1. Preparing a Patent Application

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

3. 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

4. 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

5. 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 (c)(1),
PCT Applicant’s Guide §§

6. 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

7. 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)

8. 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 (c)(2),
PCT Applicant’s Guide §113

9. 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

10. 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 (d)

11. 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”

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

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

14. 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.

15. 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 §§

16. 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 (b),
PCT Applicant’s Guide §§ A