Lawyers and Settlements
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Intellectual Property: Patents

Suggested Steps for Inventors to Take in Protecting their Invention:

STEP 1: Prepare a Disclosure of the Invention

Lawyers charge for their time, except sometimes for initial consultations when the lawyers are determining whether to take your case, and patent lawyers are no exception. Therefore, an inventor can save a great deal of time and money by making the lawyer's job easier. A few hours spent by the inventor at the start may result in hundreds of dollars of savings and a better application in the end.

It is relatively easy for the typical inventor to organize the inventor's materials, and the inventor can help the patent lawyer by preparing a written description, drawings, and perhaps a model, if practical. At a minimum, the disclosure should include a description of the problem that the invention solves, previous ways of solving the same problem (if any), all known relevant prior art inventions, a description of how the invention solves the problem and a detailed description of the best mode of practicing the invention. If there are some likely alternative embodiments of the invention, those should be described also. The inventor does not have to detail each and every remotely possible embodiment, but describing alternatives or modifications helps the lawyer to draft claims more broadly to provide better protection for the invention.

The disclosure should be clear.
It is not necessary that it be typewritten or that there be drawings, but both certainly help. A legible, carefully handwritten disclosure is adequate. Sketches or drawings are quite useful and can reduce the amount of description needed.
A good disclosure is not necessarily long.
If the inventor isn't sure whether something should be included in the disclosure, the inventor should put it in and let the patent lawyer decide whether or not to make it part of the patent application. If the inventor has relevant prior art documents, copies of these should be provided to the patent lawyer along with a description of their possible relevance to the new invention. Drawings prepared by the inventor should be clear and sufficiently detailed.
It is good practice for the inventor to number the various parts of the invention in the drawings and to refer to those numbers in the written disclosure.
This is what will be ultimately required in the patent application, so by doing this the inventor may reduce the time the attorney needs to do the reference numbers in the application. It will also minimize the time the attorney needs to figure out what parts are what. If alternative embodiments of the invention are described in the disclosure, then drawings should be submitted illustrating them. One good clear method of numbering is to start with 100-199 as the items in Fig.1, 200-299 as the number of any new items in Fig.2, 300-399 for any new items in Fig. 3, etc. so that by looking at any reference number the reader can determine which Figure to check to see where that item was first shown. The same part should keep the same number throughout the drawings Another method in common use is to use even numbers starting with a number higher than the number of Figures (to avoid confusion with Figure numbers) and to allow room to add odd numbers if additional numbers are needed later.
Above all, conceal nothing from your lawyer.
You can only lose by keeping secrets from your patent attorney, who is required by law to keep everything you tell him secret. Your lawyer is very, very unlikely to even consider stealing your invention. That would likely end the lawyer's lucrative career and chance getting the lawyer disbarred. Attorneys are not going to risk their career to steal your invention, even in the unlikely event they think it is the greatest thing they have ever seen. Concealing facts from your lawyer may get you both in trouble and may result in your patent attorney unknowingly getting you an invalid or unenforceable patent at your expense. How can the patent attorney disclose the “best mode” if you hide it from him or her? If a model of the invention exists, it should be shown to the patent lawyer. If prior art is known, you MUST tell your lawyer about it and your lawyer MUST tell the United States Patent and Trademark Office. Anything less is a fraud that, if serious enough, could invalidate your entire patent. If you did not invent the invention yourself, tell your patent lawyer so he can determine what, if anything, you did invent and whether negotiations are needed with a co-inventor. If no drawings exist, photographs may sometimes be used, and your patent lawyer will normally have a patent draftsman available to make drawings according to the special standards required by the United States Patent and Trademark Office.
Information on this page was supplied with permission of Bruce E. Burdick.


Patents | Step 2