DRAFTING A NON-PROVISIONAL PATENT APPLICATION!

Part1

Determining the Patentability of your Invention

1. 1Determine if you have a patentable invention. U.S. law sets forth the following requirements for something that can be patented:

   • It must be invented or discovered by a person;
   • It must be a new and useful process, machine, manufacture, or composition of matter; or
   • If not new, it must be an improvement on a useful process, machine, manufacture, or composition of matter.[1]
   
   2Verify your invention is not already patented. If your invention meets the requirements for a patentable invention, you must conduct a search to determine whether your idea has already been patented. The US Patent and Trademark Office recommends you follow the following seven steps to search for a patent:

   • Brainstorm terms that are related to your invention. When coming up with terms, think about words relevant to your inventions purpose, make-up, and use.
   • Search for your terms on the USPTO website at: http://www.uspto.gov. You should conduct your search in the following format "CPC Scheme [plus keywords(s) describing invention]." This search should help you locate the invention’s Cooperative Patent Classification (CPC).
   • Once you have located the CPC, review the linked definition to make sure that the definition fits your invention.
   • Search the USPTO patent database, http://appft.uspto.gov, for all patents matching your CPC. After identifying the patents, quickly skim the first page of each patent to determine whether it matches your own invention. If there is a similarity, read the documents more closely including descriptions of the intended use of the invention and any drawings of the invention.
   • If your initial search does not turn up any similar patents, expand your search by performing a key word search on the http://appft.uspto.gov website. You can also search additional databases at http://worldwide.espacenet.com and http://www.uspto.gov/ptrc.[2]
   
   3
   Hire a patent lawyer. Once you have conducted your initial search and found no matching patents, you should hire a patent lawyer. The filing of domestic and international patents requires significant paperwork, legal knowledge of patent law, and experience. While you can attempt to complete the filings yourself, it is strongly advised that you hire someone who has previously applied for patents. This attorney should be able to streamline the process, ensure that you don’t miss any deadlines, and prepare your paperwork so that it meets the requirements.

   • The USTPO maintains a list of registered patent attorneys here: https://oedci.uspto.gov/OEDCI/.

Part2

Applying for a Patent in Your Region

1. 1Determine if you are applying for a provisional or non-provisional patent. A provisional application is essentially a placeholder where you begin to protect your invention before it is a fully formed or completed idea. If you file a provisional application, you will eventually need to file a non-provisional application within one-year of filing the provisional application.

   • A provisional application may be right for you if you are unsure of the commercial value of your invention but you want to protect your invention. It is less expensive to file a a provisional application and you have 12 months to determine if you want to move forward with the cost and time of filing a non-provisional application.
   • If you have already determined the commercial value of your invention and intend to move forward with the production of the product, you should apply for a non-provisional patent and save yourself the time of completing two applications.[3]
   
   2
   Draft a provisional patent application. The provisional patent application provides a less expensive means for applicants filing for U.S. patents. A provisional patent means that the patent is pending. You can file a provisional application without a formal patent claim, oath, declaration, or an information disclosure statement.[4] A provisional patent application must include:

   • A description of the invention in clear, concise and exact terms.[5]
   • Any drawings necessary to understand the invention.
   • A coversheet that identifies the application as provisional and provides: the names and residences of all inventors; the invention’s title; the name and registration number of any registered attorney/agent working on the application; the mailing address; and the name of any U.S. Government agency with an interest in the application.
   • The annual filing fee, which can be located at: http://www.uspto.gov/learning-and-resources/fees-and-payment.
   • The coversheet can be downloaded from: http://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012.[6]
   
   

Sources and Citations

1. ↑ http://www.uspto.gov/patents-getting-started/international-protection/protecting-intellectual-property-rights-ipr
2. ↑ http://www.uspto.gov/learning-and-resources/support-centers/patent-and-trademark-resource-centers-ptrc/resources/seven
3. ↑ https://www.legalzoom.com/knowledge/patent/faq/pap-versus-nap-filing
4. ↑ http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/provisional-application-patent
5. ↑ https://www.law.cornell.edu/uscode/text/35/112
6. ↑ http://www.uspto.gov/patents/resources/types/provisional_app.pdf
7. ↑ http://www.uspto.gov/web/offices/pac/mpep/s608.html#d0e47639
8. ↑http://www.uspto.gov/sites/default/files/inventors/Checklist_for_Filing_a_Nonprovisional_Utility.pdf
9. ↑ http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/provisional-application-patent
10. ↑ http://www.ericksonlawgroup.com/law/patents/patentfaq/can-i-file-an-international-pct-patent-application/
11. ↑ http://www.wipo.int/pct/guide/en/gdvol1/pdf/gdvol1.pdf
12. ↑ http://www.uspto.gov/sites/default/files/patents/process/file/efs/guidance/indexing-pct-new-appl.pdf
13. ↑ http://www.wipo.int/pct/en/filing/filing.html#8_mail
14. ↑ http://www.ericksonlawgroup.com/law/patents/patentfaq/can-i-file-an-international-pct-patent-application/
15. ↑ http://www.ericksonlawgroup.com/law/patents/patentfaq/can-i-file-an-international-pct-patent-application/
16. ↑ http://www.iphandbook.org/handbook/ch10/p06/

