Initial "Inventor" Interview (Practical Legal And Business Considerations)

Transcription

1 Initial "Inventor" Interview (Practical Legal And Business Considerations), St. Paul, MN *, Woodbury, MN* The purpose of this paper is to outline types of discussions that can be helpful in deciding whether or not pursuing patent protection is an appropriate path for achieving desired business objectives. Assuming patent protection is sought, these discussions can facilitate the collection and organization of information needed to effectively prepare and prosecute a patent application. Additional details are outlined in the accompanying slides and/or included in the authors presentation of these slides. Further, in-depth details regarding the different aspects of preparing, filing, and prosecuting a (U.S.) patent application (including identifying and analyzing prior art, drafting claims, writing the specification, determining inventorship, complying with the duty of disclosure, responding to objections and rejections, etc.) are provided in other portions of this Practical Patent Prosecution Training for New Lawyers ( PPTNL ) seminar. Initial Comments Often, the most important part of the patent prosecution process occurs before the patent application is filed. The initial interview, with the investigators is a critical part of this process. During this interview the practitioner needs to obtain information about: (1) the technical details of the invention; (2) the prior art, including any potential bar dates; and (3) the client s business purpose for filing. The patent application you are preparing will be an important business asset for your client, and the information you obtain at the initial interview can have a significant impact on the value of this asset. The initial interview is when you, as the IP professional, typically first become acquainted with the investigators and/or the invention to be patented. First, remember that while we practitioners handle inventions every day, from the investigators perspective you are discussing something personal - - something that they have created. * The views expressed in this paper are those of the authors and should not be attributed to 3M Innovative Properties Co., Shumaker & Sieffert, PA, or their clients.

2 Page 2 of 12 They are intensely interested in their invention, and if you take the time to discuss it with them, you will obtain more information for the patent application and establish a positive working relationship from the start. Preparing and prosecuting a patent application is typically a process that takes several years to complete, so it is important to take advantage of this opportunity to gather information about the invention in a way that establishes rapport with the individuals involved. For example, for outside counsel the interview allows you to introduce yourself and your firm to the investigators, or for in-house attorneys/agents the meeting may be an opportunity to create a positive impression of you and the legal department. As another example, if the investigators are participating in the patent preparation and prosecution process for the first time, you may want to explain how the patenting process works in practice, including timelines. The investigators may be surprised to learn that we typically receive a first office action about a year after filing a utility application. Or, if you are filing a provisional patent application, you may want to explain that such applications are not examined until the subsequent utility application is filed. It is also useful to explain that almost every patent application is initially rejected, and that such a rejection is a normal part of the practice. Many investigators believe that a rejection from the USPTO means that their invention is not worthy of a patent. Let the investigators know that it is normal to respond to at least one or two rejections from the patent office prior to any allowance. Further, be cognizant of the fact that the patent process is full of jargon, such as claims, specification, prior art, etc. As much as possible, you should limit the use of these terms because they may confuse the investigators. Of course, it s important for the investigators to understand what claims are and how they define their invention. Just be aware that the inventor will not know what a claim is, or how it is used, until you provide an explanation. This type of information is very familiar to us as practitioners, but remember that not all investigators are patent-savvy, and providing this general information up-front can reduce confusion, frustration, and and/or billing disputes in the future.

3 Page 3 of 12 Obtain Information to Satisfy Legal Requirements The initial interview also provides the practitioner with an opportunity to gather information to satisfy the legal requirements for a patent application. Even if the investigators provide an invention disclosure, it is your job as the attorney/agent to gather all the information necessary to satisfy the requirements of 35 U.S.C. 112 for your claimed invention. Typically, the investigators have a relatively narrow view of what their invention is all about, and you need to ask probing questions to obtain information about the embodiments described in the invention disclosure so you can fully describe them in the patent application. You also need to obtain information about alternative embodiments of the invention, information about the prior art known to the investigators, and information about how these embodiments differ from the prior art. For example, to satisfy the written description and enablement requirements of 35 U.S.C. 112, you may need to gather information about drawings for mechanical inventions, flow charts for software cases, or experimental and/or structural details about compounds in chemical inventions. Perhaps more importantly, once you know about these embodiments you need to find out about alternatives is there a different way to form the structure? Is there a different way to make the compound? If there are ranges or properties involved in describing the invention, what are the broadest, intermediate and narrowest ranges, and how are the properties measured? How do you define key terms that may be part of the claims? All of this information helps you to support the broadest claims you will include in your application, which satisfies the requirements of 35 U.S.C However, this information also provides subject matter for dependent claims and gives you fall-back positions that you may need to take advantage of during the prosecution of the application. Information gathered during this interview is often the difference between a strong patent application with a relatively innocuous prosecution history that will hold up in potential litigation, and a weak patent application that is difficult and time consuming to prosecute, while potentially creating a less than desirable prosecution history. While it certainly takes more time to interview the inventor and obtain this information before

