Three Questions A Patent Attorney Will Ask You!
There are three questions that a patent attorney will always ask you during your first “invention disclosure meeting” with the attorney. These questions are (1) Have you disclosed your invention publicly in any way (e.g. talked to anyone about it, put it on the internet, etc.), (2) Where/when did you come up with the idea?, and (3) Did anyone help you come up with the idea.
Have you disclosed your invention publicly in any way?
The attorney is asking you this question because he wants to know if there are any “bar date” issues. When you disclose your invention publicly, you have one year from the date of public disclosure to file a patent application on your invention before you lose the right to file a patent application on your invention. We call this deadline a “bar date.” It’s the date that bars your ability to file a patent application on an invention.
“If you publicly disclose your invention, you have one year from that date to file a patent application – this is your bar date”
If you are reading this and are now concerned that you have a bar date approaching or even passed, you should know that public experimentation or seeking advice from a technician on the best way to build something likely does not classify as a public disclosure. If you feel that you have a bar date approaching you should contact a licensed patent attorney or licensed patent agent about your specific case.
Where/when did you come up with the idea?
The attorney is asking where and when you came up with the idea to confirm that the rights to the patent belong to you. Why wouldn’t the rights of the patent belong to you if you’re the inventor? Well, there are many employers that make engineers and technicians sign an employment agreement that contains a clause requiring all employees to assign any inventions over the the company that were developed while at work or using work resources. If you invented something while under the employment of a university or engineering firm, you should check to see if you signed any agreement requiring you to assign over the rights to all intellectual property developed while working for the university or engineering firm.
Did anyone help you come up with the idea?
The attorney is asking you this because he’s attempting to figure out inventorship. While you may be the person who came up with the invention, anyone who contributed to even one limitation of the claims is an inventor under patent law.