Posts Tagged: "nonprovisional patent application"

Perhaps the patent laws should not be so generous to allow inventors to protect that which they can describe on paper without any proof of a working prototype (which the law refers to as an actual reduction to practice), but that is the law and if you are going to file a patent application you might as well know it and seek the broadest protection possible. This being the case, the trick with drafting a patent application is to define anything that will work, no matter how crude, no matter how defective and regardless of whether you have tested or even have the ability to build and test the device yourself. You want to capture everything, on every level, from broad to specific and all versions of the invention in between. Thus, inventors need to look beyond what works best or is most desirable and consider what works at all. Anything you can articulate and convey can be yours for the taking, provided of course it is new and non-obvious.

A utility patent is one of three separate types of patents the U.S. Patent and Trademark Office (USPTO) can award inventors to protect their inventions. Generally speaking, a utility patent will have a term that begins on the date the patent issues and ends on the date that is twenty years from the date the application for the utility patent was filed in the United States. To obtain a utility patent a utility patent application must be filed at the U.S. Patent Office. Many inventors will choose to start the process toward obtaining a utility patent by filing a provisional patent application first and then within 12 months filing a non-provisional utility patent application.

For as long as I can remember, in order for a nonprovisional utility patent application to be awarded the all important filing date you had to file a specification that adequately described the invention, at least one patent claim and at least one drawing if a drawing would facilitate in the understanding of the invention. Spec, claim, drawing was beaten…

Unlike certain rejections one faces in life, a rejection from a patent examiner is never the end of the story, and definitely not final – even when the rejection is called a final rejection all hope is not lost and there are things that can be done to continue to attempt to persuade and ultimately convince the patent examiner you are entitled to a patent… Generally speaking, what you will want to do after you get a final rejection will not be the type of thing you will have the right to do. In that likely situation, the most common thing to do is file what is called a Request for Continued Examination (RCE), which is allowed under 37 CFR 1.114. An applicant request continued examination of an application at any time after prosecution in the application is closed.

Today we pick up our series with discussion of some advanced patent claim drafting strategies for inventors and others new to the art of claim drafting. Sometimes those who draft patent claims get a little too cute for their own good. What is it that you are trying to accomplish? Are you trying to get the broadest claim that you can possibly obtain? If that is your goal you will probably be rather disappointed with your efforts even if you are successful. Today it is very easy to challenge issued patent claims, indeed easier than ever before. That means your goal has to be to obtain the broadest valid claim possible, not just the broadest claim that you can sneak by a patent examiner.

One big mistake inventors make is they will go on page after page in their draft patent application about how they came up with the idea for the invention, what the market for the invention is and how they plan on tapping into that market. None of that is appropriate for a patent application. Various pieces, perhaps even all of it, would be appropriate for a business plan. So the first thing inventors need to understand and really internally appreciate is that a patent is NOT a business plan. If you are going to attempt to raise money to pursue your business objectives you will undoubtedly need a business plan and attaching a well drafted and previously filed patent application as an appendix can be useful at times, but a business plan and a patent application play very different roles.

First, every patent claim needs a preamble, which is the introductory phrase in a claim… Second, every patent claim needs a transition. The most common transitions are: “comprising” and “consisting of” … Third, the first time you introduce a limitation you MUST introduce it with either “a” or “an”, as is grammatically appropriate… Below in an example of an independent claim that applies the above stated three simple rules, which is taken from U.S. Patent No. 6,009,555, titled Multiple component headgear system.

The popular story goes that Alexander Graham Bell and the second man to file USPTO paperwork related to invention of the telephone, Elisha Gray, did so on the same day, Feb. 14, 1876, when time of day of receipt was not recorded. The exact order in which their paperwork was received that day by the chief patent examiner and how remains in dispute even now, according to the prologue of The Telephone Patent Conspiracy of 1876. Over time, historians seem to have sided with Bell, and Gray has more or less faded into a footnote of history.

The PathWays system is designed to help applicants predict which art units an application is likely to be filed before the application is even filed. A unique semantic search algorithm compares user submitted text to weighted key words derived from an exhaustive collection of application documents clustered in each USPTO art unit.

Being your own lexicographer means is that you who can define your invention using whatever terms you choose, and after attributing pretty much whatever meaning you want to give to the terms you use. Indeed you get to define the terms you use so long as any special meaning you assign to any particular term is clearly set forth in the specification. It is true that the ordinary plain meaning of the terms as would be understood by one of skill in the relevant technology field will be applied if you do not provide your own definitions, but leaving nothing to chance is generally a good idea. It is an absolute prerequisite if you are using a term that has multiple possible meanings, or if you are referring only to a certain subset of what the term generally means or could mean.

The best mode requirement still exists, although the America Invents Act (AIA) has largely removed any consequences for failing to disclose the inventor’s best mode, which means the current state of the law is at best a bit murky. But why would you ever want to file a patent application that does not disclose something that you prefer or regard as better? The goal of filing a patent application has to be to completely disclose your invention with as much detail and description as possible, paying particular attention to alternatives and variations. So while you may be able to get away with not disclosing any preferences doing so would likely be a tragic mistake.

The use of relative terminology, which are short-hand terms that express a certain similarity, are quite common in every day conversation, but are not always appropriate for patent applications, or more specifically for patent claims. This is true because patent claims must particularly pointing out and distinctly claiming the subject matter invented. Therefore, the use of relative terminology in patent claims should be carefully considered. Traps do await the unwary.

In short, a concise description of an invention is an inadequate description of an invention, period. The goal has to be to provide a full, clear, exact description of the invention in a way that particularly points out and distinctly identifies what the inventor believes he or she has invented and wants protection to cover. Even knowing what the legal standard is for the description that must be present in a patent application does not ensure that those without training will be able to satisfy the requirement. The blame for this goes to the way most people describe things as they engage in ordinary, everyday communications.

Last week I wrote about adopting a patent strategy in order to lay the foundation for success. What the article did not touch upon, however, is how you can use procedural mechanisms available at the Patent Office to expand your patent into a patent portfolio, or how to correct unforeseen problems with your patent (or portfolio) that may needlessly compromise…