Patent Application Preparation NAPP Nuts & Bolts of Patent Practice for Solo Practitioners and Small Firms Patent Application Preparation July 28, 2014 David Grossman, Esq. Adjunct Professor of Law, George Mason University School of Law PatentService.com David@PatentServices.com With this lecture, we will be pulling together what we have already talked about and draft the application itself. By now, everyone should have done a patent search, reviewed patents in their technology and attempted some claim drafting. Review MPEP, pull-up on the screen Look at a few patents © 2013 All Rights Reserved

What’s your style? Everyone has their own application drafting style It is important to determine your own comfort zone when drafting applications This short presentation mostly discusses my working style 1.5 At this point, you should know your prior art, have looked at several patents in your field, and attempted to draft a few claims. Now we will look at the overall process of generating a full specification © 2013 All Rights Reserved

Overview in a nutshell Inventor Interview Assess the invention in light of the prior art Draft an initial set of claims and figures Wait a day, REVIEW YOUR WORK Update Claims and Figures Draft the Specification Update Specification, Claims and Figures Wait a day, do a final check, FILE APPLICATION 3 BETTER YET, GET SOMEONE ELSE TO REVIEW YOUR WORK! © 2013 All Rights Reserved

Inventor Interview Ask and obtain permission for meeting to be recorded Explain briefly the most important/relevant aspects of patent law Inventorship Bar dates Assignments Foreign filings © 2013 All Rights Reserved

Inventor Interview (cont.) Obtain Disclosure Ask the inventor to describe the invention. keep this open ended Ask inventor to point out the most important features Help the inventor finish inventing the invention Obtain all embodiments and alternatives the inventor can envision Obtain potential marketable alternatives Draft some figures with the inventor Draft a few claims with the inventor © 2013 All Rights Reserved

Understand the invention Critically read disclosures multiple times Research technology Identify terminology (use standard terminology, don’t use made up names) Draft a few figures and claims to pin down concepts Even though you may be drafting a patent application for your own invention, think of it from the point of view of the reader. You will need to teach others how to make and use the invention. In other words, we will be drafting a how-to document. (I find it interesting that my favorite book store growing up was the how-to book store in downtown Phila. (Sansom St. off broad St.) Fingerprint story, running marks © 2013 All Rights Reserved

Draft Claims and Figures Together 6 Talk about monitors. To me, drafting the application is an iterative process. I am going to reiterate a few of the most important concepts about claims for a few slides. Then move on to drafting figures Then drafting the rest of the specification. © 2013 All Rights Reserved

The initial claims don’t have to be perfect Different people think differently (methods, devices, products,…) Write the claims so that the concepts and terms are defined Don’t be constrained to any particular type of claim At this point, even mixed claims are OK In short – define and understand the invention Get something on paper. This is like getting past writers block © 2013 All Rights Reserved

Update the claims The final claims should provide Commercially Valuable Protection of Patentable Ideas The claims need to define, with certainty and detail, the metes and bounds of the invention Design the Claims to Avoid Prior Art Consider likely infringing products Take active steps to bolster the Doctrine of Equivalence Consider starting the claims with a teaching claim 9 Claims need to define, with certainty and detail, the metes and bounds of the invention for the purposes of patentability; and determining infringement. Identify unique component(s) not in the prior art Claim at least one of the unique component in the independent claims. Write independent claims to describe what the prior art IS NOT Make sure the claims cover the most likely infringing device(s) while inactively sitting on a shelf. Try very hard to imagine the future and claim it. Take active steps to bolster the Doctrine of Equivalence © 2013 All Rights Reserved

Bolster the Doctrine of Equivalence Draft numerous claims - Cover invention with claims of varying scope and statutory classes. Use dependent claims to protect reasonable equivalents and substitute for each element and/or every limitation Write independent claims that do NOT describe any embodiments of the invention Use the doctrine of claim differentiation An independent claim is broader that its dependent claims. There is an intended difference in scope between any two claims in the same patent. © 2013 All Rights Reserved

Claim Drafting Strategies Be concise, avoid unnecessary words Be clear, avoid unnecessary adjectives, relative terms CONSIDER LIKELY INFRINGING PRODUCTS, make sure the claims cover the most likely infringing device(s) while inactively sitting on a shelf. 94 © 2013 All Rights Reserved

