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[rts]

Why do you assume anything?  The guy is right there, ready to answer questions.  As far as I can tell from the OP, Mr. Inventor is fluent in English and is mentally competent and therefore probably has some recollection of further details of some or all of the relevant events as far back as 2000.

He's not going to recollect what these 5-7 companies did with the info he gave them. He simply won't know.

...you might have a gut feel that the demo is 30% likely to be considered unavoidable prior art.  You tell the client that, and explain that information of the demo will have to be disclosed to the PTO and that you'll try to spin the event based on the facts of Eolas.

Why stop there? Why not also tell him that if one of these companies filed an app for his invention (or further improvements thereon), he might have a costly lawsuit/interference down the road? I much prefer to nip this kind of nonsense in the bud and let someone else deal with him if he insists on patenting his past disclosures. Give him all the possible outcomes. It's the right thing to do, as opposed to, say, inventing a fake conflict (you were joking, right?).

Thanks everyone for your replies.
From what I have been able to eek out of the inventor so far, the companies all said they weren't interested and had their own R&D departments, so they didn't want to get into talks with independents. As far as inventor knows, none of the companies he contacted has come out with anything similar since their talks.
And he did give them his write-up, conceptual photos, and showed them the prototype.
Sigh.

Have you considered offering to do a search? All this past craziness might be moot of you find killer art.

[JimIvey]

He's not going to recollect what these 5-7 companies did with the info he gave them. He simply won't know.

Why stop there?  He's also not going to recollect research and development efforts all over the world, papers handed out at conferences and trade shows he didn't attend, or all unpublished patent applications filed in the US.  So, if he has no recollection of the details of all happenings in the world since 2000, we have no choice but to assume there's killer prior art somewhere, right? 

In effect, we should all presume that all innovation has killer prior art out there somewhere and should probably never file a patent application on anything.  Hey, if you're not an examiner, perhaps you should think about applying.  Actually, that's not fair to patent examiners -- some do a really good job.

As for searching, it can be a cost-effective way to reduce uncertainty in some circumstances.  However, simply discussing the risks facing Mr. Inventor might resolve the issue without having to spend money on a search.

Assuming prior art exists where it hasn't been shown to exist is clearly improper for practitioners and examiners.

Regards.

[rts]

So, if he has no recollection of the details of all happenings in the world since 2000, we have no choice but to assume there's killer prior art somewhere, right? 

This is a garage inventor who's had his idea shot down by 5 companies over the past decade. If there's no killer art by now, the idea is worthless. I.e., if the disclosed version of the idea was any good, someone would be selling it by now (and thus, prior art would exist).

Assuming prior art exists where it hasn't been shown to exist is clearly improper for practitioners and examiners.

Generally, yes. But applying common sense to a particular situation can save everyone time and money. Someone who discloses over a decade and does not even care to have and NDA in place is someone who needs help in making basic business decisions on patent filings.

I would tell him not to waste his money on the disclosed versions of this thing. As for it not being our "place", give me a break. This guy needs help.

[MYK]

And he did give them his write-up, conceptual photos, and showed them the prototype.

Even if there were NDAs, doesn't this trigger an on-sale bar?

[JimIvey]

But applying common sense ....

Ah, of course!  Common sense!  Ignorance that sounds good enough to believe.  Why didn't I think of that?!

While we're labeling our specious arguments, why not add "just think about it"?  That's another common thing people use to decorate their ignorance.

I would tell him not to waste his money on the disclosed versions of this thing. As for it not being our "place", give me a break. This guy needs help.

Yeah, he probably does.  Making assumptions and presenting them as facts and substituting your business judgment for your clients' isn't help.

At this point, I think both of our positions on this are clear.  I won't be commenting further on this particular issue.

Regards.

[JimIvey]

And he did give them his write-up, conceptual photos, and showed them the prototype.

Even if there were NDAs, doesn't this trigger an on-sale bar?

Not without actually offering to sell them the prototype or asking for sales pre-orders.

