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By J.D. Houvener
Patent Attorney and Founder

Hello, everybody. Thank you for joining me. I’m J.D. Houvener, our managing partner here at Bold Patents Law Firm. We’re gonna be talking about the 10 tips on how to come and prepare for a meeting with your patent attorney. What I want to do is go through them one step at a time. I’m sure that you’re gonna be able to gain some knowledge and insight from what I’ve got to share here today. I’ve sat down with hundreds of inventors and business owners that are looking to get their patents protected, and I can help you in this episode with how to come prepared to get the most out of that meeting.

Like, for example, did you know that coming to a meeting with a history, you know the backlog of who invented what when way back then when you conceived it? That’s critical to being able to make a good decision on how to protect your invention today.

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So without further ado, let’s jump into it. Alright, so tip number one, do your own diligence first. Yep, you’ve got to show up prepared, and that means you taking the time to do some research upfront. Know what process you’re getting into. Don’t just schedule an hour out of your day, your hard-earned money, and your time and effort to block that time out without first doing a little bit of research. So that starts with looking into the patent process, but more importantly, looking into your invention.

You should do some initial research on Google. It’s a fantastic research tool to begin to sort of scratch the surface on how to appreciate whether your invention is really different. Know that the keystone for getting a patent is you’ve got to prove to the examiner that you and your invention are one-of-a-kind and the first of its kind in the world. Alright, so those kinds of research you should do on your own before you get into the meeting to allow you to be able to come in with a bit of knowledge about what to expect: the timelines, the process, what credentials you’re gonna be looking for. And more importantly, you’re gonna know that you’ve done your own homework to convince yourself that what you have, what you’re bringing forward is indeed novel and new.

Alright, step number two: you want to prepare the invention for discussion. It’s kind of a no-brainer, right? But you’ve got to write down in written words. If you’re nervous and worried about skipping over certain parts of your invention, then write it down. Put get a Word doc, type it up, or handwrite the points about your invention that you want to talk about with the patent attorney when you get into a room. In a face-to-face meeting, you know emotions kind of rise up, and you might forget about something. So, to make sure you don’t, write it down.

Of course, what’s better than words? Pictures or sketches and drawings. So please bring them in. And if you’ve got them in hand size and they’re reasonably portable, bring in your prototype. This is gonna be the best way to discuss your invention in the 30 minutes or an hour, however long you have with your patent attorney. They need to know what the invention’s about to go to make their own opinions about what there is eligible and certainly patentable. You need to get their arms around it and get a good understanding as far as what the industry and the applications are for your invention. So, come prepared. Bring a written description, sketches, drawings, or even photos of your invention. They all help for having that great discussion.

Alright, so tip number three is gonna be preparing the history. And I alluded to this at the beginning of the video. And yep, that sounds kind of boring. And no, I’m not talking about bringing up the history of the materials, you know, way back when. I’m talking about when you invented this. It wasn’t just you. Were there any other co-inventors? And how long ago did you first conceive of them? This is the kind of history we need to be talking about. Bringing in the employer-employee relationship that you may have at the time. Also, discussing ownership. So, if you were inventing this while you were on the job, is it actually going to belong to someone you worked for? And more important than some of these inventors have ownership questions is a disclosure, right? So, have you ever told anyone about your invention? It’s time to come clean. You’ve got to tell your patent attorney and prepare them to help them understand when you made the disclosure, in what was talked about.

On top of that, you’ve got to make sure you note if you used any non-disclosure agreements. And if that’s the case, make sure to bring those agreements with you. You’ve got a copy of it. So, putting a timeline together of what’s happened in the past on this invention. Now, maybe you were spinning your wheels about this years ago. Start with that. When did you first conceive of the invention? It’s gonna help the attorney in their thought process about what issues may come up that need to be addressed before you, for example, file an application.

Step number four: make sure that you consult with a patent attorney, not a patent agent. And a source of the key understanding that a patent attorney has gone to law school. The importance of having an attorney speak with you is you’re going to understand the full spectrum of helping you acquire rights and be able to enforce them way down the road. The attorney is going to have the knowledge, the legal knowledge of what it takes to enforce and litigate a patent in federal court or the patent trial appeal board. Having an invention with claims without really any foresight is something that patent agents are able to provide, and it’s a service and sometimes has great applications. But for most inventors in business, I want to make sure that their rights are going to be able to be valid and enforceable in a court of law is really where you want to start.

On top of that, some of the opinions, the legal opinions that you should be using to go to make the decision on whether you’re gonna file or not can only come from a patent attorney. I mean, you’re gonna look to make a big investment on something you’ve worked hard on. Well, like your invention, you want to make sure you’re working with a patent attorney.

