Initial consultation – 7 Core Concepts and 2 Goals
The patent process is extremely complex. I do no recommend taking on the project of preparing a patent application after reading a self help book such as Patent It Yourself. Whether you prepare the patent application as a DIY project or retain a patent attorney, I recommend going through a formal initial consultation with me.
The goals of the initial consultation is:
- First, I spot check common issues such as ownership, inadvertent disclosures, etc. that might be problematic to your situation. For most clients, these are not issues. Nevertheless, they are important concepts to cover since you will be investing a significant amount of time and money into preparing the patent application, contacting vendors, building prototypes, etc. You wouldn’t want to spend all that time and money only to find out at the end that you did something to jeopardize your patent rights.
- Second, I provide a next steps plan that guides you for the next 3-6 months.
To assist in spot checking the issues, I cover 7 core concepts. These concepts are:
- Invention: When you disclose your invention to me during the initial consultation, the attorney-client privilege will attach to the conversation and my duty to you as prospective client will arise;
- Prior art: You may bring the references you’ve found during your own search. I will briefly review and let you know whether I think your invention is patentable over the prior art;
- Different forms of intellectual property: We review the other forms of intellectual property such as copyright, trademark and trade secrets;
- Ownership: This is typically an issue when there are multiple inventors, investors or an employment situation;
- Foreign patent protection: Foreign jurisdictions differ from domestic patent laws. You need to be aware of the differences so that you don’t inadvertently waive your foreign patent rights;
- Overall patent process: I explain what to expect in the next 2-4 years; and
- First to file rule: I explain the harsh results of the first to file rule and how to mitigate problems with the first to file rule.
If you would like to retain me to represent you or prepare your patent application, the next step is contact me at (949) 433-0900 or [email protected]