Preparing Inventors for the Patent Process – The Invention Disclosure Meeting

You read Preparing Inventors for the Patent Process – The Invention Disclosure Formprovided your patent attorney the completed invention disclosure form, and a disclosure meeting is scheduled. This article discusses what happens during the meeting.

Invention Disclosure Meeting

The invention disclosure meeting is an opportunity to shape the invention into something that makes sense for your business and sets expectations between you and the drafting patent attorney. During the meeting, you and your attorney will fully flesh out the scope and applicability of the invention by alternately looking at the breadth and narrowness of the invention. The meeting can be held in-person, via a web-based video application, or by a telephone call.

The invention disclosure meeting will likely be recorded. This allows the drafting patent attorney to go back and listen to the discussion about the invention after the meeting is over. Because these discussions are often complex and fast-paced, it is often difficult to take notes about everything that is said. The recording will usually pick up an important point about the invention that was missed by the drafting patent attorney during the meeting. The recording also allows the drafting patent attorney to go over important points as many times as needed to ensure proper understanding.

A. You’ll Describe at a High Level the Problem and the Solution

The invention disclosure meeting typically begins with the patent attorney describing the patenting process and what to expect during the process. After, you will likely be asked to describe at a high level the problem the invention seeks to solve and the solution to the problem.

B. Then You’ll Describe Specific Technical Details of the Solution

The attorney will then ask you questions to figure out how the invention works, any advantages of the invention, discuss the differences between the prior art and the invention, as well as review any disclosure documents such as the invention disclosure form.

C. You’ll Also Describe Variations of the Invention

Keep in mind that since the invention disclosure form will likely not provide details about all possible variations of the invention, the attorney will use the form as the beginning point of the discussion. This will then lead to a discussion of the main implementation of the invention and to possible alternative implementations.

D. As Well as Discuss Potential Claims and Claim Language

This portion of the meeting typically ends with the attorney and inventor identifying patentable features of the invention, and discussing potential claims. Your patent attorney will likely want to provide their understanding of the invention for comment and criticism. They will likely also want to test out claim language and make sure it is technically descriptive yet properly scoped.

E. You’ll Wrap Up With a Review of Administrative Information

The disclosure meeting typically ends with gathering administrative information such as the identity of the inventors, whether a foreign filing license is necessary, any prior art of which the inventor is aware, any activities that could limit or prevent patent protection (e.g., past public disclosures of the invention and upcoming disclosures), and expectations as to the time for preparation of the application. Based on the attorney’s knowledge of the technology area of the invention and the nature of the improvement over existing technology, the meeting generally takes between 30 minutes and two hours.

Questions or Suggestions?

It’s important to me that this article is helpful to you. If you have any questions on the article or suggestions for further clarification, please reach out to me and let me know.

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