What information will my patent professional need?

 In Inventor resources, Strategy, Technology

Ok, so you have decided to contact a patent professional to explore a little bit more about what it would entail to apply for a patent for your invention. Many patent professionals provide a free initial consultation where you can get many of your “general questions” about patents answered. However, at some point in the process, they start charging for their services, often on an hourly basis. In order to keep costs down and “get the most bang for your buck,” it might be useful to plan ahead for your next meeting and come prepared with some answers to the questions your patent professional is most likely to ask. Therefore, I have put together a list below with examples of some of the more common questions that tend to come up during a disclosure meeting.

Common questions about the invention:

  • Describe your invention in general terms: What does it do? How does it do it?
  • What parts/steps make up your invention and how does each of them contribute to the invention?
  • Which parts/steps are old and which are new?
  • Which parts/steps are essential to make the invention work and which are optional? What parts can be substituted/combined/eliminated/added without changing the basic invention?
  • Do you have any drawings illustrating the structure and/or operation of the invention?
  • Can your invention be used for anything other than its preferred use?
  • Are there any situations under which your invention will not work? E.g. does your invention rely on any specific ranges of size/weight/pressure, or does it have to be made of any specific substances to work?

Common questions relating to novelty and non-obviousness:

  • How is the function of your invention being done today? What is the closest alternative?
  • How does your invention perform its function different from, or better than, these prior devices/methods? How are they similar?
  • Do you know of any publications that might describe the invention or something similar to your invention?
  • Have you filed any type of patent application on this invention, or any similar invention, in the U.S. or elsewhere?
  • Has the invention ever been shown or used in public? If so, where and when?
  • Has the invention ever been sold? If so, where and when?

Common questions relating to third party rights:

  • Is there anyone else who contributed to the invention? If so, who and what was their contribution?
  • Are you under any obligation to assign any rights in the invention to others, such as your employer, for example?
  • Was the invention developed in the course of a consulting agreement with someone else? If so, did you agree that any inventions belong to them?
  • Was there any funding of the development of the invention by any party (government agency, school, etc.) who might claim rights in the invention?

Of course, every situation is different and there may be many other questions that will come up during your meeting, but if you have answers to at least some of the above questions, then you are definitely off to a good start and will likely save some money too.

Mollborn Patents | Patent Protection Made Easy

Fredrik Mollborn has been helping companies protect their intellectual assets since 1997 in the U.S. and abroad. If you are looking to secure your intellectual property, reach out to Mollborn Patents for a consultation.

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