Working with Inventors
Note that the following information is written from the perspective of a practitioner working with a client.
I was once asked, “If you could have the opportunity to interview any past inventor, who would it be?” My immediate reaction was Thomas Edison, Henry Ford, or Nikola Tesla. They had a drive for life, a vision on how to change the world, and frankly, some pretty neat ideas. But as I reflected on “why” I would enjoy talking to such inventors, I came to a stark realization – that is precisely why I enjoy working with clients now. They will come to you with a drive for life, a vision on how to change the world, and many ideas, some of which will simply cause you to smile.
Clients are the lifeblood of our business. If there were no clients, we would not have work to do. As such, it is imperative that we learn how to work well with them.
This article focuses on your interaction with clients, including how to work effectively with them, conduct interviews, and respond to their questions.
First off, you need to keep in mind that your legal perspective is a bit different than the person who comes walking through the door.
For those relating to patents, an inventor may follow the basics of the scientific method: 1) collect observations; 2) formulate hypothesis; 3) test hypothesis; 4) analyze; 5) formulate conclusions. An inventor, as a scientist, approaches problems in a very logical, concise step. For example, consider a typical “lab notebook.” Each and every step is recorded, dated, and followed up on.
For those relating to trademarks, the client may follow a very business-oriented approach: 1) come up with a product/business; 2) determine applicable market; 3) apply for protection for product/business; 4) release product/business; 5) make money. Under this approach, they are approaching protection not as “the” ultimate goal, but rather one of many steps to getting to the end goal – to make money and take over the world.
Interestingly, regardless of the perspective, much of it follows what a lawyer is trained to do: 1) gather facts; 2) look up the law; 3) apply facts to the law; 4) analyze; 5) conclude. A client and a lawyer generally take a very methodical approach to problems and tasks. They may call them by different names, but ultimately, the process is very similar – a logical reasoning and way of thinking, with set goals in mind.
Despite the similar thinking, however, some differences do exist. First, the end goal of both the lawyer and the client may differ.
For the patent client, the goal often is similar to that of a true scientist – make whatever is found or known public to the world; disseminate knowledge; spread it forth; give it openly. I’ve researched with and met many scientists over the years. And one lesson I’ve learned from them is that when you find something good, pass it on to other scientists who may make it even better. So an inventor many times has the goal of spreading knowledge.
The trademark client, in like manner, wants to get the product out as quickly as possible. Often, they speak about how “time is of the essence.” The quicker they can get the protection, the quicker they can secure funding, and the quicker they can make money. If you’ve ever worked with a startup (or any client starting something new), they move quickly. They want results. And they generally want it now.
The lawyer on the other hand is focused on the best interest of his client – which at times may be somewhat in conflict with the client. The lawyer must take the client’s knowledge and openness and make sure it is protected and not exploited. So whereas the client’s goal may include disseminating information or getting to the next step of making money, the lawyer’s goal is to make sure the client’s assets are properly protected. And proper protection simply may take time.
In view of this, one take away is to be completely upfront with the client on how long the patent/trademark process will take. Most do not realize that a patent may take years, and a trademark many months, to be finalized.
Second, the short term goals of the clients may differ from the lawyer. The patent client generally is required by a corporation to talk to the lawyer to protect the invention. As such, the scientist inventor wants to get done with the procedure as quickly as possible, and back to researching and inventing. Generally, a scientist may not see any immediate gain through talking to an attorney (besides the prestige of having a name on a patent). In like manner, a trademark client may be under pressure to check off the next goal on the list – so time is of the essence.
The lawyer’s short term goal is to understand as thoroughly as possible what the client has invented or needs protection for. The client may want to get the process done as quickly as possible, but the lawyer may want to be as thorough as possible in talking with the client to ensure that everything necessary for the protection has been completed.
For the most part, these short term goals likely do not apply as much to a pro-bono clinic, simply because the client is voluntarily seeking the protection and wants to interact with you. As such, you may very well have the opposite problem – learning to get what you need from the clients without it taking the entire day.
Be aware that no one rule will apply to your clients. So be flexible. And enjoy the variances that walk through the door.
Here is a list of possible prompts to assist you in talking to clients.
- When starting a disclosure with your client, focus first on the similarities
- For the patent client: “As a patent practitioner, I have to employ a logical reasoning for all that I write, much as you have to follow a scientific method in all that you research,” or “I recognize that the goal of many inventors is to publicize their invention as quickly as possible – this is my goal along with ensuring proper protection”
- For the trademark client: “As a trademark practitioner, my goal is to help you protect your business and brands to ensure you can use your trademarks with acceptable legal risk or be aware of legal risks so we can make an informed decision as to how best to protect your trademarks.”
- Give a quick thirty second view on why this disclosure process is important
- For the patent client: “Patents add value to a company beyond simply protecting a patent. They may allow the company to defend itself against a competitor, or may allow the company to strategically align itself in the market.”
- For the trademark client: “A trademark will ensure that your company/product name retains its value after it is released. For example, we know that a bottle of Coke is truly a bottle of Coke because the name means something. Such is the power of a trademark.”
- State upfront your goal as a practitioner and provide solutions for any potential conflicts
- For example: “My goal as a practitioner is to make sure that your invention/product/business is adequately protected. I recognize that you probably want to get back to inventing/making money as quickly as possible. As such, if you can be as thorough as possible in your responses, that would aid us to be more effective with our time.”
Of course, such examples are meant to give you just an idea of what you could say. Some clients have worked with practitioners enough that they know the process and simply go with the flow. Others, however, may need to know that you are working first and foremost to protect their invention and/or name.