{"id":918,"date":"2022-01-26T19:36:02","date_gmt":"2022-01-26T19:36:02","guid":{"rendered":"https:\/\/inventedly.com\/?page_id=918"},"modified":"2022-01-26T23:07:29","modified_gmt":"2022-01-26T23:07:29","slug":"disclosure-questions","status":"publish","type":"page","link":"https:\/\/inventedly.com\/index.php\/resources\/pre-filing-strategies\/disclosure-questions\/","title":{"rendered":"Disclosure Questions"},"content":{"rendered":"\n
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Disclosure Questions<\/h2>\n\n\n\n
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Note that the following information is written from the perspective of a practitioner working with a client.<\/p>\n\n\n\n

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.<\/p>\n\n\n\n

When Will I Receive The Completed Product?<\/h3>\n\n\n\n

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. <\/p>\n\n\n\n

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.<\/p>\n\n\n\n

Is My IP Worth Millions?<\/h3>\n\n\n\n

Every client thinks their invention\/name is worth millions.  In fact, who doesn\u2019t think their ideas are worth a substantial amount?  I\u2019ve 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\u2019d recommend that you be forward and upfront with the client.<\/p>\n\n\n\n

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.<\/p>\n\n\n\n

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.<\/p>\n\n\n\n

As an example, who would have envisioned ten years ago that a patent portfolio would be sold for $4.5 billion?[1]<\/sup><\/a>See, e.g., Philip Elmer-DeWitt, \u201cIs Google buying Motorola for its 24,000 patents?,\u201d CNNMoney (August 15, 2011), available at … Continue reading<\/span><\/span><\/span>