Disclosure Questions
Note that the following information is written from the perspective of a practitioner working with a client.
It is important to recognize that in addition to serving as a practitioner, you also serve as a legal counselor associated with IP work. As such, you may be asked one or more questions relating to your role as an IP strategist or counselor.
When Will I Receive The Completed Product?
A patent can take years before it is granted; trademarks can take many months to more than a year. Clients often do not realize this, especially starting out. Additionally, depending on the track chosen (e.g. expedited review, normal review, etc.) for patent matters, many more years may be added onto the prosecution process.
It is good to give a general outline of stages and when each stage may be expected. For example, you may indicate that after the patent application is filed, 18 months or more may pass before a response is received from the Patent Office. Assure the inventor, however, that you will follow up periodically with the Patent Office to ensure that prosecution is proceeding appropriately. For trademark matters, an examination is typically conducted within 3 to 4 months of filing an application. If an initial refusal (“Office Action”) is issued, a response is required within 6 months from the issuance of the refusal. A trademark application typically takes from 9-18 months to register depending on the issues raised during examination, third party objections, or response times.
Is My IP Worth Millions?
Every client thinks their invention/name is worth millions. In fact, who doesn’t think their ideas are worth a substantial amount? I’ve thought the same too. Notwithstanding these notions, however, you should not give any false sense of value or security by applying for a patent. In all reality, the patent or trademark may end up not being worth as much as expected. However, I’d recommend that you be forward and upfront with the client.
For example, for patent clients, explain where a patent derives its value, including the breadth of the claim language, the clarity of the specification, the market conditions (e.g. is there a need for the invention?, etc.), the swaying of the jury, etc. Ultimately, we can set up the patent to achieve good results, but there are many subjective factors that weigh in on the value of a patent.
For example, for trademark clients, explain where a trademark derives its value, including the value of the product/business, the market demand for such a product/business, etc. In like manner as patents, a trademark can be set up to maximize protection, but there are also many subjective factors which may affect its value.
As an example, who would have envisioned ten years ago that a patent portfolio would be sold for $4.5 billion?[1]See, e.g., Philip Elmer-DeWitt, “Is Google buying Motorola for its 24,000 patents?,” CNNMoney (August 15, 2011), available at … Continue reading Yes, market conditions definitely play a role. So, to evaluate a patent now as being worth millions would be nothing more than a gamble.
Overall, focus on the objective and concrete elements that can be defined at this stage – competitors, market conditions, known products – and then build your application to best leverage this information. The better the leveraging, the higher the likelihood that a patent or trademark will be worth something.
Are You Going to Steal my Invention/Name?
This is a legitimate concern. Obviously, the client is sharing something that is very important. And perhaps the client has read accounts where a client shared the invention with someone who went ahead and patented the idea himself and ripped the original client off.
Reassure the client that not only do you have a moral responsibility to live above such practices, but you are legally bound to uphold a rule of ethics. As part of such rules, practitioners are required to properly represent individuals.[2]See, e.g., 37 C.F.R. §§ 10-11. Additionally, as discussed, many other legal bodies may impose additional rules.
To steal an invention from a client, therefore, would not only subject the practitioner to possible double disbarment (e.g. from the USPTO and state bar, etc.) but also would expose him to some potential civil or criminal liability as well. As such, you can reassure the inventor that we will not steal the invention or the name.
Additionally, you can indicate to the client that we keep their material confidential. If any of the resources are taken from on-site, they are done so through encrypted flash drives. In this manner, the information stays local (e.g. on site, etc.) and protected from any intrusions.