Claim Drafting Strategies Draft claims to include elements and limitations that clearly distinguish over known prior art. Write independent claims to describe what the prior art IS NOT Draft numerous claims - Cover invention with claims of varying scope and statutory classes. Write independent claims that do NOT describe any embodiments of the invention © 2013 All Rights Reserved

Claim Drafting Strategies Isolate points of novelty between claims Put only one point of novelty (distinguishing element or limitation of an element) in each independent claim Use dependent claims to spell out features and details of the invention- diversified among various different dependent claims 97 © 2013 All Rights Reserved

Claim Drafting Strategies Diversify claims according to clear structural components Claim the invention in its smallest granular pieces AND claim the invention in rational combinations of those smallest granular pieces (alone/as a part) Segment claim elements and limitations so you can try to “quarantine” amendments 100 © 2013 All Rights Reserved

Claim Drafting Strategies Don’t shoot yourself in the foot: Make sure the claims particularly point out the invention Review and carefully proof your claims since they define the heart of the invention, to prevent: Misnumbered claims, improper claim dependence, typos of any sort, copy-and-paste errors Inconsistent or erroneous claim terminology Improper claim form or lack of antecedent basis Improper Markush claim format (a closed set) Indefinite claims, alternative terms, negative limitations, lack of clarity or precision in claims © 2013 All Rights Reserved

Claim Drafting Strategies Consider drafting a second set of claims at least one day later. Make sure the claims correspond with the specification and drawings. Make sure the claims actually describe the invention. 103 © 2013 All Rights Reserved

Drawings All of the claims should be illustrated to the degree possible. Convert the claims into block and flow diagrams. This exercise will almost always disclose flaws in the claims Draft one overview figure for inclusion on the front page of the issued patent. Drawings from academic papers and other disclosures are OK to the extent that they support the claimed invention. 12 © 2013 All Rights Reserved

Drawings Strategies Use a tool like VISIO for simple figures (Flow charts and block diagrams) Use templates for figures that: show (but don’t print) the margins for landscape and portrait For letter and A4 size paper © 2013 All Rights Reserved

Drawings Strategies For more complex drawings Use a tool like Corel Draw or AutoCAD; or Consider using a professional draftsman Many times, it is possible to import data files for complex figures from electronic files provided by the inventor. Only use photographs and color images when ABSOLUTELY NECESSARY 15 © 2013 All Rights Reserved

Drawings Strategies The drawing must show features specified in the claims. Make sure the lines are dark Make sure text is at least 1/8 inch tall (~14 pt. font) Many times, it is possible to import data files for complex figures from electronic files provided by the inventor. 63 © 2013 All Rights Reserved

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Specification of the invention The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same. © 2013 All Rights Reserved

In return for a patent, inventor(s) are required to give a complete disclosure of the invention for which protection is sought. See 37 CFR 1.121(f) Inventors depend upon us to do this well. 1-6 © 2013 All Rights Reserved

Parts of the Specification Title of the invention. Copyright or Mask Work Notice Cross-reference to related applications. Statement regarding federally sponsored research or development. The names of the parties to a joint research agreement. Reference to a “Sequence Listing,” a table, or a computer program listing appendix Background of the invention. Field of the invention. Description of related art including information disclosed under 37 CFR 1.97 and 37 CFR 1.98. Brief summary of the invention.. Brief description of the several views of the drawing.. Detailed description of the invention. Claim(s) Abstract of the Disclosure. Sequence Listing (if on paper) © 2013 All Rights Reserved

Title of the invention Less than 500 characters in length preferably from two to seven words Short, specific, technically accurate, and descriptive clearly indicative of the claims Avoid titles like “a system, method and apparatus for …” 1-9 © 2013 All Rights Reserved

Background of the Invention Two parts Field of the invention. A statement of the field of art to which the invention pertains. Description of related art A description of the related art known to the applicant May discuss problems involved in the prior art which are solved by the applicant's invention. Everything in this section is considered ADMITTED PRIOR ART. Say very little here or better yet: just skip it. © 2013 All Rights Reserved

