one right answer for all organizations – some train on a quarterly or yearly basis, and some train on an ad-hoc basis for new hires, depending on their needs. Outside counsel can help you to tailor inventor training to your particular organization.

Reprinted with permission from the June 29, 2021 issue of The Legal Intelligencer ©2021 ALM Media Properties, LLC. Further duplication without permission is prohibited. All rights reserved

Posted in: Patents



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