President John F. Kennedy said: “…ask not what your country can do for you, ask what you can
do for your country.” Both the inventor meets and the patent agent should us that as a motto
from the first time they meet.
From their first meeting, the inventor and agent share a common goal: getting a patent granted on
the invention. The inventor is the undisputed expert in the technology behind the invention. The
agent has experience in the legal requirements for getting a patent granted. Together, the inventor
and agent go through a four stage process. The stages are disclosure of the invention, preparation
of a patent application, filing of the application and examination of the application.
Typically, the inventor has much less experience in the “examination” than the agent. The
agent’s experience in examination of cases relating to other inventions means they can offer
guidance to the inventor during disclosure of the invention and preparation of the patent
application. Here is a brief description of how the inventor and agent can interact during the for
stages.
Disclosure of the Invention
Since the inventor is the undisputed expert in the technology behind the invention, this is the
stage where the inventor is most active. The agent’s role at this stage is to guide the inventor in
providing relevant material in an appropriate format and with sufficient detail. During this stage
the inventor and agent should discuss topics such as how the invention differs from previous
solutions to a similar problem, which portions of the invention are new and which portions
merely employ existing technology to perform its traditional function, and how the invention fits
into a business plan. It is important that the inventor disclose the invention to the agent before
making any public disclosure (e.g. presentation at a conference or trade show; publication of an
article; advertisement; Internet site or solicitation of a production contract from an outside
source)
The inventor can save time and money by coming to an initial consultation prepared to discuss
these issues and with drawings and/or text to accompany their verbal explanation. At the end of
this stage agent and inventor should both understand what portions of the invention are essential,
and which features are optional.
Preparation of a Patent Application
During this stage, the agent is more active but the inventor still plays an active role. Together the
agent and inventor agree on a set of patent claims which define the scope of protection desired.
The agent should explain the role of independent claims and dependent claims so the inventor
can offer meaningful input at this stage. It is often appropriate to organize the claims in sets, with
each set directed to a different aspect of the invention.
Once the claims are agreed upon, the agent can proceed to write a complete application. During
writing, additional questions may occur to the agent. The inventor should do their best to answer
these questions in as much detail as possible.
The agent provides a complete draft of the application to the inventor for review. The inventor
should thoroughly review the entire application and make comments. It is the inventor’s job to
make sure that all relevant details are presented in a way that will be understood by someone that
reads the application. Any concerns the inventor has should be addressed by the agent.
Once the inventor and agent agree that the application is accurate and complete, the application
is ready for filing.
Filing of the Application
This stage is purely administrative and is done by the agent. Prior to filing the inventor and agent
should discuss whether the application is to be a provisional patent application (PPA) or a
regular utility application. Once that decision has been made, the agent will provide any
necessary forms for inventor signature. Filing is typically done online and a filing confirmation
can be provided the same day.
Examination of the Application
This is often the most frustrating stage for the inventor for two reasons.
The first reason for frustration is that it takes a long time. The average time for receipt of a first
Office Action (Examination Export) in the United States is about 17 months. If you file your
application as a PPA add 12 months to that figure. Depending on how many rounds of
examination there are, the total time to grant can be much longer.
The second reason for frustration is that it patent Examiners typically reject all claims in the first
Office Action. The inventor needs to be prepared for this. The fact that all claims are initially
rejected does not necessarily mean that no patent will be granted.
Once the Office Action is received the inventor has the opportunity to provide a written
response. The written response should point out reasons why the grounds for rejection are
incorrect.
There are two categories of reasons why the grounds for rejection may be incorrect.
The first category of reasons why the grounds for rejection may be incorrect is technical reasons.
Technical reasons are based upon an incorrect interpretation of cited references by the Examiner.
The agent will try to identify as many technical reasons as they can, but the inventor has an
important role to play here in identifying technical reasons and/or criticizing technical reasons
proposed by the agent.
The second category of reasons why the grounds for rejection may be incorrect is legal reasons.
The agent takes primary responsibility for formulating legal reasons but the inventor will have
valuable input here. Many legal arguments rest upon what a hypothetical “person of ordinary
skill in the art” (POSITA) would or would not think or understand based upon the teachings of
the application under examination or based upon the teachings of reference(s) cited by the
Examiner. The inventor is often in a better position to evaluate what a POSITA might think than
the agent.
Once the agent and inventor have discussed the rejections in the Office Action and any relevant
legal and/or technical arguments they are in a position to formulate a response strategy. The
response strategy may include amendments to the language of the claims so long as the
amendments are supported by the application as filed. Before filing claim amendments it is
important that the inventor discuss the impact of the proposed amendments on the business plan.
Once an amendment strategy has been agreed upon, the agent prepares a draft response for
approval by the inventor. As with the application, the inventor should review this response to
make sure that it is complete and accurate.
In many cases, follow up of the written response with a telephone interview can be productive. If
your agent does not suggest a telephone interview, you may want to ask about the possibility of
an interview.
If an interview is scheduled, preparation of a list of talking points can be helpful. Interviews are
typically limited to 30 minutes and it is rare to get more than one interview per office action. A
list of talking points can help the agent present arguments in a logical and convincing order.
Even though the arguments are all present in the written response, discussion can help make the
Examiner more receptive.
Summary
View your patent agent as partner in pursuing a common goal. Let their expertise complement
your own and cooperate fully with requests to provide information or review documents.
