Here's something to know when you are working with inventors: they don't want to be there. Your typical engineer-inventors don't have a huge incentive to do the patent paperwork. It's the company that stands to make the big profit. For the inventors, it's little more than documentation.
Inventors are focused on the core business of the company. As company attorneys, it's our job to serve them, not the other way around. So here are three ways we can do that job better:
1. Ask for background information before meeting with the inventor and read it.
Your time will be more productive if you don't have to start from zero. You'll be able to understand more and ask better questions. But whatever you do, don't ask for the background information and then fail to read it. The inventor will be able to tell and she won't appreciate your wasting her time.
2. Bring a tape recorder.
Consider going old school and record your conversation (with permission, obviously). This allows you to engage, learn, and ask questions without worrying about scribbling down notes. Most inventions are highly technical, so don't expect to understand everything on the first hearing. Listen to the tape recording at least a couple times before you call the inventor with follow-up questions.
3. Do things quickly.
Inventors are aware that the U.S. has moved from first-to-invent to first-to-file, so don't frustrate them by appearing to drag your feet. Another reason to be quick: memories fade. If you wait too long to get back with paperwork or questions, your inventor will have moved on to other things and will have to waste time and energy refreshing her memory.
You're the company counselor, so counsel your inventor by guiding her through the process. Let her know the steps to expect and keep her up to date with what you're doing. Most important: be prepared and be quick.
- The America Invents Act Is a Game Changer for Patent Seekers (FindLaw's KnowledgeBase)
- The America Invents Act: Big changes not just for patent lawyers (Inside Counsel Magazine)
- AIA Increases Need for Patent Attorneys, But Not Patent Litigators (FindLaw)