Meeting Marvels: The Value and Necessity of Invention Disclosure Meetings

The single best tool available to increase patent value and decrease patent costs is not directed to application drafting or patent prosecution or law firm selection. Instead, it occurs much earlier in the process. The best tool is meeting with inventors.

When I was outside counsel and I received a new application to draft, the very first thing I did was set up a meeting with the inventors. As in-house counsel, when I receive a new invention submission, I do the same. It does not matter if the invention is simple, non-enabling, or incomplete. It does not matter if the inventor is familiar, experienced, or knowledgeable. It does not matter if we meet in person, by phone, or by video. For every invention, we meet.

1. In-House Evaluation

I have handled inventions across a wide array of different technologies, from fasteners to robots to quantum computers. I am a technical expert in none of them. The inventor is the expert, and their invention is usually the result of in-depth study, industry familiarity, and significant effort. As in-house counsel, I rely upon their expertise to understand the invention and appreciate the distinctions from the prior art. Such understanding is necessary to effectively review work, manage counsel, and guide the invention through the gauntlet of patentability assessment, application preparation, and patent prosecution.

Engineers tend to be better thinkers than writers because developing a solution is a different skillset than describing one. They are also not patent attorneys, which means they frequently possess an inadequate or inaccurate understanding of patent law, leading to deficiencies in their invention disclosures. Accordingly, invention disclosures are regularly difficult to read, frequently insufficient, and often do not even identify the correct invention.

Invention disclosure meetings are the most effective and efficient mechanism to understand the invention and define potential claim scope. There is little reason to spend hours struggling with a dense invention disclosure when instead the inventors can explain everything in a matter of minutes. A teacher is better than a textbook.

Invention disclosure meetings mitigate risk of miscommunications, misunderstandings, and ambiguities at the most important step of the process – properly identifying the core of the invention. By the end of these meetings, the invention identified and defined may be very different than what the inventors originally submitted. This is critical because if the core of the invention is inaccurate, or even wrong, everything downstream of that is the same. If the core of the invention is wrong, so is the patentability search, the patentability assessment, the patent application, and even the patent. Too many patent attorneys seem to be good lawyers, good managers, and bad engineers—a shortcoming largely due to not digging deep enough to fully understand the invention, and a problem most effectively mitigated by an invention disclosure meeting. As outside counsel, I inherited many applications transferred from other law firms, and unfortunately, too many were technically inaccurate, failed to claim a key distinction, or missed disclosing a crucial nuance, and were thereby frustratingly and avoidably difficult (if not impossible) to prosecute. The best strategy for overcoming an Office Action rejection is to avoid one altogether.

For certain inventions that might be low likelihood or low quality, they may be disposed of quickly during the meeting. After discussing the invention, I might do a quick search with the inventors and discuss any results, and many times, we will refine the scope or close the case. This half hour meeting potentially saves hours in future work and costs, whether in conducting the patentability search, reviewing the search results, drafting the patentability assessment, drafting the application, and even prosecuting the application.

An invention disclosure meeting helps orient the ship before it leaves the port, which means everything thereafter improves in accuracy, quality, and efficiency.

2. Inventor Education and Engagement

Invention disclosures are important for what patent attorneys get out of them, but also for what they give in them. Patent attorneys are (hopefully) good at patent law, but that comes from years of legal education, years of experience, and years of effort. That which is relatively easy to a patent attorney is immensely complicated to nearly everyone else. Even identifying inventions is not especially intuitive, and made even worse by confusing case law.

These invention disclosure meetings provide inventors with a window into the labyrinth of the patent attorney mind. Novelty. Obviousness. Eligibility. Enablement. Often, the invention disclosure initially submitted requires additional information to better clarify the invention or to serve as a backup position for a patentability search. Through our discussions in these meetings, inventors better understand where the dividing line is for patentability, what kinds of features are likely patentable, and how to improve their invention submission. These lessons compound and carry forward so that inventors are better able to identify patentable inventions, submit better invention disclosures, and even educate other inventors. Inventor education carries forward and spreads out, resulting in improved quality, increased efficiency, and reduced costs for further invention submissions across the entire organization.

In those circumstances where I have a negative assessment that the invention is likely (or definitely) not patentable, an invention disclosure meeting helps soften the blow. After the time and effort to submit an invention, it can be incredibly frustrating and disheartening to receive a rejection without a chance to propose and explore counterarguments. When receiving bad news in an invention disclosure meeting, inventors are not necessarily happy, but they are receptive because the meeting has provided them an opportunity to be heard and to appreciate the rationale, to be understood and to understand. This is the difference between being told a result and explained one, because the latter is empowering. With understanding, inventors are armed with new knowledge to increase their chances of success going forward. A rejected invention is still really annoying, but not nearly as infuriating or discouraging.

Invention disclosure meetings make better invention disclosures, but they also make better inventors. Having more engaged, more satisfied, and more adept inventors submitting better invention disclosures with a higher chance of success is a win for everyone on multiple fronts.

3. Application Preparation

After the invention disclosure meeting and a positive patentability assessment, I usually send out a request to draft an application and I require outside counsel to conduct . . . yet another invention disclosure meeting (with me attending). The invention disclosure meeting is important for outside counsel for many of the same reasons it is important for in-house counsel – to accurately and quickly understand the invention. My attendance at these meetings helps ensure that everyone is agreed on direction and expectations, again providing a more efficient workflow with fewer revisions.

This invention disclosure meeting also allows outside counsel to obtain additional information beyond what has already been collected. Determining whether to pursue patent protection requires understanding the core of the invention (along with a couple of backup positions). But if the broadest concept is found patentable, additional details are not normally required to assess patentability. Drafting the patent application requires a higher information threshold and a deeper understanding to further flesh out the invention for enablement and patentability. Just as before, the best way to effectively and efficiently gain that knowledge is through invention disclosure meetings.

As in-house counsel, I meet with inventors for a half hour, which is usually enough time for most inventions. A few inventions require less, some require more, and some require much more. I insist that outside counsel schedule at least a half hour meeting with the inventors, and preferably an hour meeting (as I used to do as outside counsel).

Just as examiner interviews are the best tool for progressing prosecution, and as invention disclosure meetings are the best tool for assessing patentability, these meetings are also the best tool for drafting applications.

4. Early and Often

Invention disclosure meetings facilitate identifying, understanding, and refining the core of the invention by synchronizing an engineer’s technical expertise with a patent attorney’s legal knowledge. These meetings result in better invention disclosures, better inventors, and better patents in a more efficient and less costly process, among other benefits. For in-house counsel assessing an invention, a half hour meeting maximizes the time spent for both the inventor and the attorney. For outside counsel drafting an application, an hour meeting is usually better.

I have heard from other in-house counsel that they do not have time to meet with inventors on every invention because they are too busy, or there are too many submissions, or the inventors have tight schedules. If there are obstacles to meeting with inventors then the workload or workflow needs to be reorganized and reprioritized because these meetings are too important to not do.

Meet with inventors, early and often.

Image Source: Deposit Photos
Author: everythingposs
Image ID: 125568176