Strategies for Communicating with Inventors During Patent Prosecution

Adapted from an IPIC Webinar on September 26, 2023 by Richard Mar, Ilya Kalnish and Tamara O’Connell

Over the course of a patent prosecution file, an agent will routinely be in communication with one or more inventors of a subject application. The form of communication may vary depending on a variety of factors including the size and sophistication of the client and/or inventors.

The following are considerations directed to where clients are either individual inventor(s) or smaller companies, such as start-ups.

Pre-filing discussions

A number of topics may be discussed prior to filing, such as understanding the business of your client, explaining patents rights, discussing confidentiality considerations, and discussing implications of collaborations, joint ventures, and consultants.

Understanding the business of your client may include identifying the stage of company and how this may affect rights, goals for applying for a patent, the current state of the industry, benefits of applying for a patent, and commercialization and disclosure plans.

Explaining patent rights may include clarifying a common misconception held by clients that patents provide a right to practice an invention, identifying inventive features, explaining that inventive features may not be “earth shattering” but rather small improvements, and discussing general requirements of an invention (for example, utility, novelty, non-obviousness, etc.).

Confidentiality considerations may include discussing control of information and having adequate safeguards to prevent accidental disclosure and/or theft thereof, encouraging the use of non‑disclosure agreements, explaining that “disclosure” of an invention may occur in many different ways, and explaining that while Canada and the US (among others) have grace periods regarding disclosure, many other jurisdictions do not.

Identifying and discussing possible arrangements or circumstances that may result in collaborations, joint ventures, and consultancies may be discussed including their effects on patent rights, ownership rights, and enforcement options.

Invention disclosure

Disclosure of the invention and related information necessary for preparing and prosecuting a patent application may take a variety of forms.

The goals of such disclosure include identifying the invention, identifying the problem to be solved by the invention as well as the solution thereto, identifying the state of the art as well as standard ways of approaching the identified problem, streamlining this process using standardized forms and scoring systems (for example, for identifying inventions that would be ideal for patenting), and discussing inventorship.

Drafting

There are a number of factors relating to drafting that should be considered, including managing drafting efforts and costs, considering costs associated with obtaining broader scope of protection, explaining that drafting narrow (and potentially “useless”) claims that may be allowable may be easy, and the drafting process may be iterative.

In order to manage drafting efforts costs, you may try using as much pre‑drafting “knowledge” as possible, relying on prior art documents, and clustering drafting, if possible.

Filing

You may present different filing options to your client, including provisional applications, regular applications, PCT applications, continuations, divisionals, or other “creative” filing strategies. The creative filing strategies may include the use of China/TW dual track filings, the PPH process, and the Track 1 process.

Where a client may apply for patents in foreign jurisdictions, foreign filing management may be discussed, including the selection of jurisdictions as a business decision based on your client’s place of business, manufacturing, target market, and the location of potential licensees. You may also want to discuss PCT applications as well as translation requirements and associated costs.

As illustrated above, patent value may be viewed as a combination of business factors, technical factors, external factors, and legal considerations. Business factors may include market importance, strategic value, and product lifecycles. Technical factors may include technology advantages, development status, complexity, competitive contribution, and the availability of design‑arounds. Legal factors may include claim scope, detectability and enforcement considerations. External factors may include the relevant industry and competitive landscape.

Prosecution

During prosecution, you may want to avoid using legal jargon when explaining important concepts, use analogies where appropriate, explain the role of the inventor in the prosecution process, and discuss trade‑offs associated with the speed of prosecution and breadth of claims.

Examples of analogies may include explaining the role of the patent examiner as a gatekeeper and how to present complex legal concepts to non‑legally trained inventors or business leads (for example, “prior art” or “final” office actions).

Monetization and Costs

An understanding of your client’s monetization goals is important for providing appropriate advice respecting patent strategy. Your client may have an exit strategy, wherein attracting investment or value is a key goal. Your client may be primarily interested in developing a revenue stream through licensing or selling patent assets. Alternatively, your client may be interested in affecting the marketplace or industry by putting up barriers to entry.

Discussions relating to costs are important and may vary depending on a number of factors. You may want to identify appropriate times to discuss costs, provide cost estimates, provide lifetime cost estimates, suggest avenues for cost savings, consider billing strategies, and discuss portfolio growth.