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November 15, 2004
Educating the Inventor
I see my ideal role as a patent professional more as a facilitator and educator than as a scribe.
The easy way out is to merely listen to the inventor and write down what is said as the invention. This is the scribe approach. This is sometimes necessary when the inventor is a corporate engineer who has many other things to do and doesn’t want to spend any more time talking to me than absolutely necessary. The classic case is the inventor who already has been through the patent process a couple times with another attorney and is tired of explaining details to someone who has no clue about what the invention is.
This callused inventor is often difficult to interview and can be short and unreasonable.
When dealing with a first time inventor, especially in the corporate setting, I spend a reasonable amount of time setting a good tone with the inventor. I want him to take his invention, stand back a little, and explain the big picture. Then, I coax him into looking at different embodiments of the invention and competing ways of accomplishing the same result. Together, we explore how his original invention differs from an alternative way, or if the alternative method should also be captured in the patent. This thought process takes a tremendous amount of creativity, technical knowledge, and preparation by the attorney.
This thought process on the part of the inventor is sometimes unnatural and unnerving for some people, but can be very fruitful for writing a more useful and broad patent. An inventor who’s first few dealings are with a patent attorney who is merely there as a scrivener and adds nothing to the equation becomes callus and indifferent to the process, and ultimately yields a narrow patent that is not as valuable as it could have been.
Posted by krajec at November 15, 2004 06:50 AM
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Comments
Good post, Russ. It is definitely a skill to elicit the right information from engineers. I find it continually amazing how resistant some engineers are to answering a question. "Can you do it this way?" is often answered with, "No" when they really mean "it wouldn't work [as well] that way", for example.
Posted by: Stephan Kinsella at November 15, 2004 01:28 PM