Brief summary of the Invention. A brief summary or general statement of the invention. Summarizes the nature and gist of the invention. Separate and distinct from the abstract. Has been used by the Courts to narrow the scope of the patent. At most, only recite an independent claim in English. Better yet, skip it. 1-18 © 2013 All Rights Reserved

Brief description of the several views of the drawing. A reference to and brief description of the drawing(s) Example: “FIG. 1 is an example system diagram of a control system as per an embodiment of the present invention” © 2013 All Rights Reserved

Abstract of the Disclosure A brief narrative of the disclosure as a whole in a single paragraph of 150 words or less commencing on a separate sheet following the claims. Should include that which is new in the art to which the invention pertains. Summarize the independent claim(s) here in English. 1-21 © 2013 All Rights Reserved

Detailed Description of the Invention. (Embodiments) Provide support for the claims. Describe more than the preferred embodiment(s). Elements or groups of elements, compounds, and processes generally known in the field of the invention need not always be described in detail. May refer to another patent or readily available publication which adequately describes the subject matter related to complicated subject matter where the elements, compounds, or processes may not be commonly known in the field. Teach the reader how to make and use the claimed invention. © 2013 All Rights Reserved

Use the claims as the OUTLINE to draft the detailed description of the embodiments. Convert the claims into English and fill in necessary support from there. This will ensure that there is explicit support for all of the claims. 1-24 © 2013 All Rights Reserved

The First Paragraph State what the claimed invention is. (e.g. Embodiments of the present invention ….). © 2013 All Rights Reserved

Summarize the main independent claim. State the statutory class(es) Second Paragraph Summarize the main independent claim. State the statutory class(es) List the main elements. 1-27 © 2013 All Rights Reserved

Subsequent Paragraphs Discuss each element paragraph by paragraph. Provide as many examples of each element as possible. List alternative elements Describe anticipated future developments. Describe alternative work a rounds. © 2013 All Rights Reserved

Disclosure Material Material from disclosures such as papers may be important to provide support for unanticipated prior art. Remove all material that is not related to the embodiments of the invention. Remove any material that discusses motivation Substitute “may” for “is” 1-30 © 2013 All Rights Reserved

Patent Profanity Certain words have meaning applied to them through case law that may significantly narrow the scope of a patent. These words should be used carefully or never at all. Never discuss the “invention.” Only reference “embodiments” or “embodiments of the invention” © 2013 All Rights Reserved

Do not use the following terms: Invention required critical necessary important advantageous beneficial desirable preferred Essential exemplary reference step is disadvantages of the prior art advantages of the invention 1-33 © 2013 All Rights Reserved

Don’t puff Just describe the invention Never say a feature is critical, essential, advantageous or important – identify all elements as replaceable Avoid objects, purposes features and advantages © 2013 All Rights Reserved

Proof read the specification multiple times Re-read the Specification at least one day later. Make sure the specification provides “literal” support for the claims. Make sure the specification references all numbered elements in the drawings. 1-36 © 2013 All Rights Reserved

Start with an example drawing and some claims © 2013 All Rights Reserved

Example claims directed to the Data Transmission Device 1-39 © 2013 All Rights Reserved

Example claims directed to the Data Reception Device © 2013 All Rights Reserved

Example claims directed to a Data Transmission System 1-42 © 2013 All Rights Reserved

Convert Claims to English [0100] Embodiments of the present invention move data 125 from a data source 120 to a data storage unit 190 over a network (150). … [0101] Some of the various embodiments include a data source 120, a data transmission device 110, a data reception device 160 and a data storage device 190. … [0102] The data transmission device 110 includes a source data processor 130 and a transmitter 140. The source data processor 190 …. [0103] The Data Reception device 160 includes a receiver 170 and a storage data processor 180. The receiver 170 … © 2013 All Rights Reserved

Boiler plate Paragraphs that are included in most applications Should always be reviewed to make sure they are applicable 1-45 © 2013 All Rights Reserved

Adjunct Professor of Law, George Mason University School of Law THE END David Grossman, Esq. Adjunct Professor of Law, George Mason University School of Law PatentServices.com David@PatentServices.com "The invention all admired, and each, how he to be the inventor missed; so easy it seemed once found, which yet unfound most would have thought impossible."   John Milton http://www.greenbag.org/v7n2/v7n2_michelson.pdf to David A Patent Poem © 2013 All Rights Reserved