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Posts Tagged: "Patent Drafting Basics"

Getting a Patent: The Devastating Consequences of Not Naming All Inventors

Naming the correct inventors is critical when drafting a U.S. patent. Patents must have all inventors properly named. Deciding who is an inventor is a complicated task and great care must be taken to not add or omit people who are not inventors. It is possible that failure to properly name the inventors could result in losing your patent or its value. If inventors have been improperly added or omitted, the patent must be corrected or it could be declared invalid.

IPW Course: Patent Practice Training: Intro to Patent Prosecution

You’ve passed the patent bar exam. Now what? Having a license to practice is just the beginning. This is why Gene Quinn and John White designed An Introduction to Patent Prosecution: Patent Practice for Beginners. This interactive, live, online distance course will provide all the tools necessary to hit the ground running. What you need is a bridge between passing the patent bar and representing clients. This course will meet for 6 days from 4:00 PM to 7:30 PM EST on November 13, 15, 18, 20, 22 and 25.

Introduction to Patent Prosecution: Patent Practice for Beginners

You’ve passed the patent bar exam. Now what? Having a license to practice is just the beginning. What you need is a bridge between passing the patent bar and representing clients. This is why Gene Quinn and John White designed An Introduction to Patent Prosecution: Patent Practice for Beginners. This interactive, live, online distance course will provide all the tools necessary to hit the ground running. From interacting with clients to agreements, to handling money, to drafting applications and responding to Office Actions, this course covers it all.

Drafting Software Patents: Lessons from Key Lighthouse Cases

Join Gene Quinn, patent attorney and the President & CEO of IPWatchdog, Inc., on Thursday, February 14, 2019, at 12pm EST for a free webinar discussion Drafting Software Patents: Lessons from Key Lighthouse Cases. Joining Gene will be John White, patent expert, lecturer and partner with Berenato & White, and Megan McLoughlin, patent attorney with LexisNexis IP.

Patent Drafting Basics: Instruction Manual Detail is What You Seek

In some important ways a patent application should be akin to an instruction manual, but unlike the aforementioned BBQ grill, the reader of relevant skill in the area is the one that should be able to follow along. Having said this, there is an important caveat! A patent is not a blueprint… Have you ever seen a worthwhile instruction manual without good, high-quality drawings showing you what to do? Probably not. So, if you’ve been frustrated by the decreasing quality of instruction manuals when “some assembly is required”, you fundamentally already know exactly what you need to do when you draft a patent application. Lots of drawings, lots of descriptive text that focuses on the key elements of the invention — that’s what makes a great patent application.

How to Write a Patent Application

Writing a patent application is not as easy as many think. Indeed, the concept of usefully describing the invention, which on its face seems easy enough to understand, is not as straight forward as it might seem, and why you cannot simply file an abbreviate description of an invention and think that suffices to protect anything really. This article looks at the most common parts of a patent application, and provides discussion about what each section needs to include.

Admissions as Prior Art in a Patent: What they are and why you need to avoid them

So what is an admission? A statement made during patent prosecution identifying the work of another as prior art is called an admission. Admissions can and will be relied upon by patent examiners for both novelty (35 U.S.C. 102) and obviousness (35 U.S.C. 103) determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the express terms of the statute. Admissions should be avoided at all costs, regardless of how innocent they seem to be. This is a lesson that all new patent practitioners and inventors need to take to heart. No matter how innocuous the statement may seem, always remember that no good deed will go unpunished! Everything you do say can and will be used against your patent once it issues — forever.

Patent Drafting: The most valuable patent focuses on structural uniqueness of an invention

It can be enormously difficult for inventors to describe their own inventions. This is true not because the inventor doesn’t know what they’ve invented, or even because the inventor is not in the best position to explain the invention. Indeed, the inventor of a new and useful invention is absolutely in the best position to describe the invention… Inventors are very good at describing how their inventions can be used and why their invention is superior from a usability standpoint. The trouble is describing how an invention can be used, while a prerequisite, will not distinguish a tangible invention from the prior art.

Patent Drafting: Proving You’re in Possession of the Invention

The purpose of the written description requirement is broader than to merely explain how to make and use the invention, which is the subject of the enablement requirement. Rather, to satisfy the written description requirement the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention… While the written description is just that – written – having multiple drawings that show the invention and various aspects of the invention from a variety of viewpoints can be extremely helpful. This is because every figure should be described with at lease one paragraph of text, frequently more.

Patent Drafting: Understanding the Enablement Requirement

The enablement requirement is specifically aimed at ensuring the claimed invention is described with sufficient detail so the relevant person of skill in the art or technology area will understand both how to make and use what has been actually claimed in the patent… While there is no particularly concrete and useful definition for what specifically constitutes undue experimentation, the requirement generally mandates that the description explain the invention so that it could be made and used without individuals having to go through a trial and error process in order to figure it out for themselves. In other words, the invention must actually teach so the invention can be achieved.

Patent Drafting 101: Say What You Mean in a Patent Application

When drafting a patent application it is always the best policy to never assume anything. It is dangerous to assume that the reader will fill in any ambiguous holes in the manner you desire, and as here, if what you literally say is clear you run the very real possibility that an assumption on your part will wind up meaning something very different than you intended because you did not take the time to go the extra step to remove all doubt.

Patent Drafting 101: Going a Mile Wide and Deep with Variations in a Patent Application

You absolutely want to file a patent application with a description that is a mile wide — that part is good — but you also need to also drill down far more than one inch deep in order to teach the various nuances of at least the key aspects of the invention. And there are always nuances that can go a mile deep for any and every invention, no matter how simple it may seem to you as the inventor… How do you know how far you need to go? You really should strive to remove doubt and questions from the reader’s mind. While a certain amount of experimentation is allowable, and patents do not need to contain blueprint level detail, ask yourself whether a knowledgeable reader would know from what you’ve written enough to understand your invention without asking additional questions. If answers to additional questions would be necessary to fully comprehend the invention then answer those questions.

Learning from common patent application mistakes by inventors

The goal in a patent application is to provide a full, clear, and exact description of the invention in a way that particularly points out and distinctly identifies what the inventor believes he or she has invented and wants the patent to cover. Unfortunately, while articulating an invention many inventors fall victim to a host of common mistakes. Saying that…

Defining Computer Related Inventions in a post-Alice World

it is absolutely critical that computer related inventions describe the technology to the greatest extent possible, focusing on as much that is tangible as possible.

Patent Application Drafting: Using the Specification for more than the ordinary plain meaning

As a general rule the ordinary plain meaning of the term as would be understood by someone of skill in the relevant technology area or science will be used. That may or may not be bad, and it may or may not be what you intended… When I teach this topic the example I tend to use relates to “standard room temperature.” If you have invented a process that needs to be carried out at 68 degrees F you might say that the process can or should be carried out at standard room temperature, for example. In the U.S. standard room temperature is generally referred to as 20 degrees C, which is 68 degrees F. But in some parts of the world what qualifies as standard room temperature is a bit warmer, sometimes up to 25 degrees C. So this illustration is particularly useful for several reasons. When you say standard room temperature did you even know that it has an accepted meaning in the scientific community? Were you aware that the meaning could vary depending upon whether the person reading the disclosure is in the United States or some other part of the world? This is where defining what you mean could be particularly important.