Litigation

Effective invention disclosures save clients money and more

By Rick Boyd

The client rapidly dictates, draws, and gestures, the details of her invention haphazardly spilling forth in all their problem-solving glory.  Across the table, her attorney scribbles furiously to capture every word.  Later in the quiet of his office, the attorney labors to assemble his patchwork of notes into a robust, comprehensive, and technically correct patent application.

A lawyer's time is a hungry machine that consumes money as fuel.  A tenth of an hour saved may be a dinner-out-for-two earned.  Therefore, the savvy client simplifies her attorney's task.  An effective first step: deliver a clear, complete, well organized tutorial of the invention.  To this end, inventors can learn a cost saving trick from corporations, which frequently require their employee/inventors to fill out an Invention Disclosure Form. 

Effective invention disclosures guide inventors to draft a thorough description, and prompt them to think about their invention in new and more structured ways, frequently squeezing out valuable new elements and embodiments in the process.  Further, a completed invention disclosure may provide essential documentary evidence useful to defeat prior art asserted by the Patent Office during prosecution.  Lastly, and significantly for nearly every client, a thorough and organized invention disclosure can dramatically reduce the time required to draft a patent application, saving money sorely needed for other endeavors.

After drafting numerous patent applications across widely varying technical fields, patent attorneys generally know what information, delivered in what form, is most helpful to them.  Therefore, when engaging a patent attorney, a client should ask for an invention disclosure form preferred by that attorney.  A blank stare in reply is a good clue that the client may want to take his business elsewhere. 

Note: One of our patent attorneys developed the invention disclosure training used worldwide by one of the world's largest technology companies, a nearly perennial top-ten filer of U.S. patent applications.  You'll find no blank stares at Ater Wynne.

Full post as published by Northwest Business Litigation Blog on June 20, 2009 (boomark / email).