| |
|
| |
New Ideas, Methods and Products Series
Volume XV |
|
|
|
|
From Invention to Patent: The Inventor's
Role
PREPARING THE PATENT APPLICATION
Preparing a patent application
is a unique
and rewarding experience
and one in which
the inventor must fully
participate if he
wishes to have a patent
that protects his
invention to the fullest
extent possible.
The cost of preparing a
patent application
by a patent attorney is
strictly a matter
of time. The more time
it takes, the more
it will cost. And the time
it takes depends
upon the sophistication
of the technology,
the articulateness of the
inventor, and the
closeness of the prior
art.
The impact of the sophistication
of the technology
can be seen by a simple
example. If the invention
is a non-slip doorknob
it will take less
effort and time to understand
and write a
background that explains
the problems that
existed before the invention
and quickly
and sharply focuses on
the invention which
is the solution to those
problems. Compare
this with an invention
involving a new method
of injecting a dopant in
integrated circuit
transistor fabrications
which enables much
higher packing density
and greater computing
power which permits an
operating system that
supports a truly adaptive
learning system.
This requires the clear
understanding and
explanation of half a dozen
different disciplines
just to understand the
context of the improvement.
Only after that can the
work begin on attempting
to define just what is
the invention.
The articulateness of the
inventor is a critical
factor, not only in the
cost but the breadth
of the patent protection
sought. A patent
is not a scientific paper,
nor is it a simple
statement of an idea. It
is a complete disclosure
of one embodiment of the
invention. It must
describe the best mode
of carrying out the
invention presently known
to the inventor;
the inventor may not disclose
his second
best implementation of
the invention and
keep the best a secret.
And the disclosure
must be sufficient for
others skilled in
the art to make and use
the invention without
undue experimentation.
But it is not a how-to
manual, nor does it require
proofs and citations
as does a doctoral thesis.
The inventor may
not even understand why
the invention works,
only that it does. Most
importantly, the
inventor should strive
at some point to rise
above the specific embodiment,
above the
mathematical or scientific
proof that the
invention is sound, and
above all the other
details, and attempt to
see the broader concept
which can be extracted
from the details:
the underlying notion,
the generic nature
or philosophy of the invention.
Only then
can the patent be properly
drafted with claims
broad enough to fully protect
the broad scope
of the invention, not just
the embodiment
or embodiments presently
contemplated.
Finally, the closeness
of the prior art
must be considered. An
anti-gravity machine
or room temperature fusion
energy source
are easy to see against
the background of
prior art, like a full
moon against the night
sky. But consider trying
to patentably distinguish
a new nail. There are dozens
of different
types of nails: wood, concrete,
horseshoe,
in many types, sizes and
shapes, with many
different surfaces and
textures. A patent
claim to a new nail would
have to be expressed
very, very carefully to
avoid all those prior
art nails and yet gain
for this new nail
the fullest scope of protection
to which
it is entitled.
In addition to spending
anywhere from half
an hour to a number of
hours with a patent
attorney, an inventor should
provide background
material. This does not
mean piles and piles
of documents. Remember,
as a professional
the patent attorney has
a duty to read and
understand anything you
supply so he can
determine what is truly
prior art to be patentably
distinguished and what
is not. This takes
time, and time means cost.
So provide the
attorney only with those
things that are
material to the invention
so he can properly
define your invention and
patentably distinguish
it. He must also bring
all prior art to the
attention of the U.S. Patent
and Trademark
Office Examiner. If that
is not done a patent
may later be invalidated
for failure to bring
pertinent art to the attention
of the Office
during prosecution of the
patent application.
The most effective information
that an inventor
can supply to his attorney
includes, first,
a background of no more
than two or three
pages explaining the problems
that gave rise
to the need for the invention.
This background
should start out with a
general description
of the field to which the
invention relates
and gradually get more
specific until all
the problems confronting
the inventor and
solved by the invention
are spelled out.
Second, a list should be
compiled of all
the advantages of the invention.
These advantages
are the solutions to the
problems raised
in the background and should
be in functional
terms, e.g., faster, less
expensive, more
compact, uses less toxic
chemicals, has more
and faster memory. Third,
a set of drawings
is required, which may
be as simple as hand
sketches or may be CAD/CAM
or draftsman drawn.
