Initial "Inventor" Interview (Practical Legal And Business Considerations)

1. Initial "Inventor" Interview(Practical Legal And Business Considerations) Greg Allen 3M Innovative Properties Company AIPLA’s Practical Patent Prosecution Training for New Lawyers August 26, 2010

2. “Invention” Prior Art ClaimedInvention Business Purpose

3. World Leader In Precision Lenses For Industrial Applications Business

4. Investigator Interview • Brief description of the patenting process • Including timeline • Costs/Fees • Potential Bar Dates • Disclosure • Sale/Offer For Sale • Proposed Filing Date

5. Investigator Interview • Any IP Agreements involved? • For example • Confidential Disclosure Agreement • Joint Development Agreement • License Agreements • Government R&D Contracts

6. “Invention” Prior Art ClaimedInvention Business Purpose

7. Investigator Interview • What is the “invention”? • Does the “invention” address a problem? • Advantages of the “invention”

8. Investigator Interview • Art • How well does the client know the art? • Has any searching been done? • What type and amount of searching done • Patents/Publications • Products • Client’s • Others • Disclosures by client to a third party • Third party information received • With confidentiality agreement • Without confidentiality agreement • Pending applications

9. Investigator Interview • How is the “invention” different from the art?

10. Investigator Interview • What is the client’s business purpose for pursuing patent protection? • Wants/Needs • Strategic Plan • Competitors • Who are they? • What do they sell? • How do they sell it?

11. Specific Compositions • Required Components • Optional Components • Amounts Lenses Equipment w/ Lenses • Properties • Transmittance • Infrared (IR) • Visible • Ultraviolet (UV) • Hardness • Ts • Tg Other Articles Glass Glass-Ceramic Specific Compositions Properties Articles

12. “Invention” Prior Art ClaimedInvention Business Purpose

13. Investigator Interview • Draft or outline claims • Draft or outline independent claims • Categories • Draft or outline dependent claims • Reasons for dependent claims • Additional patentable features/limitations • Claim differentiation • Product related features and limitations • Other

14. “Invention” Prior Art ClaimedInvention Business Purpose

15. §101 (Subject Matter) §103 §101 (Utility) §102 § 113 (Drawing) Claim §§ 111, 115, 116 (Inventor(s)) §112, 1st ¶ §112, 2nd ¶

16. Investigator Interview • What work has been done? • Examples; will working examples be necessary? • Are any third parties involved? • Are any trade secrets involved? • Client’s trade secrets • Third party trade secrets

17. Investigator Interview • Who’s been involved? • What needs to be done?/Who will do it?/When does it need to be done? • Is additional searching needed? • Are additional working examples needed? • Application drafting • Claims • Definitions • Background • Drawing • Figure(s) • Description of the Figure(s) • Detailed Description • Examples • Summary • Abstract • Other?

18. “Invention” Prior Art ClaimedInvention Business Purpose

19. §101 (Subject Matter) §103 §101 (Utility) §102 § 113 (Drawing) Claim §§ 111, 115, 116 (Inventor(s)) §112, 1st ¶ §112, 2nd ¶

20. Questions