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Insights from Inventor Interview: Legal and Business Considerations in Patent Prosecution

This interview with Greg Allen from 3M Innovative Properties Company highlights crucial aspects for new lawyers attending the AIPLA Practical Patent Prosecution Training. Conducted on August 26, 2010, it covers fundamental topics such as the concept of invention, identification of prior art, the nuances of a claimed invention, and understanding its business purpose. This discussion is valuable for anyone navigating the practical legal landscape when handling intellectual property and patent prosecution.

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Insights from Inventor Interview: Legal and Business Considerations in Patent Prosecution

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Presentation Transcript

  1. Initial "Inventor" Interview(Practical Legal And Business Considerations)

    Greg Allen 3M Innovative Properties Company AIPLA’s Practical Patent Prosecution Training for New Lawyers August 26, 2010
  2. “Invention” Prior Art ClaimedInvention Business Purpose

  3. World Leader In Precision Lenses For Industrial Applications

    Business
  4. Investigator Interview Brief description of the patenting process Including timeline Costs/Fees Potential Bar Dates Disclosure Sale/Offer For Sale Proposed Filing Date
  5. Investigator Interview Any IP Agreements involved? For example Confidential Disclosure Agreement Joint Development Agreement License Agreements Government R&D Contracts
  6. “Invention” Prior Art ClaimedInvention Business Purpose
  7. Investigator Interview What is the “invention”? Does the “invention” address a problem? Advantages of the “invention”
  8. Investigator Interview Art How well does the client know the art? Has any searching been done? What type and amount of searching done Patents/Publications Products Client’s Others Disclosures by client to a third party Third party information received With confidentiality agreement Without confidentiality agreement Pending applications
  9. Investigator Interview How is the “invention” different from the art?
  10. Investigator Interview What is the client’s business purpose for pursuing patent protection? Wants/Needs Strategic Plan Competitors Who are they? What do they sell? How do they sell it?
  11. Specific Compositions Required Components Optional Components Amounts Lenses Equipment w/ Lenses Properties Transmittance Infrared (IR) Visible Ultraviolet (UV) Hardness Ts Tg Other Articles Glass Glass-Ceramic Specific Compositions Properties Articles
  12. “Invention” Prior Art ClaimedInvention Business Purpose
  13. Investigator Interview Draft or outline claims Draft or outline independent claims Categories Draft or outline dependent claims Reasons for dependent claims Additional patentable features/limitations Claim differentiation Product related features and limitations Other
  14. “Invention” Prior Art ClaimedInvention Business Purpose
  15. §101 (Subject Matter) §103 §101 (Utility) §102 § 113 (Drawing) Claim §§ 111, 115, 116 (Inventor(s)) §112, 1st ¶ §112, 2nd ¶
  16. Investigator Interview What work has been done? Examples; will working examples be necessary? Are any third parties involved? Are any trade secrets involved? Client’s trade secrets Third party trade secrets
  17. Investigator Interview Who’s been involved? What needs to be done?/Who will do it?/When does it need to be done? Is additional searching needed? Are additional working examples needed? Application drafting Claims Definitions Background Drawing Figure(s) Description of the Figure(s) Detailed Description Examples Summary Abstract Other?
  18. “Invention” Prior Art ClaimedInvention Business Purpose
  19. §101 (Subject Matter) §103 §101 (Utility) §102 § 113 (Drawing) Claim §§ 111, 115, 116 (Inventor(s)) §112, 1st ¶ §112, 2nd ¶

  20. Questions

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