These drawings should start
with a broad
view of the environment
of the invention
and gradually get more
detailed until the
details of the invention
itself are revealed.
Finally, the inventor should
attempt to express
in one sentence the basic
inventive concept.
Preparing and submitting
this to the attorney
in advance can considerably
shorten the actual
meeting time.
At the meeting with the
attorney the background
and advantages will be
discussed in detail
and the attorney will obtain
a complete description
and understanding of one
specific embodiment
of the invention as disclosed
in the drawings.
At this point a solid estimate
of cost could
be obtained provided nothing
changes. Ultimately,
the attorney will explore
the scope and breadth
of the invention to get
a good idea of just
how broad the invention
is. Prior art will
be analyzed and distinguished
and claims
will be discussed against
the background
of the market and product
the inventor wishes
to protect and the likely
attempts of competitors
to design around the invention.
The inventor must be fully
involved in this
process to insure that
the patent application
seeks the level of coverage
necessary to
protect the invention.
This lays the groundwork
for drafting the claims,
to which the attorney
devotes substantial time
and effort. It is
not uncommon for an attorney
to spend half
the time required to write
an application
just drafting the claims.
Claims are the
most important part of
the patent. It is
the claims which define
the protection afforded
by a patent. It is the
claims which must
read on an infringing device
if the patent
is truly infringed and
it is the claims which
the Examiner examines,
usually rejects, and
finally agrees are allowable,
often after
amendment, if the patent
ultimately is granted.
Claims are the most important
part of the
patent because they define
the invention
which is protected, but
they require considerable
effort and participation
on behalf of the
attorney and the inventor.
Consider this
example. A person invents
a ski pole with
a chamber in it for holding
his favorite
adult beverage for imbibing
while skiing
without the risk attendant
on carrying a
breakable glass bottle
or bulky canteen.
The ski pole 10, shown
below, has a hollow
space 12 in which is located
a plastic bag
14 ultrasonically welded
at bead 16 to the
inside of the space 12
to form a sealed chamber
18 having an opening 19
communicating with
a hole 20 in handle 22.
Hole 20 is sealed
with a threaded plastic
stopper 24.
| |
 |
Now suppose a patent is
obtained on this
invention as recited in
claim 1 allowed by
the U.S. Patent and Trademark
Office:
Claim 1
A combined ski pole and
container comprising:
(a) a ski pole having a
hollow portion;
(b) a flexible receptacle
sealingly engaged
with said hollow portion
to form a sealed
chamber with a threaded
hole at the top;
(c) a handle on said ski
pole and having
a hole communicating with
the hole at the
top of the pole; and
(d) a threaded plug for
threadably engaging
said threaded hole.
That pretty well defines
the ski pole in
the drawing. But look what
can happen. A
competitor looks at the
"patented"
ski pole and she observes
that rather than
using a flexible receptacle
as recited in
clause (b) above, it would
be cheaper and
easier to just weld plate
30 across the space
12 or the lower portion
31 of space 12 below
the location of plate 30
could simply be
filled with cement or plastic.
In either
case she just designed
around your "patented"
pole! Or maybe she decides
to replace the
threaded plug in clause
(d) above, with a
polished, smooth plug.
Again she is around
your patent.
How does one avoid this?
Sometimes it is
difficult because of prior
art constraints
that make it necessary
to claim the invention
very narrowly or because
foresight and the
ability to predict the
future is not always
available in the necessary
measure. But in
this ski pole case, the
invention could have
been claimed more broadly
by restating clause
(b) as "a sealed chamber
in said hollow
portion with a hole at
the top". Then
all means of creating a
sealed chamber would
have been covered. And
clause (d) could have
been stated as "closure
means for sealing
said hole and closing said
chamber".
There is a limit here imposed
by existing
comparable equipment (prior
art) as to how
broad you can claim the
invention. For example,
claim too broadly and the
claim will be describing
a mayonnaise jar and so
the claim would not
be patentable.
To be sure that patent
protection for your
invention is claimed as
broadly as possible
without being unpatentable,
even embarrassingly
broad, you should take
care to be sure your
attorney really understands
the prior art
and work closely with him
in drafting the
claim or claims. Once the
first draft of
the patent application
is completed it is
sent along with drawings
created by the inventor
and attorney to the inventor,
who reads it
and makes comments, changes
and corrections
on the draft itself and
returns it to the
attorney for preparation
in final form. If
the changes are understandable
the attorney
prepares the final draft,
but if they are
not or the attorney is
not comfortable with
them because they change
the focus of the
invention, for example,
then another meeting
with the inventor may be
required.
