There are many changes in patent law brought about by the America Invents Act. Because of these changes, it is more important than ever not to delay filing a patent application for your invention. In many cases, your ability to obtain a patent on your invention will depend on the date that you file a patent application, and NOT on the date of your invention. In addition, depending on circumstances, certain actions you take before you file a patent application may defeat your ability to obtain a patent. It is wise to seek legal advice about what actions you can safely take before filing a patent applications. Actions of concern include, but are not limited to, disclosure of your invention to others, public use or disclosure of your invention, a sale or offer of sale of your invention, publishing information about your invention. If you have an invention you may want to patent, it is wise to seek legal advice sooner rather than later.
I think it is most helpful to provide an overview of patent law by going over some of the subjects that I ask about during an inventor interview and why I ask them. These are not all of the subjects I would cover. Also, the information below is not legal advice to anyone, but is intended just as general information about patent law and about the way I conduct an inventor interview. I assume no responsibility for any action you or others may take or fail to take based on the information below. No attorney-client relationship is formed by your reading or distributing of the information below.
1. Screen for Conflicts of Interest: The very first thing I do when you, as a potential client contact me, is to ask questions to determine if representing you would cause a conflict if interest. For example, I may already represent someone who has an invention that is too similar to yours. If so, I could not represent you. In fact, we do not have any attorney-client relationship until I have find out if I can represent you. Therefore, you should not volunteer any confidential information about your invention, until I can determine if there is a potential conflict of interest. I will start out by asking you very general questions about the invention, such as what area of technology it is in and then ask progressively more detailed questions to rule out a conflict of interest.
As an other example of a conflict of interest, you may have conceived of your invention while working for an employer and I may currently represent that employer. If there is an issue about whether you are required to assign your invention to your employer, then I could not represent you. Therefore, before we can establish an attorney-client relationship, I need to ask you some questions about who you are and about anyone else who might have an interest in your invention. I have to make sure that I do not already represent such a person.
Once we have determined that I do not have a conflict of interest then I we can get down to business.