You have a new and innovative solution (for example, a product or a method) that solves a problem. You want to apply for a patent covering that solution. To discuss the patent application, you set up an appointment with a drafting patent attorney. In the discussion, the drafting patent attorney will ask questions related to the solution so that they understand it well. In order for such discussions to be productive and efficient, it would be useful to be prepared with answers to a few basic but important questions beforehand.

General questions:

  1. Is there a "conflict of interest" with the drafting patent attorney?

Conflict of interest may arise, for example, when the drafting patent attorney has represented (in the past or present) a client whose solutions might be similar to your own. This is a key question to be answered before you provide any confidential information about your solution to the attorney. Ideally, this should be confirmed even before fixing the appointment with the attorney.

  1. Determine who you are - a private inventor or an employee inventor?

A private inventor acts in their personal interests and is also the owner of their solutions. Sometimes, the private inventor may have a relationship with a third party, for example, a financial backer or a potential licensee with an interest by way of financial input. In such cases, you should discuss and clarify your relationship with the attorney to avoid any future legal disputes.

Employee inventors are usually under contractual obligations to their employer. If you are an employee inventor, questions you should try to answer include whether you have developed the solution without the aid of your employer's resources, such as tools, workspace. It is also useful to review your employment contract to check for any clauses mentioning the assignment of your inventions to your employer.

  1. Do you have co-inventors?

If multiple contributors have been involved in the conception or realization of the solution, you should be prepared to discuss with your attorney details of your co-inventors, and the steps or parts of the solution in which they have taken part.

In India, you may identify your co-inventors based on the following criteria (note that the position may be very different in other jurisdictions): A person who intellectually contributes to the creation of your solution could be a co-inventor of your solution. However, a person who merely helped you in conducting experiments or followed your instructions to build a prototype of your solution should not be considered as a co-inventor, as per the decision by the Controller of Patents in National Institute of Virology vs Mrs. Vandana S. Bhide (Pre-grant Opposition before the Controller of Patents in Patent Application 581 /BOM/ 1999 ).

Further, in an employer-employee relationship, an employer who provides only wherewithal (e.g., finances required to develop the solution) cannot be considered an inventor, as laid out in V.B. Mohammed Ibrahim vs Alfred Schafraneck And Ors (AIR 1960 Mys 173).

  1. Has the solution been publicly disclosed before?

The prior disclosure of an invention may prevent you from getting a patent, and as a thumb rule, no disclosure should be made before filing the patent (See:

Public disclosure can affect the application process in many ways. Therefore, it is important to have the following information ready and available:

a. the date on which the solution was confirmed;
b. copies of presentations, brochures, or web pages that disclose the solution (or a part of the solution) with their corresponding publication dates;
c. details of all third parties that know of the solution;
d. dates of disclosures to each third party; and
e. details of any non-disclosure agreements that third parties may have signed;

If any public disclosure is being planned in the future, the drafting patent attorney must be informed in advance, so that your patent application can be prepared and filed before the disclosure actually takes place.

  1. How will you commercialise your solution after being granted a patent?

Being granted a patent for your solution is not the end of the journey, but merely a beginning. An issued patent does not itself generate capital. It is, therefore, essential to think about how the issued patent will be commercialised. This could be done in many ways, including maintaining a competitive advantage, licensing or cross-licensing the patent, or selling the patent. Discuss your plan and options with the attorney.

  1. Do you know of any organisation or competitors who are trying to solve the same problem?

Have you come across any similar products, patents, publications, brochures, that seem to relate to the same or similar solution you have arrived at? This information may guide the drafting patent attorney to understand how crowded the associated technology space is, and help in identifying the scope of your patent application.

Technical questions:

  1. What problem does your solution solve?

This includes aspects such as the technical field to which your solution belongs, the problem solved by your solution, the current solutions available in the market that can solve the same problem, the limitations of the current solutions, the publications/prior arts disclosing the current solutions, and so on.

  1. What is your solution to the stated problem?

Try to summarise your solution in short pointers or statements. Write about the most recent configuration of the solution, and the advantages that the solution provides. Try to answer functional questions relating to your solution, such as how your solution can be used and will function, or what product or services will your solution be used on or with. Collect visual aids, such as drawings, pictures, videos, descriptions, and flowcharts, that might help explain your solution better to the patent drafting attorney.

  1. What is the category of your solution?

This involves answering questions such as whether your solution is a machine, or an assembly, or an article, or a process, or a composition; and whether it can be considered under multiple categories, for example, a machine as well as a process.

  1. Does your solution include multiple inventions?

Check if your solution has multiple features/components which, according to you, are novel and never existed in the market before.

  1. Do you have an experimental data log related to your solution?

Experimental data have always been a crucial part of a patent specification. The significance of experimental data in a patent application has increased over the recent years, and can be provided as examples in the patent specification. When prosecuting a patent, the Controllers/Examiners may sometimes ask for experimental data to confirm the output or result or technical advancement of the solution.

These are a sample of the questions you should be prepared for when you meet a drafting attorney in connection with your solution. Depending on the specific nature of your invention, the attorney may seek different clarifications, or ask you for additional information not covered here. Nevertheless, being equipped with the answers for even just these will prepare you well for a preliminary meeting, and help you smoothly set sail on your patent journey.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.