by  Eugene J. Greskovich, Ph.D., P.E.

Most investigators in the scientific fields  have an in-depth technical knowledge in their field.  Many discoveries are made through their efforts and, depending on management strategy, it may be of interest to determine if a new discovery can be developed into a "Patent Idea."  If so, the Idea is  described and   sent to the Patent Attorney, resulting in a number of technical exchanges between the Attorney and the Idea Proposer.  The primary purpose is to determine whether the Idea is patentable or not.        

Most first-time and many seasoned potential inventors find turning a good Idea into a patent to be  complex and, at times, confusing.  Sure, the scientist knows he/she has made a discovery, sounds like a great idea, but is it patentable?  

The Attorney evaluates the Idea Proposal, does a patent search, completes an introspective evaluation, and normally responds to the Idea Proposer in one of three ways:     Based on my analysis, search, and  conclusions:  

1.) It appears to be patentable--provide me with more information as directed,  or 

2.)  It appears not to be patentable.  These are the reasons why.  Are we missing anything?  Provide rebuttal if warranted, or 

3.)  It is not clear whether this Idea is patentable or even infringes other patents.  I need more information, especially in light of the patents and literature that are relevant.  

The role of Patent Liaison is to assist both the potential inventor and patent attorney in answering all the above questions .  All Patent Attorneys clearly know the patent law and, therefore, what is or is not patentable.  The Patent Liaison described here is a technical function, primarily used to translate attorney actions for the potential inventor.  This Expert works with the potential inventor, primarily in answering questions posed in 2 and 3, above, and occasionally in responding to questions in 1.  In particular,the Patent Liaison should have the background and skills to assist the potential inventor to clearly and specifically provide the attorney what is asked for.  Conversely, the Patent Liaison can also assist the Patent Attorney in evaluating the technical responses to all the action items.                

In conclusion, it has been found that when the patent idea and Patent Attorney actions are clear, from both sides, no liaison is necessary, especially if action 1 results in a clear line of communication.  However, it has been found from considerable experience that Patent Liaison clearly saves time and money in asking for and providing responses to actions 2 and 3.  This liaison activity works best when the Expert has been involved with the "patent process" scores of times, with many patent successes and denials, and with considerable prior patent liaison experience.   

ABOUT Eugene J. Greskovich