Written by attorney Jose R Mata

Some Questions in Inventor Interview

Questions during initial inventor interview I think it is most helpful to provide an overview of patent law by going over some of the subjects that I ask about during an inventor interview and why I ask them. These are not all of the subjects I would cover. Also, the information below is not legal advice to anyone, but is intended just as general information about patent law and about the way I conduct an inventor interview. I assume no responsibility for any action you or others may take or fail to take based on the information below. No attorney-client relationship is formed by your reading or distribution of the information below. 1. Screen for Conflicts of Interest: The very first thing I do when you, as a potential client contact me, is to ask questions to determine if representing you would cause a conflict if interest. For example, I may already represent someone who has an invention that is too similar to yours. If so, I could not represent you. In fact, we do not have any attorney-client relationship until I have find out if I can represent you. Therefore, you should not volunteer any confidential information about your invention, until I can determine if there is a potential conflict of interest. I will start out by asking you very general questions about the invention, such as what area of technology it is in and then ask progressively more detailed questions to rule out a conflict of interest. As an other example of a conflict of interest, you may have conceived of your invention while working for an employer and I may currently represent that employer. If there is an issue about whether you are required to assign your invention to your employer, then I could not represent you. Therefore, before we can establish an attorney-client relationship, I need to ask you some questions about who you are and about anyone else who might have an interest in your invention. I have to make sure that I do not already represent such a person. Once we have determined that I do not have a conflict of interest then I we can get down to business. 2. Patentable Subject Matter: I will try to get a general idea of what the invention is that you want to patent. Not all inventions or discoveries are patentable. One area that is controversial are business methods. An example of a business method would be a method of managing investments in the stock market. Or, a method of marketing grapefruits. There has been a lot of debate about whether business methods should be patentable. In recent years, many patents have been issued covering methods of doing business. The U.S. Supreme Court is expected to rule soon on the extent to which methods of doing business are patentable. The ruling is expected in a case called Bilski v. Kappos. At this time, there are different predictions about how the U.S. Supreme Court might rule, but no one really knows. In the meantime, if you are considering obtaining a patent on a method of doing business, there are steps to take that can protect your right to obtain a patent in the event that the U.S. Supreme Court ultimately rules that at least some business methods are patentable. Depending on your situation, it may or may not make sense to just wait and see what the Court does. There has also been some concern about whether the U.S. Supreme Court's eventual ruling in Bilski v. Kappos will affect software patents. While the issue is controversial, I strongly believe that software inventions should be patentable. 3. Date of Invention: In the United States, at least in theory, it two persons invent the same thing, then the person entitled to a patent is the first to invent. Invent generally means to conceive of the invention and then to exercise due diligence to either build or practice the invention (called "actual reduction to practice") or to file a patent application (called "constructive reduction to practice"). This is in contrast to the rest of the world, where the person entitled to a patent is the first to file a patent application. To answer a common question, it is not required that you build the invention before you can obtain a patent on the invention. But, if you were the first to conceive of an invention and if you exercised reasonable diligence in either building or practicing the invention, how to you prove it. Do you keep a log with entries of what you did on particular days, including when you conceived of the invention and the steps you subsequently took to exercise due diligence? That is something we would need to discuss. 4. Closest Prior Art: Your invention is probably not something completely revolutionary, most inventions are incremental improvements on something that someone has done before. Thus, one of the things that I will want to know is what was done before your invention? Are you aware of published written articles or patents describing what was done before. Of the things that were done before, which is the closest to your invention? Prior published written articles and prior patents may be what is called "prior art." 35 U.S.C. Section 102(a). The U.S. Patent Office requires inventors and their patent attorneys to disclose relevant written articles and patents -- that is, relevant prior art. We are not required to conduct a search, but we are required to disclose what we know. Prior art is not limited to just written articles or patents, prior art can consist of technology that was "known or used by others in this country." 35 U.S.C. Section 102(a). Published written articles and patents are Section 102(a) prior art if published or patented anywhere in the world. The above is prior art under Section 102(a) of the Patent Act. Prior art under 102(a) must be the work of others. Therefore, nothing you have done as the inventor can qualify as prior art under Section 102(a). The reason is simple. Under Section 102(a) prior art is something that was done before you invented your invention. You could not have described your invention in a published printed publication or in a patent if you had not yet invented it. Similarly, you could not have known or used your invention in this country. These are not all of the questions that would be asked during an interview. For example, qjuestions would be asked relating to Section 102(b) of the Patent Act that prohibits granting a patent if, more than one year before the patent application is filed: 1) the invention has been in public use or on sale in this country or patented or described in a printed publication anywhere in the world. No attempt has been made to create a comprehensive list of interview topics. These are just some topics, presented here for general information. Nothing here is legal advice.

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