I'm not sure you're suggesting this, but an offer to license is not an offer to sell.  Of course, if the company quoted a price to manufacture the thing for him, that would be an offer to sell by the company.

Regards.

[rts]

Yeah, he probably does.  Making assumptions and presenting them as facts and substituting your business judgment for your clients' isn't help.

At this point, I think both of our positions on this are clear.  I won't be commenting further on this particular issue.
Regards.

Who said anything about presenting assumptions as fact? I'm talking about how I'd approach this inventor. I'd tell him the ugly reality about cases like this. I wouldn't lie to the guy. You suggest inventing a conflict. To each his own.

Bye! Have a nice flounce.

[Ghoti]

How about a very polite version of;

1) Your potential patent has significant prior disclosure issues, but this is a very specialized area and you don't feel fully competent to analyze this. Explain that you’ve approached others in the field and the conclusion is that it will need further information and analysis. On face value, there seems to be significant risks and they need to be assessed by someone fully versed in this area. Then, he can make the decision to pay for some-one elses advice, or take the risk.

2)Let him know that a prior art search would be a great thing to do (eg prior to him sinking money into getting advice on the prior disclosure problem). Then hand him the websites and describe basically how to do it. (I’ve used this before as a way to weed out those people who aren’t actually committed. If they can’t be bothered to spend a day or so searching, then I can’t be bothered spending a day or so on analysis/advice. They seem to get this without me having to spell it out to them.)

3) Explain that your offer to help, was related to the drafting area (or whatever area you originally meant). By narrowing your help area, you remove your responsibility to the risks, and how much advice you need to provide.

[JimIvey]

How about a very polite version of;

I can't tell whether you intend to decline the job.  If so, asserting that you're not competent in the technology is a good excuse to decline.  If it's true, you probably shouldn't do #3.

In terms of what to say, I'd start with asking questions to try to resolve some of the unknowns.  You can explain that t6he company may have publicized the invention in some way, particularly if it didn't think there was any obligation to not publicize it.  Any publication of the invention by the company can make the invention unpatentable.  You can also explain that failure of the company to publicize the invention in any way (including trying to sell it to the public) indicates that the company (at least that particular company) didn't see significant value in it.

You could also explain that the long time that passed between initial demonstration and filing the application could be problematic -- there's a lot of time for others to work on solving the same problem and accordingly increased risk of other prior art.  There may be laches issues to look into.

Your suggestion regarding DIY searching is good.  I often explain that searching can be used to reduce uncertainty regarding prior art.  I also explain that you can never completely eliminate uncertainty and that reduction of uncertainty follows a curve of diminishing returns.  You stop searching when further reductions in uncertainty are not worth the cost of searching further -- another business decision.  If Doug Inventor has limited funds, doing the search himself is cheap and he'll understand much more about his prospects by seeing what's out there and what others are doing to solve the same problem.  He should probably search specifically for things by the company to which he had disclosed his early prototype.  A professional search might be warranted -- another business decision.

One thing I'd try to make very clear is that patents are not cheap and that they're full of risk.  If he decides to go forward and you agree to help, you should remind him of all your warnings in writing, e-mail at least. 

If you decide not to agree to help, you can consider referring him to someone else.  I've had potential clients who were particularly troublesome.  As an example, one was in and out of a psychiatric hospital and accepted an offer I never made of $200,000/month for being my office manager -- but she wanted to discuss the benefits package.  This was about 4 years ago, and I still get calls asking for a cash advance on her salary or for back salary that I supposedly owe her.  I would not refer someone like that to colleagues with whom you'd like to maintain a relationship.

Lastly, I wouldn't recommend #3, unless it's for saving money.  You're not going to avoid liability by not actually filing the application.  And, if the applicant is to watch their own calendar, they'll likely screw it up and can still blame you.  Even if they don't successfully convince any authority that the calendar screw-up is your fault, you really don't want to go through the process of defending yourself.

I hope that helps.

Regards.