Patents

About	Questions to Ask
Parts of a Patent Application	Preparing a Patent Application
From Filing to Issuance	Design Patents

About Patents

Patents protect useful inventions, such as processes, machines and compositions. To be patentable, the invention must be new (which is fairly straight forward) and not obvious (which is not so straight forward). Because an invention must be new to be patentable, it is important to plan, and usually file, for patent protection before you publicize your invention. Once a patent application has been filed, “patent pending” may be applied to the invention and the invention can be made public, although protection from infringers does not begin until a later time.

A patent gives a right to exclude others from making, using, selling, or importing the invention, but does not give a right to the inventor to make, use, sell or import their own invention. Logically, most inventions are improvements on other inventions. Thus the inventor of the improvement can prevent others from using the improvement, but may be infringing another’s patent for the base invention.

Prior to contacting a patent attorney, you may want to search the patent and patent application databases provided by the United Sates Patent and Trademark Office at uspto.gov. Such a search should help you determine whether anyone has filed for or received a patent for an invention similar to yours. On-line searches can also be valuable to discover related product availability and to determine the companies in your space.

Because patents are a highly technical area of intellectual property protection, it may be valuable to consult with a patent attorney once you are familiar with what other inventors are doing in related technical areas. Information gathering is never perfect, but once you have gathered enough information from research and professionals, you should make a decision as to whether to pursue or forgo seeking patent protection.
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Parts of a Patent Application

Typically not scaled drawings, but rather depictions of the invention that may be followed when reading the test with reference numbers used in the detailed description to indicate the part referred to. Mechanical drawings, electrical schematics, system or network layouts, and flow charts are common drawing types encountered in patents.

Title

• Generally descriptive, not including a trade name.

Background of the Invention

• A brief description of the technology as it stood before the invention. It is important not to include novel parts of your invention in the background.

Summary of the invention

• Can be patterned after the independent claims.

Brief description of the drawings

• A simple line describing what is depicted in each figure included in the drawings.

Detailed description of the invention

• This is the bulk of the application where you describe your invention, including the best mode and frequently alternatives that may be employed to accomplish the invention with reference to the drawings.
  
  The description of the invention must enable one skilled in the technical area to create the invention from the disclosure contained in the application and provide the best mode known to the inventor at the time of filing of making and using the invention.

Claims

• Patent claims define precisely what it is that you are seeking to prevent others from using, and so claims are the critical part of an issued patent that you enforce against infringers once the patent issues. It is critical that you recognize that if there is one word in a claim that is not used in a competitor’s product or method, that claim will not be infringed. Thus, it is important to include only the necessary parts of your invention in the independent claims and you should describe your invention in the broadest terms so that you can maximize the reach of your patent when it issues. Drafting good claims and disclosures that support those claims is very difficult and patent applications are one area where it is best to do it right or not at all.

Abstract

Can be modeled after your broadest (usually shortest) claim.

• And may also include where applicable:
• Reference to related applications
• Description of Federal sponsorship and
• Sequence listing

With the patent application, you should also file:

• An inventor declaration stating you are the true and first inventor to the best of your knowledge,
• An information disclosure statement that lists any documents you know about that are material to the patentability of the invention,
• An assignment in which the inventors assign the invention to a company where applicable
• A power of attorney where someone other than the inventor will be prosecuting (responding to communications from the Patent Office) the patent application. Something to be aware of here is that “standard procedure” is to have the inventors provide the power of attorney, but that means the prosecuting attorney or agent is working for the inventors rather than the company and the longer version where the invention is assigned to the company and the company provides the power of attorney is better since the prosecutor then represents the company. That is of particular importance when an inventor leaves a company.
• Fling documents, which can be downloaded from uspto.gov; and, of course

A fee

• Many of those parts are frequently filed after the patent application because application filers are too busy to bother with them at the time of filing, but late filing can entail a fee, wasted time reopening and re-familiarizing one’s self with the case, and a danger of missing the filing of a document. Almost every deal (the sale of a company or its assets) involves a significant assignment undertaking where improperly assigned or unassigned intellectual property must be assigned to the selling company before the transaction can be completed because people are frequently lazy when it comes to assignments. The time to find former employees and contractors and convince them to assign their rights can be significant and sometimes deals fall through because the company cannot acquire the rights to the intellectual property it purported to sell.
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From filing to issuance

Patent applications are most often rejected one or more times (two is the norm) before a patent issues. In the patent filed, it is commonly believed that if a patent issues without any rejections, the applicant probably did not claim the invention as broadly as they could have. Thus, rejections should be expected initially and are most often overcome through arguments, amendments to the claims, or a combination of arguments and amendments.

