The journey to protect your startup’s intellectual property using a patent begins with an invention disclosure meeting with a patent attorney. This phase of the process exists to form alignment between the entrepreneur and the attorney and set the stage for a quality patent application. Let’s get into how one of these meetings works.
How important is the Invention Disclosure Meeting?
In the fast-paced world of tech startups, innovation is key. However, protecting that innovation through patents is equally crucial for startups wanting to maximize valuation for potential investors or acquirers. A misstep in the patent application process or a miscommunication of details of your invention can lead to delays, increased costs, or even failure to secure protection for your invention. The invention disclosure meeting with a patent attorney is a vital first step in avoiding these pitfalls.
The Goal of the Invention Disclosure Meeting: Alignment and Understanding
The central aim of the invention disclosure meeting is to ensure that both you and your patent attorney are on the same page concerning understanding the problem your invention solves, defining your invention (the solution to the problem), and understanding the difference between your invention and conventional attempts at solving the problem.
Understanding What Problem Your Invention Solves
Your invention likely addresses a specific problem or fills a gap in the market. Ensuring that your patent attorney comprehends this problem is vital, as it shapes how the invention will be described and distinguished in the patent application.
Key Discussion Points:
- Identification of the core problem or need
- How your invention provides a solution
- The impact of your invention on the industry or consumers
Defining What Your Invention Is & How It Works
A clear and concise definition of your invention and its functionality is imperative for the patenting process. This requires an in-depth technical discussion where the attorney must fully grasp the workings of your invention.
Key Discussion Points:
- Technical specifications and design
- Operational process and mechanisms
- Potential applications and target market
Highlighting Key Differences Between Your Invention and Conventional Solutions
Patenting requires showing how your invention is novel and non-obvious compared to existing solutions. This necessitates a clear differentiation between your invention and the conventional methods or technologies.
Key Discussion Points:
- Existing solutions and their limitations
- Innovative aspects of your invention
- Strategic positioning against competitors
The Danger of Misunderstanding
Failure to reach a shared understanding with your patent attorney can be disastrous. Miscommunication or misconceptions may lead to an erroneous or weak patent application. If you find that your attorney does not understand your invention, it may be time to re-evaluate either how you’re explaining it, or even the processes and players involved.
Preparing for Your Invention Disclosure Meeting
Your preparation for this meeting is as critical as the meeting itself. Gather all the relevant materials, diagrams, prototypes, and any prior art. Be ready to discuss your invention in detail and answer questions. Particularly, come ready to explain the problem your invention solves, how you figured out the problem existed, how your invention solves it uniquely, and how you came up with your invention.
Many patent attorneys follow a particular formula for these meetings.
For example, I usually ask the inventor to treat me as if I’m someone who has a grasp of the broader technical field of their invention, but that I don’t know anything about their invention or the problem it solves. Then, I ask the inventor to walk me through the problem, the conventional solutions, the invention, and why their invention is different. Then, after we’ve had that portion of the conversation, I’ll run through any remaining questions I have relating to the invention disclosure materials.
This is not for lack of reviewing the initial invention disclosure materials—I review them quite carefully in preparation for the invention disclosure meeting. From my experience, there are two reasons for this “blank slate” exercise:
- First, we need to ensure we can communicate the invention to a patent examiner, and potentially a judge, opposing counsel, and a jury, what the invention is. These folks often start with, at best, a grasp of the broader technical field.
- Second, we often tease out valuable details, the hook of the invention, and gain clarity on any previously-sent invention disclosure more efficiently than if I were to start by picking through my questions on the disclosure.
Keep in mind your invention is hopefully novel and not obvious, even to someone with ordinary skill in the field of art of your invention—if you didn’t think that was a possibility, you wouldn’t be having this meeting!
The invention disclosure meeting is not merely a formality but a foundational step in the patenting process. Through effective communication and collaboration, you set the stage for a patent application that accurately and robustly represents your invention.
Choosing a patent attorney who can understanding the nuances of your technology and is committed to a thorough and transparent invention disclosure meeting can make the difference between securing your intellectual property or falling into unnecessary complications.
Remember, your inventions are the lifeblood of your startup. Protect them wisely, starting with well-executed invention disclosure meetings.