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October 07, 2008

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rachel crisman

One time I looked for 3 hours for a sticky note thatmy new bosses number was on and a friend finally noticed that the note was on my butt.I was wearing pants,ofcourse!

kazanjig

I'm a patent attorney and, whenever I sit down with an inventor to conduct an invention disclosure meeting, I always have my trusty blue pen and yellow pad with me. Throughout the two to three hour meeting we go over the general state of the art, the problem the invention is try to solve, example embodiments, and finally draft some claims right then and there while everything is fresh.

Well, recently, I conducted a disclosure meeting for Client X, drafted an application, and sent it for review to the principal at my firm responsible for Client X. Time marched on and I never received any comments.

Then, out of the blue, Client X calls the principal to be sure that the application was going to be filed that day, because there had been a public disclosure of the invention exactly one year prior. (Just as a note about patent law, an inventor is statutorily barred from being granted a patent for an invention disclosed more than one year prior to the application date.)

Needless to say, the principal was quite displeased that we had not yet filed the application, despite the fact that the ball had been in his court for quite a while. Of course, yes, I should have followed up, but the inventor never mentioned the public disclosure during the disclosure meeting I conducted with him, despite my direct question. If he had mentioned it, I would have docketed a bar date and the application would have been filed.

So, the principal calls me and starts tearing into me, threatening that my job was on the line if this application wasn't a quality work before it was filed that day. I immediately went into defensive mode and told the principal that I had asked the inventor about public disclosures and that he had replied that there had been none. However, the principal didn't believe me and, after I said I could show him my disclosure notes, demanded I show him on paper.

Well, that's when the fun started. I began rustling through all my notes, but couldn't find my notes for that application. Then I remembered that I had conducted the disclosure meeting over the phone from home. I immediately called my wife and asked her to look for the notes. Thankfully she found them and was able to scan them and email a PDF to me so I could defend myself to the principal. From that day on, I started scanning my disclosure notes to PDFs to store in our electronic dodcument management system. But, sometimes it's hard to decipher the text and sketches after the scanning process. Being able to go directly from paper to computer would be a great added benefit.

Oh, and the application was filed on time. And I kept my job. Phew.

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