The time from filing to issuance of a patent can vary widely and usually is measured in years. The patent office has instituted a goal of issuing a first Office Communication responding to an application 14 months after filing, but seldom succeed except in the cases of simple inventions and continuing applications.
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Questions to ask your patent preparer and prosecutor

Why pay a fee to file your declaration? It is much more efficient and no late filing fee is payable if you file all your documents with your patent application, including your declaration. And record your assignment at the time of filing as well. More often than not in a deal that involves Intellectual Property, title is incorrect and you spend a fortune finding the inventors and coaxing them to assign the rights that wouldn’t have been an issue at the time of filing.

Why pay any patent office fee when responding to a patent Office communication? No fee is due if a response is filed within three months of the date of the communication. Yet the standard in the industry is not to respond until six months after the communication is received, thus incurring a substantial penalty for late filing. Worse, you lose patent term by filing responses late. With the term of a patent running 20 years from the date of filing, every month you delay responding to an Office Communication is a month of delay in receiving an issued patent and a month of patent term lost. Complicating the matter, because the Patent Office is so slow at processing patent applications, congress has provided a term extension for delays in the patent office and most parent patent applications issue with term extensions. But each day a response is filed after the time allowed without need to pay an extension fee is subtracted from the term extension given. Thus, delay in responding to Office Communications but not only delay patent issuance, but frequently reduce the termination date of the patent. So delays in filing cost money in unnecessary penalties, and shorten patent term, frequently doubly on the issuance front end and the expiration back end.
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An approach for beginning to prepare a patent application

List the parts of your invention

Interconnect the parts so they are a single unit

Determine which part or parts are novel – the thing you invented that no one has done before

Determine which parts are necessary to be combined with the novel parts to create a useful thing.

Independent Claim

Assuming there is one novel part, your first claim will include the name of the invention and a listing of the novel part and the necessary parts and how they are interconnected in any desired order. An independent claim may look like this:

• A <name of thing>, comprising:
• first part;
• second part <firmed on, attached to, etc.> first part;
• third part <connected to, coupled with, etc.> <previously listed part>.

Or this:

• A method of (name of method>, comprising:
• first step;
• second step <referring to how it flows from the first step, for example the result of the first step>;
• third step < referring to how it flows from a previous step, for example the result of the second step >.

Dependent Claims

• Are frequently based on the parts of the invention that are not necessary, but may be helpful. For example:
• 2. The method of claim 1, further comprising <fourth step with reference to how it flows from one of the steps in the first claim>.

Detailed Description and Drawings

The individual depictions on the drawings are referred to as “Figures” and are numbered sequentially (i.e., Fig. 1 or Figure 1, Fig. 2 or Figure 2, etc.) Drawings should be black line on white paper if at all possible. Short lines extend from the parts illustrated on the drawings to reference numbers used to associate those parts with their names as they are described in the Detailed Description. Reference numbers can be chosen as you like, but they are usually sequential as they are mentioned in the Detailed Description and patent drafters often space them apart, for example by using only even numbers on the first pass, so that additional numbers may be inserted on future passes.

The Detailed Description describes the invention in sufficient detail to enable someone skilled in the technological area of the invention to make and use the invention. The Detailed Description must describe the best way the inventor can conceive to make and use the invention and usually also includes optional ways of making and using the invention

An orderly approach can help an inventor describe an invention. One such approach is to begin by stating something like “Figure 1 illustrates…,” then list the parts illustrated therein and how they are interconnected. An individual paragraph may then follow for each of the parts, describing the part and options. You can move through each of your Figures in such a way and this orderly approach may help you to cover everything you want to discuss in relation to your invention.

In complex inventions there may be more parts than can be illustrated on a single sheet of paper. An approach that sometimes works for such a complex invention is to show an overview in a first figure, then show more detail for parts shown in the first figure in subsequent figures.

The Background

The Background can be a paragraph or two that introduces the reader to the technology area in which the invention lies. Where the invention is an improvement on an existing product or method (which is common) the Background may describe the existing product without the inventive improvement. The Background may also indicate the deficiencies of the existing product or method that are overcome by the invention. The drafter should be very cautious not to include anything that might be novel in the Background .

The Abstract and Summary

The Abstract and Summary frequently follow from the claims. I suggest preparing the Abstract and Summary late, however, because claims often evolve as you work through the patent drafting process and the invention becomes clarified.

Title

The title should be descriptive and not overly specific.

Some things to consider when preparing a patent application.

If you were a competitor, how might you create a competing product that would not include everything listed in your independent claim? Such workarounds should be described and claimed in your patent application as well.

Did you describe options as requirements? If a part or step isn’t necessary, you should make sure you describe it as an option.

To be sure, this is an extremely simplified approach to patent drafting and a patent professional is likely to bring much more to the patent application than you can bring using this exercise. Nonetheless, this may be a good exercise to undertake to clarify an invention prior to meeting with a patent professional.
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Design Patents

Design Patents protect new, ornamental designs for products and generally include views of the six sides of the product, an isometric view of the product, and a claim to the design depicted in those drawings. Portions of a product that are not part of the ornamental design can be depicted using dotted lines.

Plant Patents

Plant Patents protect the invention or discovery of distinct and new asexually reproduced plants.
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