4 Page 4 of 12 filing, it can result in a less time consuming prosecution process and save the client money in the long term. In addition to the written description and enablement requirements, 35 U.S.C. 112 also requires that the application include the best mode known to the investigators for carrying out the invention. The requirement for describing the best mode is currently unique to U.S. practice. During the interview, you should ask the investigators the best way they know for carrying out the invention, including any preferred materials or suppliers. Once you have this basic information, the initial interview is also your opportunity to rough out some claims for the application. If this is done up front, your first draft of the application is more on target, and you can reduce and/or eliminate problems that may occur prior to filing. Once you have a rough idea of what the claims will cover, you can also ask questions about inventorship. Who worked on this invention? What did they do? Where? When did this happen? You may never have all the investigators in one room again, so take the opportunity to ask them about how the invention was conceived and/or reduced to practice. In addition, the patent application also must include the full name, address and citizenship of each inventor, and it may be convenient to gather this information at the time of the initial interview. Once you have information about what the claims can potentially cover, you can also ask the investigators about prior art of which they are aware or that they may have in their possession. It is important to identify this information, because it is your responsibility to submit relevant information to the USPTO, preferably within three months of filing the application. The requirement to provide relevant information extends to all persons involved in the preparation and prosecution of a patent application, not just the attorney/agent handling preparation and/or prosecution, so it is important to let the investigators know this duty to disclose continues throughout the prosecution process. If your client has a large portfolio, it is also a good idea to ask whether any

5 Page 5 of 12 related patent applications have been filed, as you may also need to report this to the USPTO in your Information Disclosure Statement. The initial interview with the investigators is also an important opportunity for the practitioner to ask about bar dates. Failing to properly identify or explain the circumstances that lead to a bar date may expose you or your firm to some liability for legal malpractice. Similarly, identifying a bar date, but not acting to file the application prior to that date may lead to liability. The first type of bar date to explain arises from some action that has already taken place. For example, the investigators may have already given a talk where the invention was disclosed to the public. This type of a public disclosure will bar the ability to obtain a patent on the disclosed invention in many countries outside the U.S, although the U.S. has a one-year grace period for this type of disclosure. Thus, it may or may not be possible to obtain protection for the invention in the U.S., depending on how much time has passed since the disclosure. What is important to remember is that you must identify the date of the investigators disclosure and then provide the investigators employer with that information, preferably in writing. Simply telling the investigators that the application needs to be filed by a particular date may not be enough. Remember that the company is normally your client, not the investigators. Gathering, tracking, and reporting this information is crucial to limiting your own liability and ensuring that you provide the maximum intellectual property protection for your client. In addition to published articles and public speeches, there are many other types of disclosures that may start the one-year clock ticking in the U.S. Therefore, be sure to explore these types of activities with the investigators to ensure that all bar dates are recognized. The second type of bar date to find out about and/or explain arises from an action that has yet to occur. For example, the investigators may be giving a talk in two weeks describing the invention. You need to explain that many other countries have no grace period and, that if patent protection is desired in any of those countries, a patent application must be filed before the disclosure date. Similar to the situation above, you

