Improving Communication Between Inventor and Patent Agent/Attorney
Effective communication between the inventor and the patent agent or attorney is key in producing a high-quality patent application. Both the information disclosure form and the first draft of the application play central roles in that communication. However, at least in a corporate setting, the IDF plays another role that is frequently in tension with its primary purpose; it must first convince the company’s intellectual property committee that the invention is worth the effort and cost of filing a patent application. Failure to meet this challenge spells doom for the invention, at least as a patent. Conversely, the draft application is really directed to the patent examiner, not the inventor. To the inventor the draft may be replete with misunderstandings and seem inexplicably padded with details of, at best, tangentially connected technology. Based upon my experience as both inventor and patent agent, I offer some simple suggestions on how communication between the agent and inventor might be improved.
This article stems from my experience as an inventor in two major US corporations, a brief time with a start-up, and now a new career as a patent engineer with Osha Bergman Watanabe & Burton (OBWB). As an inventor I wrote dozens of information disclosure forms, more than 20 of which were ultimately granted as patents. I took several “Patents for Inventors” courses. I also served on a couple of IP Committees reading hundreds of IDFs and advising which should be filed as patent applications. Since, joining OBWB I have read, and converted to patent applications, dozens more.
Looking back on my time as an inventor, especially the early years, I remember how opaque the patent prosecution process seemed. I would write an IDF, and then months or even years later I would receive a draft application (often without having any knowledge that the invention described in my IDF had been approved for patenting) with a request that I should review and revise the draft application. Still more years after that, I might receive notification that a patent had been granted. Today, as a patent agent (and my comments apply with equal force to patent agents, patent attorneys, and technical advisors) I see the process from the opposite perspective, and this new vantage point has prompted some thoughts on how miscommunication between the relevant actors arise and how communication might be improved. Although my experiences are personal, I do not think they are unique, and although my technical background lies in the oil and gas industry, I hope that these thoughts may be of interest more broadly.
As an inventor I had any one or more of a number of reasons for drafting and submitting an IDF to my company’s IP committee. Perhaps I thought I had a revolutionary idea and wanted a patent, or I wanted to publish in a prestigious journal but the company’s policy said I had to patent it first, or (and indeed this happened) my manager said I had a quota of IDFs to write whether or not I had any good ideas.
Irrespective of the motivation, I quickly learned the first hurdle on the road to a patent was the company’s IP committee. The committee would need to be convinced that my idea was worth protecting with a patent, which costs time and money without any guarantee of success. The IP committee typically comprised an in-house patent attorney, a few department heads, and a handful of senior technical advisors. They would meet once each calendar quarter to consider several dozen IDFs for possible filing. All of the committee members, except possibly the in-house attorney, had other more pressing priorities and, consequently, they devoted limited time and attention to each IDF. So, to clear the first hurdle the IDF needed to be short, focused, and emphasize the business value of the invention. Moreover, as only a small fraction of IDFs would clear the hurdle, and for sometimes inscrutable reasons, I had limited motivation to write more extensively.
Fortunately, I could assume that the committee, at least the members likely to be receptive to the invention, had some background in the relevant subject matter and were fully conversant with my company’s specific acronyms. I used those proprietary acronyms extensively, and omitted background information almost entirely. Furthermore, because I am human and had not learnt better from the patent-for-inventor courses I had attended, I often succumbed to the temptation to focus solely on my preferred embodiment, an embodiment that I regarded as the only right way to implement the invention. Finally, since I had no idea that the application would be just the opening bid in a negotiation with the USPTO, I followed the usual academic style of writing and avoided overstating the scope of the invention.
As a result, I’m sure many of the IDFs – limited in scope, replete with business benefit and company specific acronyms, but devoid of comprehensive or comprehensible technical descriptions and alternative embodiments - were viewed with dismay by the patent agent when they arrived in her docket. But her dismay was no greater than mine when, always months and sometimes years later, my first contact with the agent was often receipt of her first draft application. That first draft frequently contained extensive misunderstandings of the invention and multiple pages describing seemingly irrelevant technology.
Early in my career a number of things about this situation often puzzled me. Why hadn’t the agent emailed me and asked some obvious questions before starting work on the draft application? Had I developed, improved, extended, or abandoned the invention, in the past year, or more? Did I have other materials such as internal reports or journal manuscripts containing more detail, background, or context, that I could share? In almost every case the answer to at least one of those questions would have been “yes,” but the questions were rarely asked. And what was the purpose of the pages of descriptions of tangentially related technology? It was a long time before I discovered that they might be part of a prosecution strategy to avoid an “abstract idea” rejection and to ensure the application was assigned to a favorable art unit at the USPTO.
So, faced with these conflicting incentives and crossed communications, is all lost? I hope not. All inventors, especially new ones, could be encouraged (by their in-house attorney) to include where possible a message to the agent in their IDF along the lines of “there may be reports describing this invention in more detail, with greater background and context, please ask me before you start writing.” Equally, agents might be encouraged to ask questions early, perhaps when reporting patentability searches, incorporating the same sentiments. “Do you now have a more detailed description, or are there any new developments that need to be incorporated?” Asking this simple question would avoid much commonly encountered difficulty, especially if the date on the IDF is more than a few months in the past. Perhaps, it would also be helpful for the agent to ask the inventor to specifically think about how a competitor might try to circumvent the invention, even if as a sub-optimal embodiment. And finally, I would advocate for an agent pointing out to inventors which parts of the draft application (by page and line number, ideally) contain the core discussion of invention (and deserve the inventor’s special scrutiny) and which are parts may be rote text in support of a carefully-crafted filing and/or prosecution strategy.
Doubtless, the best inventors, encouraged by able in-house attorneys, and the best agents already routinely apply variants of these practices but, at least in my experience, they are far from ubiquitous. Why not mystifies me, however, because improved communication seems such an easy thing to accomplish, as I have suggested.