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Doing the Patent Interview

I have been developing my inventor interview over several years, and I have a technique that seems to work for me.

The key is to know what the inventor wants.

I have a stack of patents as an inventor. Before practicing patent law, I have sat through terrible meetings where I explained technology to a patent attorney who never had a clue. The resulting patent application was very tedious, hard to read, and missed the salient points of the invention entirely. I have had attorneys talk down to me as an inventor and at the same time they did not understand the technology.

Every inventor has different expectations and needs. There are two general categories: the inventor who has an ownership interest in the technology or business and the corporate inventor whose invention is part of their job.

The inventor with ownership is typically a small business owner, entrepreneur, or independent inventor. This person needs a lot of discussion on strategy, costs, timelines, and (should be) very interested in the scope and type of protection. This person generally has less experience with the patent process and it takes a little bit more time to cull the invention from the inventor’s description.

The engineer/inventor in a large corporation has a much different perspective. Typically, these inventors have a very thorough knowledge of the technology and any competing technologies. Their assessment of the prior art is generally reasonable, and their characterization of the important features of their invention is generally spot on.

The important part of working with the corporate inventor is to use their time sparingly and efficiently. Usually, these inventors get paid some kind of bonus for working with the patent attorney, so getting their attention is easy. However, they almost always have real jobs that they have to do.

With either type of client, the invention disclosure interview focuses on that particular invention alone. I try to keep the interview to about an hour. My technique is to have the inventor give me the 30,000 foot view of the topic and to tell the story behind the invention. What was the problem that was encountered and how was it solved? What was done differently? How is this solution unique? What are other techniques that could solve the same problem? Who are the competitors in this space and how do they approach the problem?

I then have them describe the invention in detail. I generally let the inventors draw, talk, or do whatever they need to describe how the invention works. As we walk through the discussion, I begin to identify key features that eventually work their way into the claims. The dialog progresses as we whittle down the important features and begin to develop language that winds up in the claims and throughout the patent specification.

The result of the hour is a lot of brainstormed ideas around the invention, including variations, extensions, and options that find their way into dependent claims. There is also a reasonably good sketch of the independent claims.

This is where I stop the meeting. With a good recording of the interview and copious notes, I generally have all the information I need to write the application.