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How to Make the Best of Your First Meeting With a Patent Attorney

24 Oct, 2023

Make the most of your first meeting with a patent attorney by addressing business, formalities, and technology aspects, laying the groundwork for a robust intellectual property strategy.

How to Prepare for the First Meeting with a Patent Attorney?

Congratulations, you are ready to step up, and the time has come for intellectual property protection. This is what you need to know for getting the most out of your meeting with a patent attorney.

Three points of view are represented in the meeting: business, technology, and legal.

The meeting is a work meeting – the client also works in the meeting! A properly prepared meeting can cover recommendations for the use of intellectual property protection to promote the venture and commercialize the technology.  The meeting can yield clear decisions, defined questions, a work plan, and budget.
The term ‘invention’ is often used, and a meeting with a patent attorney often follows the preparation of an ‘invention disclosure’. But identifying the ‘invention’ requires legal review that you may need assistance with. Further, advanced products and services are sophisticated, and adequate protection involves the full span of intellectual property rights. This is what we are here for!   
We will start the discussion by looking at your venture in its broad context: what is the problem you solve for your potential customers? What is the value you deliver? What are the technical features of your solution that facilitate this value?

Who should attend the meeting?

Three experts are needed: the business expert – the entrepreneur or manager. The technology expert – the developer or development manager. The patent attorney is the legal expert.

What does your patent attorney need to know?

Business: your business strategy, market, value proposition and competition.
Technology: what do you do that others don’t? What makes it better? Innovative?

When should you meet your patent attorney?

Early on! As soon as you have a clear picture of the main business and technology aspects. Not too late! Before looking for partners, funders, investors, and contractors. You can have a valuable meeting with your patent attorney even before you build a prototype, run a field test, or complete the design.

Please prepare for the meeting based on the following:

General description of the solution:

  • What is the product?  (or the service, the application)

  • What will you sell? What about consumables, spare parts, service, maintenance?

  • Who will manufacture it? Where?

Technology disclosure:

  • What are the technical aspects of the customers’ problem?

  • System: a schematic illustration of a system implementing the solution.

  • Operation: a general flow diagram of the main activities.

  • Innovation: what makes your solution useful, unique, and innovative?

  • How the innovation contributes to the value proposition?

  • What will you need to disclose to others?

Ownership and rights:

  • Who worked on the solution and contributed to its development?

  • What is the status of the contributors – partner, employee, contractor?

  • Have you received external funding – public, private – for the development?

  • Who will own the rights? Who will pay for the patent? Who is the inventor?

You may wish to discuss the following aspects with your patent attorney:

  • The potential measures and scope of protection, timing

  • Review of prior art

  • Milestones, timeline, budget, related decisions

The content provided by:
Adv. and Patent Attorney Einav Zilber
VP IP Magnus Metal
Former Chair of IPAA

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