6 Page 6 of 12 should also inform the company about the upcoming disclosure. By doing so, you can get guidance on whether the company wishes to file a patent application to beat that date, or may instead ask the investigators to delay the disclosure. Alternatively, the company may let you know that they are not interested in any foreign protection, and thus you may not need to file the application prior to the investigators disclosure. Any IP Agreements Involved? Early identification of any intellectual property agreements related to the invention is recommended as contractual obligations may affect ownership of the invention, or present other challenges to filing the patent application. For example, many agreements that include intellectual property provisions (e.g., confidential disclosure agreements, joint development agreements, and purchase orders with customers) have clauses restricting the disclosure and use of third party s confidential information. These restrictions may prevent inclusion of information required to be included in the patent application (e.g., information needed to comply with the enablement or best mode requirements), or to comply with applicant s duty of disclosure (i.e., compliance with 37 C.F.R. 1.56), absent permission from the third party. If the permission is not obtained, filing of the patent application may be prevented or delayed until the term obligating your client to restrict the disclosure or use of the information has expired. Further, some intellectual property related agreements include terms giving at least partial ownership to a third party, or at least require the filing party, to provide certain notifications to the third party prior to filing or shortly thereafter. Examples of such agreements include confidential disclosure agreements, joint development agreements, purchase orders, and Government R&D contracts. Also, some intellectual property agreements may provide ownership rights to your client (e.g., contract research agreements, joint development agreements, and license agreements).

7 Page 7 of 12 Invention, Prior Art, and The Business Purpose To claim an invention, it is important to know and understand the applicable prior art, as well as what the invention is in terms of compliance with statutory requirements, such as 35 U.S.C. 101 and 112. However, to effectively claim the invention to protect the client s business, it is also necessary to understand their business interests. Invention Prior Art Claimed Invention Business Purpose

8 Page 8 of 12 - Invention While the claims ultimately set forth what the invention is, initially it is important to gain an understanding of how the investigators view the invention (including various embodiments, optional and alternative features, working examples, future technical plans, etc.) and then filter that information through the teachings of the prior art, as well as the various statutory requirements to determine what claims can be pursued (e.g., 35 U.S.C. 101 (subject matter and utility), 111 (inventorship), 112 (written description, enablement, best mode, etc.), 113 (drawings), 115 (inventorship), and 116 (inventorship)),. Typically the discussion of this invention and the teachings of the prior art merge into a back-and-forth discussion of each. -Prior Art In understanding the teachings of the prior art, it is helpful to not only know how well the investigators understand the art, but also to know to what extent the investigators are actually aware of the prior art. The former is relatively easy to discern during the course of the meeting based on their explanation of the art as compared to your reading of the same art. To access the latter (i.e., to what extent the investigators are actually aware of the art), begin by asking how they came upon the art. If a search was conducted, ask what search terms were used, what databases were searched, and who did the search (e.g., was the search conducted by a professional searcher). Keep in mind, however, that in some cases, the investigators are very knowledgeable about the art in their area and a search is not necessary. During the course of the meeting, it may be useful to remind the client of the variety of materials that may qualify as prior art, including U.S. and foreign patents and published patent applications, publications such as journal articles, newspaper articles, advertisements, and web pages (including those in foreign languages), products and services available in the market (including the client s own products and services), product brochures, as well as offers for the sale of products or services, external presentations (including academic presentations), trade show displays, information

9 Page 9 of 12 disclosed by your client to third parties (including product testing and focus group discussions), information received by your client from third parties, and unpublished, pending patent applications, and possibly even grant proposals. In discussing the invention and teachings of the prior art, differences between the invention and prior art are noted during the meeting, as are possible arguments for patentability. Typically, the discussion of the invention also includes exploring problems the invention, or various embodiments of the invention, solve, as well as advantages the invention, or various embodiments of the invention, may offer. An understanding of the problem the invention solves, as well as the advantages the invention offers, is often useful in both drafting the background section of the patent application and in developing arguments for patentability over the prior art. -Business Purpose While drafting the claims to protect the invention is helpful, patent filings are typically driven by specific business purposes. Therefore, another focus of the meeting with the investigators, and for this topic, preferably a business person, is to understand the client s business, and in particular how this invention fits into that business. For example, assume your client is a world leader in precision lenses for industrial applications. The client has an R&D laboratory devoted to developing glasses for use in the making the precision lenses they sell. While the client primarily sells the lenses to equipment manufacturers that, in turn, incorporate the lenses into their products, the client also makes and sells some of its own industrial equipment that includes their lenses. An outline of the aspects the client has found useful in protecting their glass inventions is shown below.

