Anatomy of a Patent Application Presented by: Jeong Oh Director, Office of Technology Transfer & Industrial Development Syracuse University April 30, 2009.

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

• Specification

• Drawing

• Fee

• Filing date

• Right of Priority


• Policy– Easy entry into patent system– Less expensive– Equal footing with foreign applications– Allow time to test commercialization


• Purpose– Establish filing date– One year to claim priority – automatically

abandoned– Does not affect term of non-provisional patent


• 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


• Requirements for filing date– Specification (in English)– Drawings


• 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


• 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)


• 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.


• 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


• 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


• Brief Description of the Drawings– Mandatory– Description of the drawings

• Flowcharts• Diagrams or schematics• Perspective views• Exploded views• Side views• Partial cutaways


• 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


• 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


• 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”


• 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


• Drawings– Patent draftsperson

• Model or prototype• Number of views• Thickness of lines

– Views• Perspective• Front, Top, Bottom, Side• Sectional• Exploded• Flowcharts• Chemical structures


• Drawings– Reference numerals– Lead lines– National Standards (fluids, flowcharts,

electrical symbols, etc) for structure


• Claims– Legal scope of the invention– Formal language and rules


• 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

Questions?

[email protected]

Title

Classification

Inventors

Assignee

Title

Background

Field of Invention

Sample Specification

Anatomy of a Patent Application Presented by: Jeong Oh Director, Office of Technology Transfer & Industrial Development Syracuse University April 30, 2009.

Documents

specific slide

commercialization slide

grant slide

date right of priority

elements of application

application data sheet

claim of priority

filing date specification