18 December 2015Jurisdiction reportsPaul Sutton

US patents: A matter of trust

This article focuses on typical interactions and considerations that occur during the earliest phases of the attorney/client interactions.

The most important element required to be established in the relationship between inventor and patent attorney is the element of mutual trust. Without attorney/client trust, the potential for missteps on both parts and faulty counselling increases geometrically.

There are statutory patent laws and regulations which require action to be taken prior to prescribed and unforgiving deadlines. For example, failure to file a US patent application within a year after commercialisation of the invention will result in the forfeiture of all related valid patent rights. For this and other reasons, therefore, the attorney must be provided with all material information relating to an invention and its development.

A question that sometimes arises concerns the decision as to whether to keep elements of the invention as a trade secret, if possible, as opposed to pursuing patent protection. This is a more likely scenario where the invention relates to chemical and/or industrial processes that are not easily reverse engineered or analysed. The relaxation of the former ‘best mode’ requirements now enables inventors to consider the trade secret option.

In 2013, the US migrated from a ‘first to invent’ to a ‘first to file’ system in awarding patents to inventors. This has created a race to the US Patent and Trademark Office among inventors. It is essential that inventors provide their patent attorneys with a complete invention disclosure, not merely a concept outline. Once an invention is made, the statutory bar clock starts ticking, as does the need to get on file as soon as possible. All the more reason to promptly cement the trusting attorney/client relationship.

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