10 Page 10 of 12 Glass Glass-Ceramic Specific Compositions Required Components Optional Components Amounts Properties Transmittance Infrared (IR) Visible Ultraviolet (UV) Hardness T s T g Specific Compositions Properties Lenses Equipment w/ Lenses Other Articles Articles As glass itself is already known, one of the approaches the client uses to distinguishing their inventions from the art is to claim specific compositions and specific compositional ranges. Narrower compositional ranges and optional components are set forth in dependent claims. Another approach the client has found helpful in distinguishing their new glass from the art is by including certain properties in the claims. One reason for selecting particular features for dependent claims is to provide additional technical features to fall back to in the event arguments for patentability are not effective, or to further distinguish the invention over prior art that becomes known after the patent application is filed. Another reason for selecting particular features for dependent claims is for claim differentiation purposes. Yet another reason for selecting particular features for dependent claims, and in some cases even the initial independent claims, is that they relate specifically to the business purpose for seeking patent protection. While many of the features chosen for this reason (i.e., the business purpose) may have already been selected for the other reasons mentioned above, viewing these features of the invention from the perspective of the business purpose increases the odds that the business reasons for pursuing patent

11 Page 11 of 12 protection of the invention are met. In the end, the features added for business reasons may turn out to also provide the feature that ultimately distinguishes the invention from prior art cited against the claims during prosecution, or the prior art put forth to invalidate the claims during litigation. Turning again to the diagram set forth above outlining the hypothetical client s strategy for claiming inventions for glasses in their precision lens business, properties the client has chosen to focus on are transmittance (infrared, visible, and ultraviolet), hardness, glass transition temperature (T g ), and softening point (T s ). In addition, the client has an interest in glass-ceramics as they are considering expanding their business into other uses of the glass, which may also include uses for glass-ceramics. Since some, but not all, glass are capable of being converted to glassceramics, additional technical work is needed to determine if any of their new glasses may be used to make glass-ceramics. For those compositions that the client further investigates and finds can be used to make glass-ceramics, additional claims to the glassceramics (including properties and articles thereof) are typically included in the patent application. Drafting The Claims Once the invention is understood in terms of (a) patentability over the art (i.e., 102 and 103), (b) how the invention can meet the other statutory requirements, and (c) how the invention matches up with the business purpose for filing, the independent claims can be drafted, or at least outlined. Drafting or outlining the claims, including potential dependent claims, at the initial meeting with the investigators is recommended as the claims provide a clarifying summary of many of the important aspects discussed at the meeting, as well as to provide an outline for accessing what additional information will be needed to prepare and file the patent application. It is recommended that a draft set of claims be provided to the client within one week of the initial meeting with the investigators. A week is usually sufficient time to

12 Page 12 of 12 draft a full set of claims and forward them to the client, while the information discussed at the meeting is still fresh in everyone s mind. What Needs To Be Done?/Who Will Do It?/When Does It Need To Be Done By? It is recommended that the initial meeting with the investigators conclude with (a) an assessment of what needs to be done to facilitate the preparation and filing of the patent application (e.g., what needs to be in each section of the patent application to meet the various statutory requirements), (b) agreement on who will do the identified tasks to achieve this, and (c) a schedule of when the identified tasks will be completed. Typically, the claims can serve as a central reference point from which to determine what needs to be done to facilitate the preparation and filing of the patent application. For example, reference to what is being claimed together with a review of the reasons identified for patentability and the extent to which the prior art is known, can aid in deciding if additional searching is needed. Reference to what is being claimed together with a review of the reasons identified for patentability can aid in deciding if any additional working examples are needed, and what should be done in those examples. Again, this paper covers types of discussions that can be helpful in deciding whether or not pursuing patent protection is an appropriate path for achieving desired business objectives. Assuming patent protection is sought, these discussions can facilitate the collection and organization of information needed to effectively prepare and prosecute a patent application. Additional details are outlined in the accompanying slides and/or included in the authors presentation of these slides. Further, in-depth details regarding the different aspects of preparing, filing, and prosecuting a (U.S.) patent application (including identifying and analyzing prior art, drafting claims, writing the specification, determining inventorship, complying with the duty of disclosure, responding to objections and rejections, etc.) are provided in other parts of this Practical Patent Prosecution Training for New Lawyers ( PPTNL ) seminar.