Inventor Interview
Questions during initial inventor interview
I think it is most helpful to provide an overview of patent law by going over some of the subjects that I ask about during an inventor interview and why I ask them. These are not all of the subjects I would cover. Also, the information below is not legal advice to anyone, but is intended just as general information about patent law and about the way I conduct an inventor interview. I assume no responsibility for any action you or others may take or fail to take based on the information below. No attorney-client relationship is formed by your reading or distribution of the information below.
1. Screen for Conflicts of Interest: The very first thing I do when you, as a potential client contact me, is to ask questions to determine if representing you would cause a conflict if interest. For example, I may already represent someone who has an invention that is too similar to yours. If so, I could not represent you. In fact, we do not have any attorney-client relationship until I have find out if I can represent you. Therefore, you should not volunteer any confidential information about your invention, until I can determine if there is a potential conflict of interest. I will start out by asking you very general questions about the invention, such as what area of technology it is in and then ask progressively more detailed questions to rule out a conflict of interest.
As an other example of a conflict of interest, you may have conceived of your invention while working for an employer and I may currently represent that employer. If there is an issue about whether you are required to assign your invention to your employer, then I could not represent you. Therefore, before we can establish an attorney-client relationship, I need to ask you some questions about who you are and about anyone else who might have an interest in your invention. I have to make sure that I do not already represent such a person.
Once we have determined that I do not have a conflict of interest then I we can get down to business.
2. Patentable Subject Matter: I will try to get a general idea of what the invention is that you want to patent. Not all inventions or discoveries are patentable.
One area that is controversial are business methods. An example of a business method would be a method of managing investments in the stock market. Or, a method of marketing grapefruits. There has been a lot of debate about whether business methods should be patentable. In recent years, many patents have been issued covering methods of doing business. The U.S. Supreme Court is expected to rule soon on the extent to which methods of doing business are patentable. The ruling is expected in a case called Bilski v. Kappos. At this time, there are different predictions about how the U.S. Supreme Court might rule, but no one really knows. In the meantime, if you are considering obtaining a patent on a method of doing business, there are steps to take that can protect your right to obtain a patent in the event that the U.S. Supreme Court ultimately rules that at least some business methods are patentable. Depending on your situation, it may or may not make sense to just wait and see what the Court does.
There has also been some concern about whether the U.S. Supreme Court's eventual ruling in Bilski v. Kappos will affect software patents. While the issue is controversial, I strongly believe that software inventions should be patentable.
3. Date of Invention: In the United States, at least in theory, it two persons invent the same thing, then the person entitled to a patent is the first to invent. Invent generally means to conceive of the invention and then to exercise due diligence to either build or practice the invention (called "actual reduction to practice") or to file a patent application (called "constructive reduction to practice"). This is in contrast to the rest of the world, where the person entitled to a patent is the first to file a patent application. To answer a common question, it is not required that you build the invention before you can obtain a patent on the invention.
But, if you were the first to conceive of an invention and if you exercised reasonable diligence in either building or practicing the invention, how to you prove it. Do you keep a log with entries of what you did on particular days, including when you conceived of the invention and the steps you subsequently took to exercise due diligence? That is something we would need to discuss.
4. Closest Prior Art: Your invention is probably not something completely revolutionary, most inventions are incremental improvements on something that someone has done before. Thus, one of the things that I will want to know is what was done before your invention? Are you aware of published written articles or patents describing what was done before. Of the things that were done before, which is the closest to your invention? Prior published written articles and prior patents may be what is called "prior art." 35 U.S.C. Section 102(a). The U.S. Patent Office requires inventors and their patent attorneys to disclose relevant written articles and patents -- that is, relevant prior art. We are not required to conduct a search, but we are required to disclose what we know.
Prior art is not limited to just written articles or patents, prior art can consist of technology that was "known or used by others in this country." 35 U.S.C. Section 102(a). Published written articles and patents are Section 102(a) prior art if published or patented anywhere in the world.
The above is prior art under Section 102(a) of the Patent Act. Prior art under 102(a) must be the work of others. Therefore, nothing you have done as the inventor can qualify as prior art under Section 102(a). The reason is simple. Under Section 102(a) prior art is something that was done before you invented your invention. You could not have described your invention in a published printed publication or in a patent if you had not yet invented it. Similarly, you could not have known or used your invention in this country.
5. Statutory Bar based on patent or printed publication: One of the most important inquiries is whether anyone patented or described your invention in a printed publication anywhere in the world more than ONE YEAR BEFORE YOU FILE YOUR PATENT APPLICATION. This is under Section 102(b) of the Patent Act. It provides an absolute bar to the obtaining of a patent if a patent application is not filed within one year after your invention has been patented or described in a printed publication anywhere in the world. There are no exceptions, if you miss this one year grace period, you cannot obtain a U.S. patent on the disclosed invention.
This is just an overview, there are lots of technical issues that would need to be considered. But, I will be asking about whether the invention has been disclosed to other in a printed publication or has been patented, and if so when. I will also be asking about whether the invention has been in public use or whether it has been the subject of a commercial offer for sale, and if so when. I will also be asking if any of the above is planned to take place in the near future. If so, we may need to move quickly to get a patent application on file.
An important point is that outside of the United States, there is no one year grace period. So a description of your invention is about to be published in a printed publication and if you desire patent protection outside of the United States, either the publication must be delayed or the patent application must be filed before the publication. All of the above needs to be carefully considered in an inventor interview to determine if we have a deadline by which we have to file the patent application.
6. Statutory Bar based on commercial offer of sale: Section 102(b) also says that a patent cannot be obtained for an invention if the invention was "on sale in this country" MORE THAN ONE YEAR PRIOR TO THE DATE THAT A PATENT APPLICATION IS FILED.
The phrase "on sale in this country" is vague. It is difficult to determine what that means. The United States Supreme Court clarified the meaning of that phrase in Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998). In Pfaff, the Supreme Court stated that two requirements must be met before an invention in considered "on sale" under Section 102(b).
The first requirement is that is that there must be "a commercial offer of sale." There is no requirement that the offer be accepted. Therefore, in an inventor interview I would ask questions about whether the invention has been offered for sale or actually sold. If there was discussion about selling the invention, then I would ask follow-up questions to determine if the discussion constituted a "commercial offer of sale." If the invention has actually be sold, I would also ask where the sale took place. If both the offer of sale and the acceptance of the offer occurred outside of the United States, then the bar of Section 102(b) might not apply -- but the specific facts showing that the sale occurred outside the United States would need to be obtained and verified. Also, I would ask questions about the timing of the offer. If the offer occurred less than one year ago, then a patent application would likely need to be filed well before the one year anniversary of the offer, to be on the safe side.
The Supreme Court said that the second requirement is that the invention must be "ready for patenting." There are two ways that an invention may be ready for patenting. The first is if a working prototype of the invention has been built. If you have build a working prototype, then that would satisfy the requirement of the invention being ready for patenting. But your invention may have been ready for patenting even though no working model was built at the time an offer of sale was made. The Supreme Court said that the second way that an invention may be ready for patenting is "by proof that . . . the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention." Pfaff.
Therefore, in an inventor interview where is appears that a commercial offer of sale may have occurred, I would ask about drawings or descriptions of the invention that existed at the time of the possible offer of sale. For example, it is possible that you had not yet conceived of an important and novel feature of your invention.
There are other issues that would also be covered in an interview that are not discussed here do to space and time. These include a bar to filing a patent application due to previous public use, and other issues. This does not constitute legal advice and is simply general information.