Often the opportunity to
read the presentation
of the invention in the
draft application
inspires other, deeper
reflections by the
inventor which may result
in a fundamental
change in his perception
of the invention.
This certainly would require
another meeting
and perhaps a second draft
of the patent
application. Eventually,
after the first
or subsequent draft is
approved by the inventor,
the patent application
is prepared in final
form and submitted to the
inventor for reading
and execution. This draft
will be accompanied
by a Declaration, Petition
and Power of Attorney,
and perhaps an Assignment
from the inventor
to his company and a small
business verification
form which entitles the
inventor to a 50%
reduction in the U.S. Patent
and Trademark
Office fees.
The application at this
time may be accompanied
by formal drawings, or
the original sketches
and drawings may be used
if they are clear
and understandable and
are acceptable to
the Office. Subsequently,
formal drawings
will have to be submitted
before the case
is allowed to issue as
a patent. After the
inventor has read and signed
all the necessary
papers he typically returns
it to the attorney
who submits it to the U.S.
Patent and Trademark
Office by mail, Express
Mail, courier (such
as Federal Express) or
by hand delivery.
A cover letter accompanying
the application
to the Office encloses
the filing fee and
a list of all pertinent
prior art then known
to the attorney and inventor.
If at any time
in the future during prosecution
of the application
additional prior art is
discovered, it must
immediately be brought
to the attention of
the Office. This letter
will also enclose
a stamped, self-addressed
postcard identifying
the application and the
papers filed with
it which will be stamped
by the Office with
the serial number and filing
date and returned
to the attorney within
a few weeks so that
all can be assured that
the application was
safely received by the
Office. An official
filing receipt will not
arrive for three
months or so. If the application
is properly
mailed by Express Mail
then the filing date
accorded the case will
be the date it was
deposited with the U.S.
Postal Service. Otherwise
the filing date will only
be accorded on
the day the case was physically
received
in the Office.
A PATENT BEGINS WITH AN
INVENTION
The path to a patent begins
with an invention.
Strictly speaking, an invention
requires
a conceptualization of
the invention and
a reduction to practice
of it. The conceptualization
is not merely an idea but
a concrete realization
of how the invention can
be effected: an
existing problem solved,
a new task that
can be achieved. A reduction
to practice
is the actual building
of a device or the
execution of the steps
of a method which
implements the invention.
A reduction to
practice is not necessary
prefatory to filing
an application for a patent:
conception is.
While you may file a patent
application immediately
at this point, there are
two other actions
you should consider: record
keeping and a
preliminary patentability
search.
Record keeping properly
done establishes
evidence of the earliest
provable date of
the conception of the invention.
It also
establishes evidence of
the fact of and the
date of the reduction to
practice and of
diligence of the inventor
in bringing the
invention from the conceptual
stage to the
reduction to practice.
Those two dates and
the level of diligence
between them is what
the U.S. Patent and Trademark
Office considers
when it is determining
which one of two different
inventors is going to receive
the patent
for the invention.
The best proof for this
purpose is documentary
evidence corroborated by
an unbiased witness
or two. A bound, page-numbered
notebook which
cannot have pages added
or removed surreptitiously
is a good recording medium.
The concept and
all thoughts on improvements,
variations,
and applications should
be written in the
notebook and each page
dated and signed by
the inventor identified
as such. Each page
should also be signed and
dated by one or
more witnesses who have
read and understood
the inventor's descriptions.
The witnesses
should sign under a legend
such as: "Explained
to and understood by me."
For this witnessing
is not, as in the case
of a will or trust,
merely that the signing
party is not subject
to duress or coercion,
and is who he says
he is and appears sane
and sober. In this
case the witness is testifying
that concepts
on this page were made
known to him on that
date. A notarized document
is not nearly
so probative.
A self-addressed postmarked
envelope containing
the inventor's own letter
describing the
invention is of little
worth. For it can
only be entered into evidence
on the inventor's
sworn statement that he
did not open or tamper
with the letter. If the
inventor's word as
to the letter was acceptable
proof, then
so would his word concerning
the date of
conception. That is not
likely and should
not be counted on.
