Preparing a Patent Application

Preparing a Patent Application Title Related Art Technical Field Background Summary Drawings Description Abstract

Preparing a Patent Application Title Short and precise Does not contain trade-mark, coined word or personal name Does not telegraph the inventive features Does describe type of claims System Method Apparatus Combination of at least first two Cf. Rule 80(1)(a), MOPOP §9.01 , MPEP §606, PCT Applicant’s Guide §59

Preparing a Patent Application Related Art Usually identify if patent application relates to previously filed application Eg. priority application, parent of divisional, continuation, CIP Generally do not reference foreign applications unless claiming priority from them Incorporation by reference: Recommended for US Not permitted in CA Recommendation: insert incorporation by reference when filing and simply remove when requested to do so by Examiner

Preparing a Patent Application Technical Field Specifies technical field to which invention relates Used to limit scope of prior art search Sometimes may want to limit or broaden depending on scope of claims to which you think you are entitled Does not telegraph the inventive features “The present disclosure relates to <specify> and in particular to <specify> Cf. Rule 80(1)(b) MOPOP §9.01 , MPEP 608.01(c)(1), PCT Applicant’s Guide §§113-116

Preparing a Patent Application In class exercise Students draft Title and Technical Field portions of patent application directed to the invention discussed during the Inventor Interview exercise

Preparing a Patent Application Background Describe the problem Remember your notes from Inventor Interview Make a compelling case for the problem Describe the prior art, which may be references or approaches Even more important in light of Free World Trust If you craft narrowing amendment to avoid a prior art reference, may need to rely on “subjective” essentiality to render it essential Cannot do this if not referenced in specification Can do in prosecution: cf. Patent Act, s. 38.2(2) Try to avoid characterizing as “prior art” May be held as an admission Describe shortcomings of each reference DO NOT TELEGRAPH THE INVENTIVE CONCEPT Admission as prior art? Create an obviousness argument May be required in some jurisdictions (e.g. Europe’s problem-solution approach)

Preparing a Patent Application Background (cont’d) Objectives Modern view – do not state any May state what is “desirable” Be careful of making a promise that is not kept You can make an innocuous “desirability” statement as a lead-in to description Cf. Rule 80(1)(c), MOPOP §9.01 , MPEP 608.01(c)(2), PCT Applicant’s Guide §113

Preparing a Patent Application In class exercise Students to draft Background paragraph for a patent application directed to invention discussed during the Inventor Interview exercise, discussing one (mythical) prior art reference student considers to be the “best” reference

Preparing a Patent Application Summary First introduction to inventive concept Modern approach: after drawings and as initial part of description Describe inventive concept in terms that allow understanding of technical problem, even if not expressly stated as such, and its solution Avoid citing advantages Generally tracks independent claim(s) and abstract May be useful as an initial cut at claims (see notes re claim drafting) Try to keep consistent and current Insert consistory clauses and keep them current (CA) Avoid reference to invention Emphasize “aspects” of disclosure and “example embodiments” Cf. Rule 80(1)(d), MPEP 608.01(d)

Preparing a Patent Application Drawings Determine which drawings and in which order you want to use Work in conjunction with detailed description Start from general or background Proceed to main embodiment Describe alternative embodiments as needed You may need additional views to be prepared Add reference numerals as you proceed Leave space for additional numerals Even numbers / increments of 5 Perhaps use leading digit to identify figure number Consider glossary for consistency of terminology or review and revise Describe each figure both in Drawings section and as introduced Avoid reference to invention Emphasize “aspects” of disclosure and “example embodiments”

Preparing a Patent Application Drawings (cont’d) Cf. Patent Act, Section 37, Rule 80(1)(e), 82, 83, MOPOP c. 10, MPEP 608.01(f), PCT Applicant’s Guide §143-178

Preparing a Patent Application Drawing Descriptions Exercise students draft descriptions of drawing figures in handout click drawing to display drawing figures in handout

Preparing a Patent Application Description Work in conjunction with drawings in selected order Describe structure first then operation Work recursively to describe structure Introduce all elements in figure Name each element (CONSISTENTLY!) and assign reference numeral Name comes before reference numeral Use reference numerals consistently – especially embodiment to embodiment Use names consistently (glossary or parts list) You may need to revise in light of claim terminology Try to use “simple” and acceptable terminology of the art – don’t be too fancy For each element: Describe connections to other elements (may involve duplication) Describe operation of element (this may entail introduction of new figure) Describe simple equivalents but not alternative embodiments Describe composition, size, manufacturer, part number as appropriate for purposes of best mode and enablement Avoid patent profanity: essential, must, preferred, best, obvious etc.

Preparing a Patent Application Description (cont’d) Once main embodiment structure described, describe operation of main embodiment Operation may not follow structure but structure completely described Use flow chart describing method actions Avoid reference to steps or ordering Flow chart(s) should track broadest method claim(s) Describe each action as an element and each arrow as a connection Apply “structural” approach to flow chart Now describe alternative embodiments with reference to figures if appropriate Boilerplate Consistory clauses (modern approach) / omitted EP claims Cf. Rule 80(1)(f), MOPOP c. 9, MPEP §608.01(g) MPEP §608.01(h) PCT Applicant’s Guide §§113-116

Preparing a Patent Application Abstract Used for searching Single paragraph, multiple sentences Not just repetition of claim language Use “plain” English (avoid “said” if re-using some claim language) Brief – around 150 words Generally tracks independent claim(s) and summary May be useful as an initial cut at claims (see notes re claim drafting) Try to keep consistent and current Cf. Rule 79, MOPOP c. 8, MPEP 608.01(b), PCT Applicant’s Guide §§179-188A