anatomy of a patent application presented by: jeong oh director, office of technology transfer &...
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Anatomy of a Patent Application
Presented by: Jeong Oh
Director, Office of Technology Transfer& Industrial Development
Syracuse University
April 30, 2009
Acknowledgement
This presentation was prepared with the
help of David Nocilly, Adjunct Professor of
Law at the College of Law.
Disclaimer
This material contained herein are provided
for general information only. For specific
advice concerning your invention or patent
application, you are strongly urged to
consult a patent lawyer.
Provisional application
• Policy– Easy entry into patent system– Less expensive– Equal footing with foreign applications– Allow time to test commercialization
Provisional application
• Purpose– Establish filing date– One year to claim priority – automatically
abandoned– Does not affect term of non-provisional patent
Provisional application
• Procedure– Cover sheet
• Names of the inventors• Residences of each named inventor• Title• Correspondence address• Government rights
– Remain secret until a claim of priority– One year foreign filing clock under Paris
Convention begins
Provisional application
• Effects– Delays prosecution (and costs)– Increase of total costs– Shifts patent term– Time to develop claims– Resolve issues (e.g., inventorship and
ownership)– Marking of products– Early publication of non-provisional
Provisional application
• Advantages– Short on time– Limited financial resources
• Disadvantages– Often less than complete– Delays prosecution (even longer)
Non-provisional application35 U.S.C. 111(a)
• Specification
• Drawing
• Oath/declaration
• Fee
• Filing date
• Abandonment
• Right of Priority
Non-provisional application
• Application that is examined by the USPTO
• Requirements– Specification, including at least one claim– Drawing in almost all cases– Oath/declaration– Applicable fee
• Small verses large entities
Non-provisional application
• Priority– Claim priority to a provisional
– Same effect as if filed on date of provisional
• Technical requirements– Must be filed within 12 months– Specific reference to provisional
Inventor Oath/Declaration
• Identify inventors– Full names– Mailing addresses and residences– Citizenship
• Each inventor must:– Attest to truth of all matters– Indicate that he/she reviewed and understood
contents of specification– Acknowledge the duty to disclose all material
information– Identify priority documents
Elements of Application
• Title– Mandatory– Identify nature of the invention- A descriptive
title– 500 characters or less (short and specific)
Elements of Application
• Cross-reference to Related Applications– Specification or application data sheet– Cite any prior patent applications and/or
patents that bear on the present invention that you have been a party to.
Elements of Application
• Statement Regarding Federally Sponsored Research– Required if research supported by Federal
funds (i.e., grant)
Elements of Application• Field of the Invention
– Paraphrasing of the manual of classification description
• Background of the Invention– Description of Related Art
• Description of the prior art and problems associated in the prior art
• Avoid discussion of present invention- any information in this section is treated as being an ADMISSION of what came before your invention, and therefore unpatentable to you
Elements of Application
• Summary of the Invention– Should be commensurate with the invention
as claimed– Restates the claims in “plain English”– How it solves problems previous prior art– Inventive concept and practices– How your invention provides some utilitarian
result
Elements of Application
• Brief Description of the Drawings– Mandatory– Description of the drawings
• Flowcharts• Diagrams or schematics• Perspective views• Exploded views• Side views• Partial cutaways
Elements of Application
• Detailed Description– Mandatory– Fulfill statutory disclosure requirements
• Written description of the invention– Demonstrate “possession” of an invention
• Enable one of ordinary skill how to make and use– Structure of a device– Steps for performing a method
• Best mode
– Must specify figures by numbers and use references (numeral preferred) to refer to different parts of the figures
Elements of Application
• Claims– Legal scope of the invention– Conclusion of the specification– Formal language and rules
• More than one allowed• May use dependent claims• Must recite the terms of the invention used in the
rest of the specification
Elements of Application
• Abstract– A brief explanation of the technical aspects– May not exceed 150 words– Enables public to determine nature of the
invention from cursory inspection– Should avoid patent “legalese”
Elements of Application
• Drawings– When necessary for understanding
• Nearly always!– May be required anyway
– Need to include• Every essential feature (what is claimed)• Every claimed element
– Do not need to include conventional features– Can show prior art
Elements of Application
• Drawings– Patent draftsperson
• Model or prototype• Number of views• Thickness of lines
– Views• Perspective• Front, Top, Bottom, Side• Sectional• Exploded• Flowcharts• Chemical structures
Elements of Application
• Drawings– Reference numerals– Lead lines– National Standards (fluids, flowcharts,
electrical symbols, etc) for structure
Elements of Application
• Claims– Elements
• General– Single sentence rule (preamble, transition, body)– Punctuation
• Preamble– Introductory statement– Summarize the type of invention– Identify relationship to prior art– Describe operation– Define purpose
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