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By J.D. Houvener
Patent Attorney and Founder

Hello everybody thank you for joining me I’m JD Hooven our managing partner here at bold patents law firm we’re gonna be talking about the 10 tips of how to come and prepare for a meeting with your patent attorney and what I want to do is go through them one step at a time I’m sure that you’re gonna bill 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 the backlog of the 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 [Music]

[Music] 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 now 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 a little prove to the examiner that you and your invention is one-of-a-kind and the first of its kind in the world alright so those kind 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 a knowledge about what to expect the timelines the process what credentials you’re gonna be looking for and more important you’re gonna know that yeah 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 was kind of a no-brainer right but you’ve got to go to write down in written words if you’re nervous and worried about skipping over certain parts of your invention then write it down right 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 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 inventions 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 all right so tip number three is gonna be preparing the history and I alluded this at the beginning of the video and yep that sounds kind of boring and no I’m not talking about you know bringing up the history of the materials you know way back when I’m talking about when you invented this right it wasn’t just you well were there any other Co inventors and how long ago did you first can see 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 are on the job isn’t 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 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 know what’s happened in the past on this invention now maybe you were spinning your wheels about this years ago start with that right when did you first conceived of the invention it’s gonna help the attorney when 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 in a patent attorney has gone to law school the importance of having a 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 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 biz I want to make sure that their rights are going to be able to be valid and enforceable in 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 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 needed to research on them pull them up on Facebook LinkedIn Google and don’t forget to take a look at their USPTO govt 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 in 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 attorneys industrial or scientific background aligned with where your invention is going you may also be curious to find out that some of the attorneys 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 exclusive 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 going to mean you’re gonna have to hire employees form a business entity perhaps take on funding you know all these big questions that ad 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 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 and before our consult and it’s gonna make that meeting even more rich you’re gonna be able to ask a very substantive questions and they’re gonna have a little bit of background but what your invention is and helping you make the most out of your thirty minutes with them step eight 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 that 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 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 into the 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 of Labuan a our selves 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 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 able to mesh and they got to make sure that both people sort of on a technical but also in 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 all right 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 at everyday 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 one of 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 JP governor of the bold Today Show go big go bowl

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