Posts Tagged: "Patent Drafting"

Beware Background Pitfalls When Preparing a Patent Application

The best thing to do is explain why your invention solves problems and/or is important for the relevant consumer audience. In order to accomplish this you do not explain what else available to consumers and why it is inferior, missing functionality or missing parts. Remember, the focus of the application MUST be on your invention. It can be extremely helpful to create a comparison chart or write text comparing the prior art you know about with your invention, but this should be used by you or provided to your patent attorney or agent. It will be exceptionally helpful to have this information, and I ask my clients to provide it to me whenever they are willing to be so involved. This information informs how you describe the invention, and will be helpful later during prosecution, but it is not appropriate in a patent application.

Patent Drafting Lessons: Learning from the Grappling Dummy

Such a long, detailed and narrow feature set may have been require to get a patent issued, but is the patent effort (i.e., time and cost) worth such a narrow set of claims? The answer can be a resounding YES, or a definite NO! It all depends upon what you want to do with the patent. One this is for certain though, if you add enough qualifiers and sufficiently narrow a claim you can get a patent on virtually anything, which is unfortunately a truth that invention promotion companies know all to well! In almost all circumstances the goal is to get the broadest valid claim you can possibly obtain. Getting a narrow claim is not likely going to be satisfying, which is why you really should do a patent search prior to deciding whether to even move forward with a patent application. Only by doing a patent search can you get any idea regarding the likely scope of patent claims that could be obtained.

Describing Your Invention Completely in a Patent Application

It is also very important to explain with as much detail as possible, paying particular attention to unobvious or counter-intuitive steps, connections or limitations, paying particular attention to any preparations that may be necessary prior to beginning the making or using process. Perhaps you should try and describe your invention in words in a way that would convey meaning to someone who is blind. This is a tough task no doubt, but the goal of the written disclosure is to provide verbal description that is much like a step by step how to manual. If you are trying to describe your invention to someone who cannot see then you will invariably find creative and enlightening ways to verbally get your message across. This is the type of detail that should be in an application.

The Top 10 Things New Patent Practitioners Should Know

Wherever we go we always get a number of individuals who are currently in law school, have recently graduated law school or are engineers or scientists looking to change careers. During one of the breaks between sessions on day 1 here in San Francisco one of the students taking the course asked me a question that we receive quite a lot, which is this: once I pass the exam how do I learn to actually do this? Like so many things in life experience is the best teacher, but increasingly finding a job without some experience can be extremely difficult.

Defining the Full Glory of Your Invention in a Patent Application

Unless you are claiming a perpetual motion machine, which based on our current understanding of science is understood to be impossible, you do not need to have a working prototype in order to obtain a patent. In fact, the rules and regulations of the Patent Office do not require a working prototype except when you specifically claim a perpetual motion machine. Given that our scientific understanding is that perpetual motion machines cannot exist, and given that inventors frequently file patent applications claiming perpetual motion machines, the Patent Office does require a working prototype, which will be tested. So if you do not claim a perpetual motion machine the patent examiner will never ask you for a prototype. All you need to do is define the invention in writing, through the use of text and illustrations, so that someone of skill in the relevant technical field would be able to understand the scope of your invention, understand how to make and use the invention, and understand what, if any, preferences you have relative to what you are claiming as your invention.

Patent Drafting: Language Difficulties, Open Mouth Insert Foot

What I refer to as “experimental language” either explicitly or implicitly suggests that further experimentation is or will be necessary in order to: (1) realize or perfect the invention; or (2) realize or perfect an intermediate or component. Resist the temptation to have your patent application read like a diary of thoughts and/or personal observations regarding future research and goals. This type of language is usually not found in a patent application because it suggests that your invention is not yet completed, which could be used as an admission that the invention is not enabled and/or that you have not satisfied the written description requirement.

Drafting Patent Applications: Writing Method Claims

Method or process claims will include active steps to achieve a certain result. In method claims the transition is typically either “comprising” or “comprising the steps of.” While legally there may be some distinction between these two different transitions, both are acceptable. It is also important to understand that each of the steps in a method or process claims use gerunds, which are a form of a verb that ends in “ing” and operates to direct the action that is to take place. Said another way, you must use “ing” words in method claims. You cannot define a method or process in the past tense.

The Key to Drafting an Excellent Patent – Alternatives

The trick with drafting a patent application is to describe anything that will work, no matter how crude, no matter how defective. You want to capture everything. This is because the only power of a patent is to prevent others from doing what is covered in the patent. If you are making money there will be others who want to do what you are doing. Your patent can prevent them from doing what you are doing, but a strong patent will also prevent would-be-competitors from doing anything that is close. You want to prevent would-be-competitors from directly competing and from competing with substitutes, even substitutes that are inferior.

Tricks & Tips for Describing An Invention in a Patent Application

The back bone, however, is made up of many smaller bones. For example, there are seven cervical vertebrae in the necks of all mammals, and these bones together make up a portion of the back bone. Therefore, a more complete description of the backbone would point out that the neck is a part of the backbone. An even more complete description might include saying cervical vertebrae 1 (i.e., C1, which is a part of the neck) is connected to cervical vertebrae 2 (i.e., C2) and so on. The point is that the more description you provide the better, but you absolutely must have at least the big picture overview of how everything fits together, and how to make and use the invention. Therefore, be sure that you have disclosed with as much detail as possible how all the pieces of your invention connect, work together, function and interrelate.

Patent Drafting: Defining Computer Implemented Processes

So what information is required in order to demonstrate that there really is an invention that deserves to receive a patent? When examining computer implemented inventions the patent examiner will determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. An algorithm is defined by the Patent Offices as a finite sequence of steps for solving a logical or mathematical problem or performing a task. The patent application may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or in any other manner that provides sufficient structure. In my experience, flow charts that are described in text are the holy grail for these types of applications. In fact, I just prepared a provisional patent application for an inventor and we kept trading flow charts until we had everything we needed. Iterative flow charting creates a lot of detail and the results provide a tremendous disclosure.

Drafting Patent Applications: Writing Patent Claims

I am frequently asked if it is a good idea for inventors to file their own patent applications, and every time I am asked that question I suspect the person doing the asking already knows the answer, but is hoping that they might find someone who will tell them what they want to hear. You have probably seen the commercial where the guy is sitting at his kitchen table and is on the phone with the surgeon who is telling him where to cut to take out his appendix while using a butter knife. The guy asks: “shouldn’t you be doing this?” Well, writing your own patent application is a little like taking out your own appendix.

Patents: A Most Difficult Legal Instrument to Draft

    An updated version of this article is available at: http://ipwatchdog.com/2014/05/17/patent-drafting-not-as-easy-as-you-think/id=49638/    

Apple’s Solar iPod & iPhone

  One month ago today a patent application filed by Apple Computer back on October 20, 2006, was published by the United States Patent Office.  The application titled Solar cells on portable devices could signal the entry into a new generation of mobile devices, more particularly the entry into the age of the solar iPod and iPhone. Now, while this…