PROVISIONAL APPLICATION WORKSHOP PENDING BIO-MEDICAL CASES Law Office of David McEwing PC .

PROVISIONAL APPLICATION PROVISIONAL APPLICATION

WORKSHOPWORKSHOP

PENDING BIO-MEDICAL CASESPENDING BIO-MEDICAL CASES

Law Office of David McEwing PC

www.HoustonPatentLaw.com

PROVISIONAL APPLICATION PROVISIONAL APPLICATION WORKSHOPWORKSHOP

Invention = Conception (Idea) + Invention = Conception (Idea) + Demonstration (Reduction To Practice)Demonstration (Reduction To Practice)

Reduction To Practice Can Be A Reduction To Practice Can Be A Prototype.Prototype.

Patent Application (Teaching Enablement) Patent Application (Teaching Enablement) - - Constructive Reduction To PracticeConstructive Reduction To Practice..


YOU DON’T NEED A PROTOTYPE OR YOU DON’T NEED A PROTOTYPE OR WORKING MODEL TO FILE A WORKING MODEL TO FILE A PROVISIONAL APPLICATION!PROVISIONAL APPLICATION!


Must have ENABLEMENT! §112Must have ENABLEMENT! §112

A written description of the invention and A written description of the invention and of the manner and process of making and of the manner and process of making and using it, in using it, in full, clear, concise and exactfull, clear, concise and exact terms as to enable any person skilled in terms as to enable any person skilled in the art to make and use the same and the art to make and use the same and shall set forth the best mode contemplated shall set forth the best mode contemplated by the inventor.by the inventor.


For a patent eligible invention (§101) For a patent eligible invention (§101)

Non-provisional must meet tests for:Non-provisional must meet tests for:

Novelty §102Novelty §102

Non-obviousness §103Non-obviousness §103

Enablement §112(a)Enablement §112(a)

Claims §112(b)Claims §112(b)


What is patent eligible? §101 Everything What is patent eligible? §101 Everything exceptexcept

Natural laws (math algorithms)Natural laws (math algorithms)

Natural phenomenaNatural phenomena

Abstract ideasAbstract ideas

Patent eligible subject matter must still be Patent eligible subject matter must still be shown to be novel, non-obvious and shown to be novel, non-obvious and enabled for patent to issue.enabled for patent to issue.

PATENT APPLICATION PATENT APPLICATION WORKSHOPWORKSHOP

What is patent eligible subject matter? What is patent eligible subject matter?

§101 IMPORTANT TOPIC FOR§101 IMPORTANT TOPIC FOR

Personalized medicine. Personalized medicine.

Computer software.Computer software.

Also remember Novelty, Non-obviousness Also remember Novelty, Non-obviousness and Enablementand Enablement

SOFTWARE PATENTSSOFTWARE PATENTS

““It is simply ridiculous that after 40 years of It is simply ridiculous that after 40 years of debate, we still do not have an answer to debate, we still do not have an answer to the simple question of whether (or when) the simple question of whether (or when) software is patentable.” Dennis Crouch software is patentable.” Dennis Crouch Patently O blogPatently O blog

PROVISIONAL APPLICATIONSPROVISIONAL APPLICATIONS

Provisional applications:Provisional applications:get filing date (establish priority over competitors)get filing date (establish priority over competitors)Quick procedureQuick procedure

No IDS (prior art disclosure)No IDS (prior art disclosure)No inventors oath or declarationNo inventors oath or declarationNo claimsNo claimsCursory review for minimum filing Cursory review for minimum filing

requirementsrequirementsNo formalities (need to use USPTO cover sheet No formalities (need to use USPTO cover sheet SB/16, documents in pdf format)SB/16, documents in pdf format)inexpensive ($65)inexpensive ($65)File online. File online. www.uspto.govwww.uspto.gov Application not publishedApplication not published

PROVISIONAL APPLICATIONPROVISIONAL APPLICATION

Provisional applications continuedProvisional applications continuedOnly effective for 12 Only effective for 12 months/automatically abandoned unless months/automatically abandoned unless utility (non-provisional) application filed.utility (non-provisional) application filed.Follow-on utility application must claim Follow-on utility application must claim priority to provisional or it is lost.priority to provisional or it is lost.(Claim priority through the USPTO (Claim priority through the USPTO Application Data Sheet AIA/14) Application Data Sheet AIA/14) Cost to file a utility application is $500Cost to file a utility application is $500

Provisional ApplicationProvisional Application

Provisional applications continuedProvisional applications continued You can disclose your provisional You can disclose your provisional

application.application. For example, show to potential For example, show to potential

investors.investors. Provisional application is a definition of Provisional application is a definition of

your invention.your invention. It is the definition of It is the definition of your propertyyour property

PROVISIONAL APPLICATIONPROVISIONAL APPLICATION

Have organized formatHave organized formatDouble spaceDouble spaceTitleTitleIntroduction (What is the problem solved)Introduction (What is the problem solved)DetailedDetailed description (Teach how it solves the description (Teach how it solves the problem) See next pageproblem) See next pageDrawings (with numbers)Drawings (with numbers)Explain drawings in detailed description.Explain drawings in detailed description.Convert all documents to pdf’s.Convert all documents to pdf’s.Cover sheet saved to your computer.Cover sheet saved to your computer.