Take care to have the inventor(s)
and witness(es)
clearly identified and
distinguished. Serious
problems have arisen when
a party assumed
to have signed as a witness
later claims
to have signed as inventor
or co-inventor!
A preliminary patentability
search is generally
advisable, but not mandatory.
The basic purpose
of such a search is to
determine the general
state of the art in the
area of the invention.
This helps the inventor
understand whether
there is something patentable
about his invention
and the scope of the protection
that may
be available.
Don't be misled. A preliminary
patentability
search is a single purpose
search with a
narrow goal. It covers
only issued U.S. patents,
whether expired or not,
not U.S. patent applications.
They are secret unless
and until they actually
are issued. It does not
cover any patents
or patent applications
of any other countries
and does not cover the
scientific and technical
literature at all. Such
a comprehensive search
would be quite expensive.
The preliminary
patentability search is
by no means exhaustive.
It is a limited search
done on a limited
budget in a limited period
of time. Pertinent
references could be overlooked,
temporarily
missing or misclassified.
A favorable outcome
of a preliminary patentability
search in
no way guarantees the patentability
of the
invention. The U.S. Patent
and Trademark
Office Examiner will do
his own search and
make up his own mind as
to whether the invention
is patentable.
In a preliminary patentability
search, the
searcher in the U.S. Patent
and Trademark
Office files attempts to
cover the most likely
areas where relevant art
should be found
in accordance with his
own experience, the
recommendations of patent
examiners, the
studies of the classification
manuals and
definitions therein, and
of the original
and cross-reference classifications
of relevant
patents uncovered during
the course of the
search. Even so, relevant
art may not be
discovered. For example,
the issuing patent
Examiner may not have properly
classified
and/or cross-referenced
the patent. The Patent
Office search files, even
at their best,
are never wholly complete.
Finally, there
is the consideration that
this is merely
a preliminary patentability
search and must
be done within acceptable
price limits.
Also be aware that consciously
or subconsciously
an inventor often shifts
the focus of his
invention after a search
is done, either
as a result of: a sharpened
focus after seeing
the search results, a subconscious
refusal
to accept that his invention
is already known,
or a further, deeper understanding
of his
invention. Whatever the
reason, such a shift
may make the original search
inapplicable
since there is now a different
invention
being emphasized.
Finally, don't mistake
a preliminary patentability
search for an infringement
search. A preliminary
patentability search attempts
to bring to
your attention the general
prior art in the
area of the invention so
you can get a feel
of whether and to what
extent your invention
may be patentable. In contrast,
an infringement
search attempts to uncover
not just patents
which may contain disclosures
of your invention.
Rather, this search seeks
to find unexpired
patents which are of the
same scope, a more
dominant coverage, or even
a more narrow
coverage which would prevent
or interfere
with your right to freely
practice or license
your invention. These searches
are much more
time consuming and expensive
than simple
preliminary patentability
searches.
PATENT PENDING -- THE PATENT
OFFICE PROCEDURE
AFTER FILING
Once received in the Office
the application
will be classified as to
its technical art
and assigned to the Examiner
who handles
that particular area of
technology. Examiners
have at least an undergraduate
scientific
or engineering degree.
The application is
placed on that Examiner's
docket and taken
up in order by him. He
will read the application,
make a search of the relevant
art such as
U.S. and foreign patents,
scientific papers
and journals and books,
to determine whether
and to what extent the
invention may be patentable.
Almost universally the
first communication
from the Examiner, called
an Office Action,
will refuse all or nearly
all of the claims.
A first class of comment
known as a rejection
may be based on a number
of different substantive
grounds. This first Office
Action may occur
any time after filing.
The average time is
12-14 months, but some
can take longer and
some can occur in six months.
The Examiner
may have found a complete
anticipation of
the invention in a single
document or patent,
or he may have found no
such total anticipation
but one or more references
which he may feel
make the invention obvious
to one skilled
in the art, even though
there is nowhere
to be found the total idea
of the invention.
The Examiner may also reject
the claims as
not being drawn to proper
patentable subject
matter or as being vague
and indefinite and
not distinctly setting
forth the invention.
