Becoming Efficient & Effective Intellectual Property (IP) Work

The inventor’s role in IP work is not taught in school.  An expert IP mentor can help inventors quickly learn to be efficient and effective.  The Solution Infusion can help new and even relatively experienced inventors in this area.

Anyone who solves a problem in a way others have not and gets IP in place is an inventor, but most people are never taught their role in IP via their education. Net, most learn their role on the job. If there is training, it’s often focused on what patents are and legal aspects. Very little is focused on “what is the inventor’s role in IP and how can they work most effectively with a Patent Attorney?” Even then, classroom training alone is not sufficient to fully embed the skills.

As a result, the first time someone works with an attorney on IP, they are very inefficient and make a lot of mistakes (which can be costly!) This is also very inefficient for the attorney because they have to spend time telling the inventor what they need and explaining why certain things can and can’t be done. Over time, if an inventor works on multiple cases, they become efficient and highly effective in working with attorneys to create strong IP.

An effective way to quickly become efficient and effective is to have an expert in IP (from an inventor’s point of view) mentor others. This can help new and even relatively experienced inventors become more efficient and effective. There are 5 steps to obtaining IP. An expert IP mentor helps inventors understand the subtleties to complete each step with excellence. The inventor does the work. The expert IP mentor provides input to content and tips to quickly learn the required skills. The direct and detailed hands-on mentoring goes beyond what any classroom training can provide. A list of the steps and what the expert provides follows.

Defining a Patent Strategy: The right strategy is key. Too narrow and ownership opportunities are lost. Too broad and IP may not be granted and/or resources may be wasted. The expert mentors the inventor on how to think and file as broad as possible (yet not too broad), as well as to creatively carve out space versus challenging prior art.  This includes what types of IP to seek (utility patents, design patents, trade secrets, trademarks, etc.).

Documenting Ideas: The inventor and attorney both need to be clear on the problem solved, the solution, any important variations (including applications in fields other than the base), and where to search for prior art (and if any is already known – a simple list of it). When both people are clear, the first draft is typically very accurate and nearly complete. Up front written documentation saves time in the long run. The expert mentors the inventor on how to efficiently and clearly document the information, to expand (or limit) the variations and other applications, and to define and refine target search areas.

Prior Art Search, then Assessing Prior Art vs. Patent Strategy: The expert mentors the inventor on how to:

  • Understand impacts of art search results on the planned IP while finding creative ways to carve out business-relevant space.
  • Quickly read prior art and understand its relevance.

Drafting & Filing the IP:  As an attorney begins drafting IP, the expert mentors the inventor on the long-term business ramifications of the attorney’s legal recommendations. The expert also shows how to proactively play “devil’s advocate” to find and fill potential “holes” in the IP. An unfilled hole may lead to IP not being granted or being invalidated in the future.

Defending IP: Once filed, Patent & Trademark offices around the world assess filings and frequently deny granting the IP. After grant, litigation may risk invalidating or limiting the scope of the IP. Experts mentors the inventor on how to formulate strategies to defend IP and yield the most business-relevant claims possible.

The Solution Infusion can help with any or all of these steps (and also offers IP Training). Mark Kline has over 30 years’ experience inventing, creating strong IP, and defending it. Reach out to discuss how he can help you.

Also, review these related articles:  Getting Real Value from IP  Maximizing Value from IP


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Mark Kline

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