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Extracting the Invention from the Inventor

One of the most intriguing parts of my job is coming to understand an invention with the inventor. By definition, the inventor has broken some new ground in their field of expertise and it is my job to extract the important features and define them in a way that makes sense to them, a person of ordinary skill in the art, as well as the patent examiner.

This exercise is one of the most enjoyable parts of the job when it goes well, and one of the most miserable when it does not.

After a brief overview, I generally start with letting the inventor sell me on the idea. I try to get the inventor to discuss both the business aspects as well as the technical highlights of the invention, and how it differs from what has gone before.

Some inventors are better at this than others. Some are full of hyperbole and grandiose statements about how nobody has anything close, blah blah blah. Other inventors who know their marketplace can differentiate their idea from existing products in a detailed manner. I often use these features as a starting place for specific limitations in claims.

I have been experimenting with drafting the background, summary, and claims first and then having the inventor review at this stage. My experience has been overwhelmingly positive, both from my standpoint as well as feedback from the inventors. I usually send a handful of pages of text for them to review, which is not too overwhelming, then spend a few minutes on the phone walking through any comments they may have.

From my standpoint, I eliminate any confusion between myself and the inventor at this point. Since I do not bill by the hour, confusion that leads to re-writing is a bad thing. But the real key is that the inventor and I have another chance to review my terms and description of the invention and make sure we captured everything.

I often use this short, second conversation with the inventor to clarify exactly what they should expect from the final application. Many inventors at large corporations have regular jobs to do and reviewing patents is not high on their priorities. The more efficient I can make the process, the better the feedback is from the inventor and the higher quality end product I can produce. Everybody wins.

Because I have been an inventor in a corporate setting, and have worked with various patent attorneys on my own inventions, I know exactly what these inventors want and need, but I also have the opportunity to develop a good working relationship because I was in their shoes just a few years ago. I consistently get excellent reviews from the inventors with which I work because I do not waste their time and give them easy to read and easy to understand patent applications that capture their inventions well.