These two types of rejection
were quite common,
for example, in the early
days of seeking
patent protection for software.
The Examiner can also make
a second class
of criticisms, known as
objections, based
not on substantive but
on technical grounds:
grammar, spelling, diction,
insufficient
explanation, too much explanation,
non-sequiturs
or the like.
The Office generally allows
just three months
to reply to the Office
Action. Replies made
after the third month during
each of the
fourth, fifth and sixth
months must be accompanied
by an escalating late fee
and a request for
an extension for the appropriate
time. After
six months if no reply
is filed the application
becomes abandoned and can
only be revived
by a timely petition accompanied
by a much
larger fee.
The reply to the Office
Action, normally
titled a Response, may
include amendments
to the description and
drawings and to the
claims as deemed necessary
to meet the Examiner's
rejections/objections.
It may also include
arguments made by the attorney.
For example,
the attorney will normally
make whatever
amendments to the application
are needed
to meet the technical objections
provided
such amendments do not
change the sense of
the claims or invention.
With respect to the reply
to the substantive
rejections the attorney
will be a bit more
conservative. First the
attorney will read
all the references relied
on by the Examiner
and study the Examiner's
remarks to thoroughly
understand how the Examiner
is applying those
references to refuse patentability
of the
claims. The attorney will
explain to the
Examiner why each of the
references is not
applicable to the claims,
or why the combination
of references is not applicable.
The attorney
may also, in lieu of or
in addition to arguing
the references, amend the
claims so that
they more clearly define
and distinguish
the invention from the
references. The description,
drawings and claims may
be freely amended
at this time, but bear
in mind that no new
matter may ever be introduced
into the application.
The application disclosure
was frozen on
the date it was filed in
the Office.
The original disclosure
and its normal understanding
by those skilled in the
art is the focus
of the examination procedure;
no extraneous
matter can be argued or
added. If the inventor
suddenly realizes another
feature of his
invention which he failed
to include but
which would now serve to
easily distinguish
his invention from the
prior art, it's too
late. The only option is
to file a new application,
a continuation-in-part
application, to add
the new matter, and begin
the examination
process anew. This happens
in a relatively
small number of cases.
More normally, good
arguments and amendments
can be made to persuade
the Examiner. Often the
next Office Action,
which will occur in about
three to six months,
will allow at least some
of the claims, and
the applicant must determine
whether to accept
those and give up the rest
or make a second
Response and attempt to
obtain more claims.
The second Office Action
may also reaffirm
the rejection of all the
claims. Normally
this second Office Action
is made FINAL,
meaning the applicant must
comply with all
requirements made by the
Examiner or the
case will be abandoned
and no further Office
Actions will be forthcoming.
All of this
correspondence is done
in writing. But at
any time during this process
the attorney
may feel it productive
or necessary to have
a conference either by
telephone or in person
with the Examiner at the
Patent Office to
present arguments and point
out distinctions
that may be difficult to
communicate on paper.
At this point the applicant
has four choices:
completely comply if such
compliance would
get the case allowed; file
a continuation
case, which is simply a
substitute of the
original, and start prosecution
again; file
a continuation-in-part
and try to add a new
twist; or file an appeal
to the Patent Office
Board of Patent Appeals
and Interferences
in an attempt to persuade
the Board to reverse
the Examiner's decision.
Fortunately in most cases
the application
is allowed and the patent
is issued with
at least some of the claims
which may have
been amended and have a
different scope of
coverage than as originally
filed. During
the entire examination
process, also known
as the prosecution of the
patent application,
the inventor may be involved
with the attorney
in preparing the Responses,
if the attorney
needs help or if the inventor
requests participation.
Once the claims have been
allowed by the
Examiner, a formal Notice
of Allowance is
sent and the issue fee
must be paid within
three months or the application
will be abandoned.
After the issue fee is
paid, the application
will issue as a patent
within approximately
three months. Just prior
to the issuance
an issue receipt is provided
which indicates
the future date on which
the patent is to
issue and the number which
it will be assigned.
The patent will issue on
a Tuesday, and a
representative drawing
and claim will be
published in the Patent
Office Gazette on
that same Tuesday. Maintenance
fees must
be paid or the patent will
lapse and be unenforceable.
Patents are not renewable.
|
|
|
| |
|
