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Greetings, fellow patent enthusiasts! We’re back this week with valuable insight from Neil Kardos on dealing with a common challenge faced by patent practitioners: receiving an overwhelming amount of invention disclosure materials prior to a call with inventors. While most patent professionals might be familiar with handling situations where there is too little material, Neil sheds light on what to do when faced with an abundance of information that can potentially consume an entire day of review.

Navigating the Flood of Invention Disclosure Materials: When confronted with a plethora of materials, Neil advises that the first step is to skim through the documents to get an overall sense of the content. The main objective at this stage is to identify technical information and elements that appear new and innovative. Making a note of the slides or pages that contain interesting technical content is crucial to preparing efficiently for the inventor call.

Framing the Conversation: Once Neil has an idea about the potential new features, he supplements his regular outline of questions for inventor interviews with inquiries specifically related to those features. This tailored approach allows him to focus the conversation on the most relevant and critical aspects of the invention. During the inventor call, he also sets the tone by addressing the abundance of materials and enlists the inventors’ help in identifying content that is pertinent to the patent application, particularly focusing on the novel technical aspects.

Efficiently Capturing the Invention: By framing the conversation around the key features and focusing on what’s new and innovative, Neil ensures that the conversation is purposeful and streamlined. This approach enables him to efficiently capture and flesh out the details of the invention without being bogged down by unrelated or extraneous material.

Confirmation and Adaptation: During the call, if the inventor verifies Neil’s assumptions regarding the new features, he proceeds with his supplemented outline of questions to delve deeper into the invention’s specifics. Additionally, he makes sure to address the slides or pages that he earlier identified as important. However, if his initial assumptions were incorrect, Neil seamlessly transitions back to his original outline of questions to gain a comprehensive understanding of the invention.

In conclusion, handling an overwhelming amount of invention disclosure materials can be daunting, but using Neil’s practical approach provides valuable guidance for patent practitioners facing this challenge. By quickly skimming through the materials, focusing on the new and interesting technical aspects, and seeking the inventor’s input, one can efficiently navigate through the flood of information and conduct a productive and insightful inventor call. This not only saves valuable time and effort but also ensures that the patent application process is effective and aligned with the invention’s core features.

Thank you for reading! We hope these tips help you improve your patent drafting skills. Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!