Doing the Disclosure Meeting

This is the second in a series of posts regarding the patent disclosure meeting. Here is the first.

Every patent agent/attorney does their disclosure meetings differently. I like to do my meetings in person. There is nothing like being in the same room as the inventors, drawing on a white board, and reading those unspoken but noticeable body language cues.

The disclosure meetings always seem to go better when it is in person. I think there are several variables at play.

The first is that the inventors know that I am taking the time to make their invention a priority. By traveling to their place of business, seeing their factories, and being in their environment, I show them that this is important. I also get a good sense of who they are and what they really do.

The next is that I can form some kind of personal relationship with the inventors. When I do a disclosure over the phone, I am an anonymous voice in a box. If the inventors have an issue with a patent application I write, they can be nasty and unforgiving in their comments and can be resentful in helping me understand the invention and their view of the invention. By being physically present and getting to know them just a little bit, I have a much better chance of having the inventors help me rather than fight me during the review and comment of the patent application.

I typically record the disclosure meeting with a digital voice recorder. Other people use a video camera to record each inventor as they talk.

I use a recorder simply for the fact that doing a disclosure meeting is arguably one of the most difficult (but fun) things I do. Think about it. In a short hour or two, I have to understand an invention that may be the result of two year’s work by an inventor, who is at the cutting edge of technology and an expert in the field. I have to absorb the full context of the invention and appreciate the subtle nuances of as many aspects of the invention as possible.

Often, the very first description that an inventor gives is the sum and substance of the entire invention. This description often has carefully chosen words filled with nuance and precision that I cannot possibly understand when I first hear it. However, I capture this description in the recording and I can go back to it after the disclosure meeting and, only then, appreciate what was said. Listening to the inventor’s initial description after going through the invention disclosure process has opened my eyes on many occasions.

I take copious notes during a disclosure meeting, noting language and terms that I want to discuss in more detail, or capturing the essential pieces of the invention as I prompt the inventors to discuss various aspects of the invention.

By the end of the disclosure meeting, I generally start writing some claims. In doing so, I read them back to the inventors for comments and criticism. In some cases, I will go through each essential element of the invention and ask how important is that element and discuss different ways the element may be performed.

I used to schedule an hour for a disclosure but I found myself hustling too much to gather the information I needed. I have gone to an hour and a half or even two hours in some complex cases. I know what it is like to have to go to these meetings as an inventor and I know that, if you are indeed a contributor to your company, your time is valuable. I am very sensitive to that fact and try to get in and get out as efficiently and quickly as possible.

In the next couple posts, I will talk about how I like to start the disclosure meeting and then a couple ways of steering the inventors to pull the whole invention out of them.