If you have already made an investment and you suspect that there is a problem please do not hesitate to call. There's no obligation and we are more than happy to assist you in any way we can. Initial consultations are gratis and often times we can be of help without any cost to you. We are very experienced in product design projects from inception to production to marketing and we can very quickly identify deficiencies in any stage of development.

Investing In New Technologies

In assessing the value of intellectual property that hinges upon the likelihood of a patent being granted one has to carefully evaluate the entire scope of the inventor’s due diligence from idea inception to published application.

The smart investor has to ask the right questions if he or she expects to minimize exposure. The inventor/product developer should be asked to create a written history of product/process development process and all disclosures made to others verbally of in writing during that period as well as any since, whether secured or not. This should include any advisors, witnesses, contributors, vendors, teachers, relatives, etc. The main objective here is to determine true ownership and patentability by statute. If it is determined that the inventor made disclosures to any third parties prior to the filing date you have to weigh the potential risks or consequences. Most investments in new technologies go smoothly but it always makes sense to know who and what you are investing in.

A good source of information regarding the status of a pending application is the patent prosecution history file on the subject patent. This is available from the PTO. This file will reveal communications between the examiner and the inventor(s) as well as third party objections and comments.

Of course you are always welcome to contact the patent attorney or agent of record and request an opinion on patentability but many attorneys and agents shy away from making such judgment calls unless the filing has matured, overcome all challenges, and by all accounts looks like it is sure to issue.

Conversely, if the filing is relatively recent and has not seen and survived some examination challenges any opinion professional or otherwise is purely academic.

There is however, with the right budget, a way to obtain a patentability opinion from any qualified patent attorney or agent very early in the patenting process but it can be very expensive. To adequately construct patentability opinion one has to perform a comprehensive prior art search and based on those findings as well as other tricks of the trade render an opinion. This service can cost tens of thousands of dollars due to the amount of due diligence and risk involved.

One has to become an investigator with an eye for details when constructing a comprehensive overview of an inventor and his adherence to following proper procedures in maintaining confidentiality requirements and preserving patentability. There are several ways of looking for potential confidentiality breeches like internet searches, Lexis Nexis, PTO and EPO, etc. Any public disclosures prior to the date of patent filing is obviously of interest but equally important are the less obvious leaks like open discussions with parties without the benefit of securing a Non-Disclosure Agreement “NDA” .

The main concern of course is the possibility of someone in the inventor’s past exploiting useful information obtained in secure or non-secure disclosures and becoming an undiscovered competitor.