Step 5: know who you’re gonna be talking with. You know, we sure it’s a law firm, and that’s comprised of lots of different attorneys and staff and paralegals. But your consultation is with one individual. Right? He or she, whoever that is. You need to do research on them, pull them up on Facebook, LinkedIn, Google, and don’t forget to take a look at their USPTO government registration. Confirm that they’re actually patent attorneys registered on the Patent Office website. So, don’t miss that. I mean, this is some of the stuff you’ve got to do because you’re putting in your own time and effort and talking with them. And in many cases, you’re putting up your own money to pay for the consultation fee. This is kind of part of that diligence, but I wanted to call it out specifically, you know who it is you’re talking with. It will be important to make the conversation flow. And so on top of the technical stuff that you’re gonna be bringing, right? In the steps 3 & 4 we learned, you kind of also make sure you consider their background and see if it’s a good match. It’s often helpful to have the attorney’s industrial or scientific background aligned with where your invention is going. You may also be curious to find out that some of the attorney’s patent attorneys have business backgrounds as well. Then we’ll give you some insight as to how you can go to make money and you can take a real return on investment that you’re looking for.

Step 6: this is about understanding where you want to go and where you want to end up at the very beginning stages. You know, you’re thinking about getting the protection right, getting your invention exclusively owned by you and your entity. When you do this, you want to make sure that you’re thinking about what the end results gonna be. Is it to be a business, right? Are you gonna start and grow the next Facebook, the next Amazon? And is this technology going to be the core? And that’s gonna mean you’re gonna have to hire employees, form a business entity, perhaps take on funding. You know, all these big questions that add legal liability and of course opportunity in the marketplace. So having those goals of whether you’re gonna grow a business or if you’re going to license and sell your invention, right? Those are two very different paths. And it’s helpful to let your patent attorney know that so they can either refer you to good professionals to help you with the banking in the business formation and the attorney legal work that’ll need to happen when you form your employment agreements and contracts. But if it’s something much more simple and you’re looking to simply license and monetize and sell your patent rights to another company to then take it off in the market, that’s another much more simple process. But we need to know that so we don’t make those referrals, whether we can focus our efforts just on the monetization side.

Okay, step 7: send the materials to your patent attorney in advance. Again, this is a way to build a capitalized and leverage that half-hour. You can send over as many photos, sketches, written descriptions, drafts that you’ve put together as the inventor, search results. These are all very powerful things you can send in an email confidentially to your patent attorney before you sit down and talk with them. This is gonna be a way for them to sort of feel obligated in a way, even if they haven’t volunteered, you’re gonna say, “Hey, look, if you get a chance, just pull these up before our consult.” And it’s gonna make that meeting even more rich. You’re gonna be able to ask a very substantive question. And they’re gonna have a little bit of background about what your invention is and helping you make the most out of your thirty minutes with them.

Step 8: bring everything to the table. You’ve got to do it. Or you can’t trust your patent attorney with your entire invention. All attorneys, whether they’re licensed in any state in the country, they all swear an oath to confidentiality. There’s one of these major high notes, the privilege that we have as attorneys is the ability for you, the client, to go to confide in us. That is a core essence of why we went to law school, why we went through this arduous process of passing a State Bar. Patent attorney has even done that up one more. We’ve taken a patent bar, and in that bar passage and certification process, we also obligate ourselves to keeping all information for inventors confidential as well. So, you’ve got sort of a double layer of protection there. Let me give us half of the invention or half of what’s on your mind, you’re only going to get half of a legal opinion, right? So, give it your all, and then that way you can expect a full complete answer to help you make a good decision on how to move forward.

Next, when you come to the meeting, tip number nine: be present. Be fully present. Don’t have your phone sitting on the table with all the alerts flipping back and forth. Turn it off. Don’t be thinking about what’s coming up in your lunchtime meeting that after the console. Try to leave everything, you know that you had over the weekend, all the interesting aspects with friends and family. Really be fully present. Try to just block everything else out so you can truly focus on the meeting. And this goes really for any professional meeting but specifically one for an invention discussion that’s gonna be highly technical and it’s gonna talk about an area of law that you’re likely unfamiliar with. You’ve got to be completely laser-focused and be able to bring those questions that you’ve prepared in advance so we can take good notes and understand how it’s gonna move forward. So again, don’t be driving, don’t be at a loud noisy area. If it’s a video conference, be in a quiet room with a setting, and you’re sitting down comfortable, prepared, and engaged with your attorney.

Tip number ten: you are the inventor. Sure, you’ve got the options of hiring a number of different patent firms, but don’t forget that you too are being interviewed to see if you’re a good fit for the firm. Your invention may be potentially conflicting with other clients at the firm, but moreover, the law firm wants to make sure that you are committed and that this is a project that they see being a long-term success for both parties. It really is a joint effort when you talk about working with an inventor and a patent attorney. They’ve got to be able to mesh, and they got to make sure that both people are on a technical but also on a personal level are able to be on the same page and make sure that we’re aligned. So when you come, bring your A-game. Act like you’re being interviewed because you do want this patent attorney to be on your team.

Alright, well, there they are. They’re the ten tips, everybody. So if you did like that, please give us a thumbs up on social media. We try every day to try to make these sort of videos the kinds of videos that you watch. And so, we need your input. I’m curious to see what your thoughts are. Please give me some comments and feedback. What are those some topics on here that are relevant to you, the listener, the inventor, the entrepreneur? It’s been my pleasure to be here with you – don’t go through the ten tips on how to prepare to be with your patent attorney. I’m your host J.D. Houvener of the Bold Today Show. Go big, go bold.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/