The Disclosure Interview PowerPoint Presentation, PPT - DocSlides

The Disclosure Interview PowerPoint Presentation, PPT - DocSlides

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Evaluating IP Options. July 12, 2015. Curtis Droege – Manager of Underwriting. Outline. The Initial Application. Invention Disclosure. Documentation Details. Understanding the Inventive Space. Invention Definition. ID: 710868

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Presentations text content in The Disclosure Interview

Slide1

The Disclosure InterviewEvaluating IP OptionsJuly 12, 2015

Curtis Droege – Manager of Underwriting

Slide2

Outline

The Initial Application

Invention Disclosure

Documentation Details

Understanding the Inventive Space

Invention Definition

Slide3

Initial ApplicationSample Invention Disclosure (1 of 2)

Background

How did the invention come about?

Summary of the Invention

What is believed to be unique?

Can you summarize the invention in one or two sentences?

Brief Description / Drawings

Context for the Invention

Known products, patents or publications

Preferred Product Design

Alternate Product Designs

Perceived Limits (not practical beyond

x

, will not work beyond

y

)

Slide4

Initial ApplicationSample Invention Disclosure (2 of 2)

External Activities

Disclosure to others, what, when, and to whom

References

Reference to other filed applications?

Inventors may not be familiar with Cont., CIP, Div. language

Note

If joint inventors

external

to Company, are contracts in place for addressing ownership, cost sharing, licensing? Issues can be sufficiently complex to negate the value of a patent filing.

Slide5

Initial ApplicationInventor’s Notebook –

Still a good idea …

Why?

Derivation

Proceedings (37

CFR

Part

42)

Post-AIA

Inter

Partes

proceeding where

a party “derived” an idea from the actual inventor, and then was the first to file a patent application

Establish

Inventorship

Public or “private” disclosure dates, and what exactly was disclosed

Good Practice

Document (preferably) in a bound notebook (and preferably numbered),

Invention notes, references to corresponding computer files (CAD file)

Involved parties – who did what (conception, reduced to practice)

S

igned and witnessed (preferred)

Q: In lieu of notebook, e-mail to self? Good question for attorneys …

Slide6

Understanding the Inventive SpaceInventor’s

Perspective

“…

cannot find a product like this …” or “solved a challenging problem”

Client Expectation: Filing a patent application will “protect” the product

Reality:

Disclosure Interview may be the first experience in strategic

thinking

Introducing Patentability Requirements

Simple explanations – reserve comprehensive discussions for take-home reading

Regarding Non-obviousness

Inventors will over censor their inventions as “obvious”

Many are of experts – well beyond the standard of “ordinary”

Encourage inventors to disclose inventions even if they believe them to be

obvious

Slide7

Understanding the Inventive SpaceNeed for Prior Art Search

To anticipate the breadth of allowable claims

Breadth of allowable claim that is likely

Slide8

Understanding the Inventive SpaceNeed for Prior Art Search

To provide context for client-practitioner strategic discussions

Scope of likely coverage

Value v. cost, uncertainty, and

timing

Regarding

Value

ANY simplistic assertion of general patent value

will be wrong

Many strategic factors involved

3rd party valuation nearly impossible

Discrete valuation, apart from portfolio valuation, is questionable

If you need a number, see

chart,

then make up a situational discount

rate

http://patentlyo.com/patent/2012/02/uspto-maintenance-fees.html

8

5% paid

66% paid

50% paid

Slide9

Invention Definition“My invention is …” only the beginning

Based on all preceding information, and

Based on potential strategic value (reference Gary’s upcoming presentation)

What should the invention become?

Merely accepting a “my invention is” mentality is less likely to result in an invention having strong strategic value

Invention Shaping

Moving beyond the “problem solved”, the “cool idea”, and merely asking the inventor to consider “alternate embodiments”

Requires the practitioner to understand the technology and the strategic possibilities

Slide10

Invention DefinitionInvention Shaping

Example 1:

1) A fluid connection for an inkjet printer comprising:

a) An ink cartridge containing a

needle

; and

b) A printer containing a

septum

Likely

infringement:

OEMs – only. But one of many fluid connectors

options. Value? LOW

Example 2:

1) An ink cartridge for an inkjet printer comprising:

a) A

needle

having [dimensions], and

b) A

shroud

configured to be concentric to the needle …

Likely infringement:

Aftermarket manufacturer. Value? VERY HIGHThe invention is shaped toward claims that protect the strategic interests of the company - the ink

cartridge

Slide11

Final ThoughtCurtis DroegeUnderwriting Manager

cdroege@patentinsurance.com

502-855-5328

Practitioner is the inventor’s coach, mentor, and champion

Teach

Encourage

Inspire

Thank You!


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