131
Preparing for an Effective Practitioner Interview
their geographic location and by their areas of scientific expertise.
This is particularly helpful if the invention is in a specialized field.
Once a practitioner has been found, conduct an interview and
find out about the practitioner's background. Patent practice is spe-
cialized based on the technology. For example, if the invention is for
a new gene therapy, one may not want a patent practitioner with an
electrical engineering background to work on the patent. By asking
the practitioner about his or her background and experience one can
easily determine whether the practitioner's background is a match
with the technology of the invention. Feeling comfortable with the
patent practitioner is important because all the details of the inven-
tion must be revealed to this person. If the inventor does not feel
comfortable doing this, the patent process will be an uphill battle.
TIP:
Interview several patent practitioners before
selecting your representative.
Preparing for an Effective
Practitioner Interview
Many inventors never meet a patent practitioner until they are
ready to file a patent application. Every practitioner needs certain
information to properly prepare the patent application. Having this
information assembled before seeing a patent practitioner will maxi-
mize the efficiency of the first appointment and save money in
preparing the application if there is an hourly rate charge.
A list of the names of all the people who worked on or who
contributed to the invention is needed. This list should include the
full names of the individuals, their home addresses and their coun-
tries of citizenship. The practitioner uses this information to deter-
mine the correct
inventorship
and prepare the
declaration.
If the inven-
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Preparing the Patent Application
tion has a title, that should also be provided along with a description
of the technical area for the invention. This helps the practitioner
categorize the invention for searching and rendering a
patentability
opinion. Inventions resulting from work that was federally funded or
funded under some type of contractual agreement will require sup-
plying the name of the agency and the grant number. The U.S. gov-
ernment has a royalty free license to any invention that results from a
U.S. government contract and a statement showing this must be in-
cluded in the patent application.
To find out if the inventor has started the 1-year grace period,
the practitioner needs to know if and when any of the following
events occurred:
(a) invention first displayed in public;
(b) invention described in a publication such as an abstract for
a technical meeting, a scientific paper, press release, or placed on the
Internet;
(c) invention described orally at a public meeting;
(d) inventor's intention to publish the invention within the
next 6 months;
(e) invention offered for sale-remember that submitting a
write-up of the invention in a proposal with the intention to com-
mercialize the invention is an offer for sale; 2
(f) invention revealed to a third party and if the inventor re-
vealed it under a
confidentiality agreement.
Note that a confidentiality
agreement is an agreement between two parties in which they agree
that the subject information will be kept secret.
A written description of the problem to be solved and any rele-
vant publications that discuss the problem are helpful in understand-
ing the background of the invention. Identifying how others tried to

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