The Art of the Patent Disclosure Interview
One of the most rewarding parts of patent law is the disclosure interview. This is where a good patent agent/attorney can add value far in excess of the fees collected.
A good disclosure interview is an opportunity to shape the invention into something that makes sense for the business as well as sets the proper expectations for the inventors. A good disclosure meeting is also brutally exhausting if done well.
I do all of my patent cases for a fixed fee. Because of this, I need to be efficient and thorough at every step. I view the disclosure interview as the most essential step that helps me do the highest quality work for a reasonable price.
There are patent attorneys who will do a disclosure meeting and pass their notes off to an associate to write a patent application. This is usually done so that the associate who does not contact the client. Typically, the partner wants to protect the client from being ‘stolen’ by the associate or some other trivial reason. This is an asinine practice and a huge disservice to the client.
It is critical that for me to write a good application, I need to fully understand the invention. I cannot craft claims that are broad and can be properly allowed if I can’t explore the invention with the inventors. I can’t meet the company’s business goals if I don’t have clear direction from the business managers. Anything less, and I am shooting in the dark.
One of the most tangible ways the patent agent/attorney adds value is helping the inventors fully flesh out the scope and applicability of their invention. This is done by alternatively looking at the breadth and narrowness of their invention, as will be described in a couple of later posts.
The patent disclosure interview is by far and away the most fun of the entire patent drafting process. Throughout the invention disclosure meeting, I attempt to capture the essence of the invention, but also explore how broad or narrow the invention can be applied. In doing this process, several subtle things happen: I gain some credibility with the inventors because they feel comfortable with me and confident in my understanding of their baby, and I subtlety set their expectations for what they can expect from me.
During the disclosure interview, I am throwing out my version of the invention for comment and criticism. I want to test out claim language and make sure it is technically descriptive yet properly scoped. I also want to set the version in their minds so that the patent application they get will be instantly familiar, understandable, and makes common sense when they read it.
