1. Initial "Inventor" Interview (Practical Legal And Business Considerations) Greg Allen 3M Innovative Properties Company 1 August 26, 2010 AIPLA’s Practical Patent Prosecution Training for New Lawyers

2. 2 Business Purpose “Invention” Claimed Invention Prior Art

3. World Leader In Precision Lenses For Industrial Applications Business 3

4. Investigator Interview Brief description of the patenting process – –Including timeline Costs/Fees Potential Bar Dates – –Disclosure – –Sale/Offer For Sale Proposed Filing Date 4

5. Investigator Interview Any IP Agreements involved? For example Confidential Disclosure Agreement Joint Development Agreement License Agreements Government R&D Contracts 5

6. 6 Business Purpose “Invention” Claimed Invention Prior Art

7. Investigator Interview What is the “invention”? Does the “invention” address a problem? Advantages of the “invention” 7

8. Investigator Interview Art – –How well does the client know the art?   Has any searching been done?   What type and amount of searching done   Patents/Publications   Products – –Client’s – –Others   Disclosures by client to a third party   Third party information received – –With confidentiality agreement – –Without confidentiality agreement   Pending applications 8

9. Investigator Interview   How is the “invention” different from the art? 9

10. Investigator Interview What is the client’s business purpose for pursuing patent protection? – –Wants/Needs   Strategic Plan Competitors – –Who are they? – –What do they sell? – –How do they sell it? 10

11. Glass 11 Glass-Ceramic Specific Compositions Required Components Optional Components Amounts Properties Transmittance Infrared (IR) Visible Ultraviolet (UV) Hardness T s T g Lenses Equipment w/ Lenses Specific Compositions Properties Other Articles Articles

12. 12 Business Purpose “Invention” Claimed Invention Prior Art

13. Investigator Interview Draft or outline claims – –Draft or outline independent claims   Categories – –Draft or outline dependent claims   Reasons for dependent claims   Additional patentable features/limitations   Claim differentiation   Product related features and limitations   Other 13

14. 14 Business Purpose “Invention” Claimed Invention Prior Art

15. 15 §101 ( Subject Matter ) §103 §102 §§ 111, 115, 116 (Inventor(s)) §112, 2 nd ¶ §112, 1 st ¶ §101 ( Utility ) § 113 ( Drawing ) Claim

16. What work has been done? – –Examples; will working examples be necessary? – –Are any third parties involved? – –Are any trade secrets involved?   Client’s trade secrets   Third party trade secrets 16

17. Investigator Interview Who’s been involved? What needs to be done?/Who will do it?/When does it need to be done? –Is additional searching needed? –Are additional working examples needed? –Application drafting  Claims  Definitions  Background  Drawing –Figure(s) –Description of the Figure(s)  Detailed Description  Examples  Summary  Abstract  Other? 17

18. 18 Business Purpose “Invention” Claimed Invention Prior Art

19. 19 §101 ( Subject Matter ) §103 §102 §§ 111, 115, 116 (Inventor(s)) §112, 2 nd ¶ §112, 1 st ¶ §101 ( Utility ) § 113 ( Drawing ) Claim

20. Questions 20