Client Disclosures

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Client Disclosures

Note that the following information is written from the perspective of a practitioner working with a client.

For patents, a client disclosure is your opportunity to learn as much about the invention as possible.  Think about it for a minute.  You are going to write an application that will generally be 20-50 pages.  You will be doing this all from what is gleaned typically from the client disclosure.  So the better you prepare for the disclosure, the easier your job will be to write up the application afterwards.

For trademarks, the mark itself is generally already public (as the rules generally require “in use”).  Additionally, the application is done typically all online.  Nonetheless, collecting some information from your client may be helpful as you prepare the application.

Pre-Meeting Actions

In some companies, an inventor is required to fill out an internal document that usually is some type of a “disclosure form.”  I would verify whether your client will provide you with such a form before your meeting.  If the client does not have such a document, send the inventor a pre-disclosure form.  Such a form may include the following.

Patent Client Disclosure Form

TITLE OF THE INVENTION: A title should give a one sentence of what the invention does.
 
APPLICABLE INVENTORS: An inventor is one who gives a material “contribution to at least one of the claims” (M.P.E.P. § 2137.01V).
Inventor 1 – Name:
Contribution to the invention 
Home Address 
Phone Number 
Email 
Signature 
Inventor 2 – Name:
Contribution to the invention: 
Home Address 
Phone Number 
Email 
Signature 
Inventor 3 – Name:
Contribution to the invention: 
Home Address 
Phone Number 
Email 
Signature 
Additional inventors: please add information on the back of the sheet.
BACKGROUND: What problem was solved by your invention? What were the issues that prompted the invention?
 
BACKGROUND: What documents/publications relate to the invention? What presentations relate to the invention? **Please include any known documents, even if you are the author.
 
DESCRIPTION OF THE INVENTION: Provide procedures used to achieve the results. Provide data/evidence used to support the results. Provide any papers or visual materials you may have.
Please add additional sheets as necessary.
USES OF THE INVENTION: How do you intend the invention to be used? Are there any other ways (besides how you intend) in which the invention could be used?
 
POTENTIAL LICENSEES: List any applicable company/entity/individual that could benefit from this invention.
 
USES OF THE INVENTION: How do you intend the invention to be used? Are there any other ways (besides how you intend) in which the invention could be used?
 
POTENTIAL LICENSEES: List any applicable company/entity/individual that could benefit from this invention.
 
AFFIRMATION: “I/We hereby solemnly swear and affirm under oath that the I/we am the only inventor(s) of this invention and that I/we have not knowingly omitted any other inventor, and that the information provided herein is, to the best of my/our knowledge, true and accurate.”
Signature                                                                             Date Signature                                                                             Date Signature                                                                             Date  

A disclosure form is helpful for a variety of reasons.  First, it helps the client to identify what has been done (in an orderly and concise manner).  Second, it helps you to briefly get a sense of what has occurred (i.e. helps you prepare your questions, etc.).  Third, the disclosure form helps to collect in one location information needed for an application (e.g. names of individuals, known prior art, etc.), etc.  The disclosure form will not solve all of your problems, but it certainly will assist you in making your time more effective.

During the Inventor Disclosure Meeting

The client disclosure form is helpful for another reason not discussed above.  When you meet up with the inventor, the disclosure form can act as a guide or template to organize your discussion.  For example, at the meeting, a possible meeting format may include:

  • Background
    • Have the client walk you through what led to the need or discovery of the invention/name.
    • How is the invention/name different from other known inventions/names?
  • Detailed Description
    • Have the patent client walk you through step by step the invention. Sometimes, figures or screenshots will have already been compiled which can be used as a basis for discussion.
    • Have the trademark client indicate where the name will be used, as well as what market it will be used in.
  • Other Embodiments
    • For the patent client, in addition to what the inventor thinks is the “best mode” as well as other embodiments of the invention, how else might the invention be applied? Any other markets this invention may have application to?
    • For the trademark client, are there any modifications to the name and/or design which have or should be contemplated?
  • Competition
    • Are you aware of other similar inventions/name/products?
    • What companies do you think this would be possibly applicable to (e.g. for a license)?
  • Prior Art              
    • What prior art sources is the inventor aware of?

The initial disclosure form can therefore be a type of “agenda” that you both review during your meeting.

One of the temptations during the disclosure meeting is to get out your yellow notepad and furiously be taking notes on everything the client is saying.  Although you may have thorough notes by the end of the meeting, the sad reality is that you may not have really understood anything that the client has disclosed because you were too focused on taking notes.  As such, I’d recommend getting a digital recorder and simply recording the entire meeting.  In this manner, you don’t have to focus on taking notes but can devote your entire attention to making sure you thoroughly understand what is being disclosed.  Even if you are doing a teleconference, I’d recommend recording it so that you can simply focus on what is being described.[1] Don’t forget privacy laws however.  Make sure you get their permission before recording the conversation.

Additionally, for patent clients, it may be helpful to immediately draft a claim with the inventor to see if you correctly understand what was invented.  As you listen to the inventor therefore, you may consider jotting down the outline of a possible claim. Keep in mind also that the disclosure form may give you the basis you need to draft a preliminary claim.  As such, you can come prepared to the meeting with a claim pre-drafted and ready for review.

One of the benefits of presenting a preliminary claim to the inventor is that you can get immediate feedback.  This allows you to make sure you are on the right track.  Additionally, this allows the inventor to see a bit of how his invention may be claimed.  Often, an inventor may be a bit confused as to how his complex invention could be contained in a mere few sentences.  In fact, the inventor may even indicate that many details were left out. 

This could be a great opportunity to explain to the inventor that the purpose of the initial claim is not to put down everything relating to the invention.  Rather, it is meant to be a bare skeleton of the absolute most essential features of the invention.  In this manner, the claim would permit the broadest protection possible, which may then be restricted based on what has been publicly disclosed.

After the Inventor Disclosure Meeting

In addition to providing you with some pre-information, and serving as an agenda for your meeting, the disclosure form also can make a great reference for when you sit down and start drafting an application.

I’d recommend that soon after the inventor disclosure meeting, you listen to the taped recording and ensure that you understand everything that was discussed.  Some firms go ahead and transcribe the meeting so that the discussed elements can all be incorporated into the final application.  Regardless, do what you need to so that 1) you fully understand what was discussed; and 2) everything disclosed is incorporated (or at least considered) into the final document.

It only takes once of having to write a 30 page application based off of a single paragraph disclosure to recognize the importance of a well filled out disclosure form and an effective disclosure meeting.  Make sure you use both!  It will make your job much easier.

References

References
↑1 Don’t forget privacy laws however.  Make sure you get their permission before recording the conversation.