In our article Innovation Capture 101, we show how mastering the basics of invention capture can help organisations achieve competitive advantage and long-term business success. The practical tips discussed, though, require a blend of skills to get right.
The quality of a patent can be directly linked to the relationship between in-house attorney and inventor (and outside counsel, if involved). It is quite possible that, without a good rapport, an attorney may find it hard to get the required attention from the inventor. They may miss much of the detail needed to produce a patent application that stands up in front of the EPO, where flexibility post filing is much more limited.
What is the magic mix of best practice, good relationship building, and methodologies to achieve success?
Freddy Thiel, VP of our San Francisco Liaison Office, brings over ten years’ experience working in-house with over 1000 invention submissions reviewed in that time. Here are some key tips in his own words on how to get the most out of your interactions with an inventor.
Gauge the inventor’s knowledge of IP
Explaining what a patent is and talking about the identification of a problem and its solution is the easy part. Timing the explanation to ensure the inventor provides the right level of detail and does not get lost into generalities is the tricky bit.
Don’t lose the momentum of the meeting or waste the inventor’s precious time, especially when dealing with software-based inventions and/or first-time inventors. Let them talk first to gauge their level of understanding of IP and adapt the detail and timing of your explanations accordingly.”
Sometimes simple is the way forward
Keep asking questions, even ones that may seem obvious. Sometimes obvious questions elicit the best answers.
“I’ve never been afraid of telling an inventor that I know nothing about the tech. Simple questions often lead to finding a key ingredient to the recipe for the perfect invention capture. Sometimes popping a simple question or a remark can lead the inventor to think about the fundamental aspects of the invention, which they may otherwise have been overlooked. Inventors are generally much smarter than the EPO’s “Skilled Person” and often disregard what could end up being patentable inventions.The risk with a simple question is that it could cause the inventors to roll their eyes. You can back up a simple question by pointing out an inconsistency or gap in their discussion of the invention to show your true level of understanding and bring them back on board.”
Strike while the iron is hot
Start drafting the claim as soon as you have a clear idea of the invention. Together with the inventor, produce a draft or tentative claim.
“I like to call this tentative claim a “101 claim”. Use paper, a flip chart or whatever means you have available. Enabling the inventor to “literally see” how the invention is captured can help you agree claim features, define terminology, and highlight if the invention is currently too generic or lacks essential detail.”
Don’t fall off the radar
After an invention capture meeting, keep the inventor in the loop. A prior art search memo will re-open the dialogue with the inventor. It’s an opportunity to work with the inventor to move from a 101 claim to a 102 claim and discuss any relevant prior art found.
“Have another meeting with the inventor, bounce ideas back and forth until you eventually get an agreement on the claimed subject matter. By doing this, you’ll get a better work product out of your counsel thanks to the improved memo and claims, while staying within the confines of a restricted budget.”
We look forward to discussing these talking points with you directly. Please don’t hesitate to contact Freddy or Kilburn & Strode’s insights team.