United States and international patent law requires us to seek certain information from you prior to undertaking the filing of any patent application(s) on your behalf. Please carefully review the following requests for information. Please compile your written answers to these questions and forward them to the attention of your Myers & Kaplan Intellectual Property Law, LLC patent attorney either prior to your initial consultation or at another mutually agreed-upon time. You should review and supplement your answers to these questions on an ongoing basis throughout the entire patent process. You should keep your patent attorney apprised, in writing, of any changes in your answers to these questions, and of any developments and new information which may bear upon the accuracy of the information contained therein.
We recognize and appreciate that answering these questions will take some time and thought. It has been our experience, however, that clients who do take the time to complete this Questionnaire have better outcomes at significantly lower costs.
Please answer thoroughly, accurately, and in writing the following questions:
1. Please provide a detailed description of the problem you initially set out to solve, the need you recognized, and/or the failings of other products which led you to the development of your invention.
2. Please provide a brief summary of your invention.
3. Please provide a detailed drawing or sketch of your invention.
4. Please state whether a prototype of your invention has been built. If so, are photographs or videotape recordings of this prototype available for review? If copies of such materials are available to you, please provide them to us with your answers.
5. Please provide a detailed description of the preferred embodiment of your invention, including materials, methods of fabrication and assembly, and the function and manner of operation of the invention.
6. Please provide a detailed description of each alternate embodiment of your invention, including materials, methods of fabrication and assembly, and the function and manner of operation of the alternate form of the invention.
7. Please provide a detailed description of each anticipated future development, enhancement, and improvement which may be incorporated into your invention.
8. Please provide the date of conception of your invention. Please state whether you have documentary or other evidence of this date and, if so, the form of this evidence.
9. Please provide the date of reduction to practice of your invention. For purposes of this question, this date is (a.) the date on which a working prototype was built; or, (b.) the date on which a written description of the invention was prepared in sufficient detail that a working prototype could be built by a person of ordinary skill in the art.
10. Please provide the names, addresses, and phone numbers of any persons who were witnesses to either the conception or the reduction to practice of your invention on the date(s) identified in the preceding two questions.
11. Please provide the names, addresses, and phone numbers of any persons who are co-inventors and/or co-developers of this invention, or who have been contributors, consultants, confidants, mentors, engineers, designers, or advisors to you and/or your co-inventors with respect to this invention. Please identify these persons without regard to either the nature, magnitude, or significance of their contribution.
12. With respect to each of the persons identified in the preceding question, please identify, specifically and in detail, the exact contribution that each person made to the invention or to the development process. Please identify the contributions of these persons without regard to either the nature, magnitude, or significance of the contribution.
13. Did any portion, component, or element of this invention not originate with the persons identified in the preceding two questions? Please identify in detail each such portion, component, and element without regard to its size, nature, magnitude, or significance with regard to the overall invention. If you have an opinion as to the identity of the person who originated each such portion, component, or element, please provide sufficient identifying information to enable us to evaluate and investigate the contribution and/or claims of that person.
14. Please give the specific dates of all printed publications, sales, offers for sale, and public display and/or use of the subject matter of your invention(s), whether by you or by any other individual or entity, whether in this or in any foreign country. If copies of such materials are available to you, please provide them to us with your answers.
15. Without regard to the existence of duties of confidentiality, please state the date of first disclosure to each and every other person who has knowledge of this invention. Please identify each such person with name, address, and phone numbers.
16. Please state the date of first disclosure to each and every other person who has knowledge of this invention and who is not subject to a duty of confidentiality with respect to the invention. Please identify each such person with name, address, and phone numbers.
17. Please state whether you have conducted public experimental uses of this invention, or if you have authorized others to do so. If so, please provide detailed information regarding the scope of the use, the relevant dates, the persons involved, the audience viewing the use, your method and manner of control of the use, any and all reports generated documenting the use, remedial actions you took following the use, design changes which were incorporated by virtue of the use, and any other information regarding the use of which you are in possession.
18. Please state whether you intend to pursue one or more foreign patent applications for your invention.
19. Please state whether you are aware of any patent applications concerning the subject matter of your invention(s) which have been filed and/or published in this or in any foreign country, whether by you or by any other individual or entity. If copies of such patent applications are available to you, please provide them to us with your answers.
20. Please state whether you are aware of any patents or inventors certificates concerning the subject matter of your invention(s) which have been issued in this or in any foreign country, whether by you or by any other individual or entity. If copies of such patents or inventors certificates are available to you, please provide them to us with your answers.
21. Please state whether you conceived, designed, developed, and/or built your invention while at work.
22. Please state whether your employer contributed in any manner at all to the development of this invention.
23. Please state whether materials contained in your invention came from your place of work.
24. Please state whether you have signed any documents, agreements, or statements with your employer which restrict in any manner your use or ownership of inventions developed while in its employ, or which restrict in any manner your ability to disclose materials which are claimed to be trade secrets of your employer. If copies of such documents are available to you, please provide them to us with your answers.
25. Please state whether governmental funds were used to develop this invention. If so, please identify the governing agency, relevant project identification information, the sponsoring organization or employer, and any other relevant information. Please state whether you believe the government to have an interest in any patent which may result from this invention. If copies of such documents are available to you, please provide them to us with your answers.
26. Please state whether private or other non-governmental funds were used to develop this invention. If so, please identify any relevant governing body, relevant project identification information, the sponsoring organization or employer, and any other relevant information. Please state whether you believe the private or non-governmental body to have an interest in any patent which may result from this invention. If copies of such documents are available to you, please provide them to us with your answers.
27. Please state whether you are under any duty, by written contract or otherwise, to assign, license, convey, or transfer any patent, or any right you might possess in any patent, covering this invention to any other person, governmental agency, or business concern. Please identify all such duties and relevant assignees, licensees, conveyees, or transferees, giving name, address, and phone number for each. If copies of written documents evidencing such duties are available to you, please provide them to us with your answers for review.
28. Please state whether any part of this invention was developed in any country other than the United States. If so, please provide relevant identifying information.
29. Please provide a full and complete list of each and every technical, marketing, and/or purchasing reference which is, or may be, relevant to patentability of your invention. This list should include other patents, catalogs, studies, surveys, research papers, governmental and/or private publications of any kind, and personal observations and/or anecdotal accounts of other similar or related products, without limitation. Please provide copies of such documents or, in the alternative, information of sufficient detail to enable us to locate, review, and obtain a copy of the reference.
30. Are you aware of any other information, without limitation, which was not specifically sought in this Questionnaire, but which would, or might, bear upon patentability of this invention? If so, please detail the information and provide copies of any documents containing this information. If copies are not available to you, please provide information of sufficient detail to enable us to locate, review, and obtain a copy of the document or information.
31. Do you have any questions, observations, or concerns regarding your rights in this invention, the documentation process, patent laws or regulations, the patent process, or any other related matter which you wish your patent attorney to consider or answer? If so, please list such matters for us and we will promptly consider them and respond to you.
Thank you for your time in answering these questions! We look forward to reviewing your answers with you.