MORE DETAILS.............

What makes a good patent? The classic definition is that a good patent claims an invention as broadly as possible. That definition is fine as far as it goes, but the definition is deficient in that it glosses over both of the fundamental steps in drafting a good patent, namely: (a) identifying what the "invention" is relative to the prior art; and(b) describing the "invention" in a manner that best serves the purposes of the particular client.

A well-written patent claim takes into account the needs of the inventor vis-à-vis the marketplace. Among other things a patent drafter should weigh (a) the likely cost of lengthy arguments during the patent prosecution process to achieve the greatest possible coverage against (b) the benefit of narrower claims that might still be "good enough" to keep the competition at bay.

The main point is that good patenting is a lot more than simply securing the broadest possible coverage on what the inventor thinks is the invention. A good patent means that the patent drafter took the time to see through the applicant’s disclosure, not just into it. The task of patent drafter is much more than just describing and claiming what the inventor thinks he invented. The drafter must also describe and claim all that is inherent in that "invention". To do this, the patent drafter must thoroughly understand how the invention differs from the prior art, and devise all possible ways of embodying that difference.

This generally takes much more creativity than inventing the thing in the first place. Often it takes an hour, or even several hours to understand where the invention lies, and to figure out all alternatives. Remember that the invention is almost always broader than the inventor thinks it is. The easiest way to distinguish good patents from bad is to focus on the length and number of claims. Well-drafted patents tend to have claims that are short and few in number.

An invention disclosure form contains all of the information on the product or process which you believe to have invented. This is an important first step to help organize thoughts and explain the invention in a clear and concise way. A detailed invention disclosure form template can be found here and the essential information needed is summarized below:

Patent Specification

The next step is to prepare a patent specification. The contents of a patent specification are shown in the diagram below:

Drafting the Patent Claims

First, include a claim that defines your invention in broad terms, leaving out any and all unnecessary options. Second, include another claim that defines your invention with as much specificity and with every option you can think of. It does not matter that the claims won’t be in perfect format, with appropriate being defined as the format the Patent Office will ultimately require. At the initial filing stage what matters most is that claims are present and they have appropriate scope, with some being broad and some being narrow and quite specific.

Three criteria to take note of when drafting your claims are that they should clear, complete, and supported.

• Be Clear - Your claim must be clear so that you do not cause the reader to speculate about the claim. If you find yourself using words such as "thin", "strong", "a major part", "such as", "when required", then you are probably not being clear enough. These words force the reader to make a subjective judgment, not an objective observation.

• Be Complete - Each claim should be complete, so that it covers the inventive feature and enough elements around it to put the invention in the proper context.

• Be Supported - The claims have to be supported by the description. This means that all the characteristics of your invention that form part of the claims must be fully explained in the description. In addition, any terms you use in the claims must be either found in the description or clearly inferred from the description.

Patent drawings/Illustrations

The patent applicant is required to furnish at least one patent of the invention whenever the invention is capable of illustration by way of a drawing. Based on my experience I can say that a patent drawing is almost always required. The only time patent drawings are not required is when the invention relates to a chemical compound or composition.

In reality, you should also not think in terms of a single patent drawing or illustration, but rather in terms of however many patent drawings are necessary in order to demonstrate what you have invented. Most patent applications have at least several sheets of drawings, with each sheet routinely having multiple views of the invention. You may need to show various views (top, bottom, right, left, etc.) and you may need to break down the invention and show drawings of one or more of the component parts.

The drawings must show every feature of the invention specified in the claims, and it is required by Patent Office rules to be in a particular form. The Office specifies the size of the sheet on which the drawing is made, the type of paper, the margins, and many other hyper-technical details relating to the making of the drawings. The reason for specifying the standards in detail is that the drawings are printed and published in a uniform style when the patent issues, and the drawings must also be such that they can be readily understood by persons using the patent descriptions.