1 / 28

The Art of Drafting a Patent Application: Getting Down to the Nitty Gritty

The Art of Drafting a Patent Application: Getting Down to the Nitty Gritty. Process Overview. Provisional First Approach. Getting Started: The Invention Disclosure. The Invention Disclosure Form Naming Inventors: Inventors vs. Authors Inventors must play a role in conception of invention

candid
Download Presentation

The Art of Drafting a Patent Application: Getting Down to the Nitty Gritty

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript


  1. The Art of Drafting a Patent Application:Getting Down to the Nitty Gritty

  2. Process Overview Provisional First Approach

  3. Getting Started:The Invention Disclosure • The Invention Disclosure Form • Naming Inventors: • Inventors vs. Authors • Inventors must play a role in conception of invention • Brief description of invention • Prior public disclosures? • Dates of conception/reduction to practice • Supplemental Materials

  4. The Invention Disclosure • What to disclose? • Identification of full scope of invention • Explore metes & bounds • How to disclose? • In writing most preferred, e.g., manuscripts, grant applications • Oral interview – expand on concepts contained in written document

  5. Example

  6. Example - Manuscript

  7. The Invention Disclosure: The Prior Art • In ScientiaOpportunitas (In knowledge there is opportunity) • Know the prior art • What is new and non-obvious • Example case points of novelty • Simple physical mixture • Non-impregnated • Non-calcined

  8. The Patent Application • Provisional Patent Application • Invention disclosure document may be the provisional application • Must provide support for invention ultimately claimed in non-provisional application

  9. The Patent Application • Non-Provisional Application • Much more formal • PCT: A “patent application” in 148 countries throughout the world

  10. Parts of a Patent Application • The Specification • Must be enabling of full scope of invention, not just a limited number of embodiments • Manuscript vs. Grant Application vs. Patent Application

  11. The Specification • Road Trip - Hitting the Slopes! • The Manuscript Approach • Why go to the mountains? • How do we get there? • I-70 is East/West Highway in vicinity of Manhattan, KS • We suspected that driving I-70 west, we’d eventually run into mountains • Report results—after driving west for 500 miles, we encountered mountains • Future investigation – alternate routes to the mountains

  12. The Specification • The Grant Application Approach • We’ve driven I-70 west and reached mountains • Problems with this approach – boring, not enough places to stop • We suspect there are better routes, but need funding to investigate

  13. The Specification • The Patent Application Approach • Go south on K-177 to I-70 and turn right • Providing directions to achieve an outcome • Provide alternative directions, not just your preferred route • Disclosure should enable others to also reach the mountains

  14. The Specification - Examples Supporting data • Specific working examples serve two purposes: • Demonstrate possession of the invention • Supports enablement requirement • How many examples are enough? • Varies from country to country • Some jurisdictions permit supplemental data to be presented to support (1) and (2) above.

  15. The Specification – Examples Supporting data – continued • What level of detail is required? • Must “report” results, but need not “prove” results • The more critical the feature, the more detail should be provided (e.g., reaction conditions) • What about “failed” experiments? • May be helpful to demonstrate criticality of certain aspects of the invention • Some countries will require examples not ultimately covered by claims to be excised from application.

  16. The Drawings • Drawings helpful to understanding the invention • PCT drawing quality issues: • Must be black & white – avoid colored lines! • Amenable to reproduction • Original, editable files a real help

  17. Example – Experimental Setup

  18. Example – Drawing Problems

  19. Example - Solution

  20. The Claims • Define scope of patent protection • Can be directed to compositions of matter, apparatus, or processes • Generally, “less is more” • In order to infringe, all elements of at least one claim must be present in accused product or process

  21. Example

  22. Example – Claim Preamble 1. A method of removing tars from a syngas stream and conditioning said syngas stream comprising the steps of: • Identifies the “type” of claim (apparatus, method, composition of matter) • Provides just enough background to set the stage for what follows • Not considered limiting on scope of the claim unless the body of claim “breathes life” into it

  23. Example – Claim Body providing a catalyst comprising a dry, uncalcined physical mixture of discrete particles of a catalytic material and char, wherein said char is not impregnated with said catalytic material; contacting a syngas-containing stream having tars present therein with said catalyst under conditions for converting at least a portion of the tars into syngas components. • All steps performed by or at the direction of a single person or party. No divided infringement…yet. • Avoid infringement by eliminating at least one feature that the claim requires to be present.

  24. America Invents Act • The AIA significantly encourages early (and often) filing of patent applications • U.S. patent laws are now based on “first-inventor-to-file” rather than “first-to-invent”

  25. America Invents Act • File patent applications before any public disclosure, use, presentation, commercial activity, etc. involving the invention • Limited “grace period” still available • Use Non-Disclosure Agreements consistently, but do not rely on NDAs to fully protect invention • Inter-institutional inventions: Use written joint development agreements with confidentiality provisions and publication restrictions

  26. America Invents Act • Invention Disclosure forms and streamlined protocol for submitting and evaluating inventions becomes even more important under the AIA

  27. What’s patentable? • Patentable: • Machines, Processes, Compositions, Articles of manufacture • Not Patentable Subject Matter: • Laws of nature, natural phenomena, abstract ideas, mathematical algorithms, mental processes • Isolated DNA

  28. Thank You!Hovey Williams LLP84 Corporate Woods10801 Mastin Blvd., Suite 1000Overland Park, KS 66210913.647.9050www.hoveywilliams.com

More Related