Fundamentals Of Patent Prosecution 2011 Highlights: Boot Camp for Claim Drafting & Amendment Writing


I’m sitting in this morning on Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing and the first speaker of the day is John O’Brien, Co-Chair of the program and Practice Center Contributor, who provided tips on how to take an effective invention disclosure.  Here are some highlights from the presentation:

O’Brien discussed Engagement Letters and how the letter may minimize allegations made by a client that the lawyer improperly mishandled the matter in question.  He provided a suggested Engagement Letter Checklist that included: 

  • Introduction with general description of matter
  • parties included in representation
  • any additional parties in matter who are not represented
  • specific areas in which representation will be included
  • specific areas which representation will not include
  • establish the expectations
  • detailed payment for services and timing for payment
  • grounds for attorney termination
  • primary responsible lawyer

O’Brien discussed key elements of the Inventors Notebook, which is used by scientists, technicians and individual inventors to document their research, experiments, procedures and ideas.  He said the notebook should be bound, each page numbered, each page entries in ink, each page signed and dated by researcher, each page signed as “read and understood” and dated by corroborating witness and that notebooks can be electronic.

He then discussed the Inventor Interview and strongly suggested that all parties involved in the invention are present during the Interview (inventor, colleagues, technicians…).  O’Brien provided a meeting checklist for the Inventor Interview that included: explaining who is the client and if invention has been assigned,

  •  advise inventors that you represent the assignee
  • explain patent obtaining procedures
  • explain duty of disclosure
  • explain your role of attorney
  • explain the inventor’s role (i.e. to provide the required technical information)
  •  let the inventors say what she or he believe is the invention- Do Not Interrupt
  • take control or charge of only speed of delivery – do not try to be an expert or inventor.

O’Brien concluded by suggesting that a prior art search, while not necessary, should be made before drafting the patent application, identify competitors and review their patent claims and determine if pursuing a patent application is worthwhile.

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