Amplifying IP is a thought leadership series on best practice approaches to protecting and leveraging IP.
In this second article, Principal and Patent Attorney, Rob Wulff shares his thoughts on the importance of the initial interviews with a patent attorney and the outcomes you should be looking to achieve.
In my article on invention searching, we sought to de-risk the patenting process by bringing forward ‘uncertainty’ pain points by employing a well-constructed, strategic invention search.
By at least running some preliminary searches in the free patent and literature online search engines and addressing the questions:
- What invention do I think a patent can protect? and
- What do I want the patent to achieve commercially?
you should now be ready for a first interview with the patent attorney.
Often, two interviews are required – the first to uncover the invention and the second to revisit the invention in light of the search results ( for example, where a professional search has been conducted on the invention uncovered in the first interview).
In your second interview, you may also need to revisit at least some of the questions below.
The story
The best interviews seek to uncover the entire story of the invention. It’s important to start from the beginning, even if that seems a trivial place to start. Resist the temptation to start at the end, as that often misses important points and detail. Along the way, ask:
- What problems did the invention seek to address or solve?
- How did it solve them? Why did it solve them that way? Are there other ways?
- Is the invention another way of addressing a known problem?
- Is the invention in the formulation of the problem, at least in part?
- What hurdles were encountered along the way? How did you overcome them?
- Is the problem a known one? Is it a long-felt problem? Is there an unmet or unarticulated need? Is the market crying out for this?
- What sets this idea apart from the prior art?
Dialectic
The Socratic process of dialectic can be very helpfully adapted to such interviews:
- The ‘invention’ is the goal – the aim of the interview is to reach a clear understanding and formulation of the inventive concept.
- Be willing to be refuted – the patent attorney should artfully play the role of devil’s advocate and you need to be willing to be questioned and challenged.
- Listen – allow each point to be fully explained and don’t interrupt each other.
- Question – ask your question from the point where the listening has taken you. Ask the next question based on what has just been said and take notes along the way so you don’t lose track – i.e. the goal is the inventive concept. Reflect back what has been said to verify your understanding.
- Follow – try not to steer the story down a path or towards an end. Let the listening guide the interview, follow where the speaker takes you. Ask the next question from where the listening has taken you thus far, not something pre-conceived.
It’s in the detail
The best interviews uncover the detail. Such detail can provide excellent fall-back positions in a patent application. The question – “why did you do that?” can often uncover really useful technical information for inclusion in the patent application.
Sometimes, the questioning can highlight an incomplete understanding, or it may identify the need for further experimentation or research. Other times, the questioning can cause the inventor to articulate the inventive concept in a new, unusual and very useful way.
Importantly, don’t lose sight of the goal. Keep the aim in the back of your mind which is, together you’re looking for the invention. Keep reflecting back your thoughts on this as the story evolves – it can be an iterative process.
Desired outcomes
The object of the interview and searching is to reach a clear understanding of the inventive concept – what is the invention? What sets the invention apart from the prior art? What monopoly should you be entitled to?
If you and the patent attorney are not clear what the invention is, the resultant patent application will never be as good.
Having reached your goal, the invention, don’t forget to ask these questions:
- What invention will the patent protect? Am I satisfied with that?
- What do I want the patent to achieve commercially? How does such a monopoly translate into commerce?
And you might now add:
- Is there a market for this invention?
But that’s a whole other discussion!
Concluding thoughts
In short, to get to the invention, you need to hear the whole story – from the beginning right through to the end. Then test your inventive concept against your prior art search results.
Armed with a full set of notes, you’re now ready to start the preparation of the patent application.