Critical to teach Enablement.Critical to teach Enablement.WRITE DETAILED DESCRIPTION AS WRITE DETAILED DESCRIPTION AS INSTRUCTION MANUAL FOR PERSON INSTRUCTION MANUAL FOR PERSON SKILLED IN THE ART HOW TO USE OR SKILLED IN THE ART HOW TO USE OR MAKE THE INVENTION.MAKE THE INVENTION.Include details N.B. what appears trivial Include details N.B. what appears trivial now can be critical later. (See next page)now can be critical later. (See next page)The application is NOT an Executive The application is NOT an Executive SummarySummary


Don’t need to define “screws”, “plastic” Don’t need to define “screws”, “plastic” “hook and loop” (Velcro)“hook and loop” (Velcro)

Don’t need to define “lumen”, “aneurysm”, Don’t need to define “lumen”, “aneurysm”, “venous”, “arterial”, “arterial occlusion” … “venous”, “arterial”, “arterial occlusion” … but it doesn’t hurt.but it doesn’t hurt.

PROVISIONAL APPLICATION WORKSHOPPROVISIONAL APPLICATION WORKSHOP

Provisional filing:Provisional filing:

Patent Pending 61/xxx,xxxPatent Pending 61/xxx,xxx

Utility Application gives right to exclude Utility Application gives right to exclude BUT NOT right to use invention.BUT NOT right to use invention.

Prior Art:Prior Art: A+B+CA+B+C

Your Invention: A+B+C+DYour Invention: A+B+C+D


Note all components are numbered.Note all components are numbered.

How to describe device and teach its How to describe device and teach its operation?operation?

One solution is to describe what it does One solution is to describe what it does step by step.step by step.

Also describe what are its essential Also describe what are its essential components. (Describe the parts)components. (Describe the parts)

Describe it as a system of componentsDescribe it as a system of components

Describe the method of its operation.Describe the method of its operation.


A method of filling syringes comprising A method of filling syringes comprising positioning a syringe under a moveable positioning a syringe under a moveable vial; moving the vial down on the needle to vial; moving the vial down on the needle to penetrate a septum, extending the syringe penetrate a septum, extending the syringe plunger to draw liquid from the vial into the plunger to draw liquid from the vial into the syringe, elevating the vial above the syringe, elevating the vial above the needle, rotating a second vial above the needle, rotating a second vial above the needle, etc. (Omits syringe plunger tool needle, etc. (Omits syringe plunger tool and motors)and motors)


Automated filling of syringes using an Automated filling of syringes using an apparatus (100) comprising a programmed apparatus (100) comprising a programmed CPU controlling a plurality of servomotors. CPU controlling a plurality of servomotors. A syringe (211) is vertically placed in a A syringe (211) is vertically placed in a fixed position with the syringe needle (202) fixed position with the syringe needle (202) pointed up. A pivoting, motor controlled pointed up. A pivoting, motor controlled syringe plunger tool attaches to the syringe syringe plunger tool attaches to the syringe plunger. (221) The syringe plunger can be plunger. (221) The syringe plunger can be controllably moved up or down by operation controllably moved up or down by operation of the syringe plunger tool (171).of the syringe plunger tool (171).


The vertical syringe is positioned beneath The vertical syringe is positioned beneath a rotatable and elevatable plate holding a rotatable and elevatable plate holding uncapped vials containing septumsuncapped vials containing septums. The . The plate is motor controlled. The position and plate is motor controlled. The position and elevation of the plate can be controlled by elevation of the plate can be controlled by the programmed CPU in communication the programmed CPU in communication with at least one motor. with at least one motor. There can be one There can be one motor controlling plate rotation and a motor controlling plate rotation and a second motor controlling elevationsecond motor controlling elevation. .


A device for automated filling of syringes A device for automated filling of syringes comprising a CPU controlling a plurality of comprising a CPU controlling a plurality of motors, a motor controlled elevatable and motors, a motor controlled elevatable and rotatable plate holding inverted vials, a rotatable plate holding inverted vials, a motor controlled carousel holding a motor controlled carousel holding a plurality of syringes plurality of syringes wherein the syringe wherein the syringe needles are pointed up and the carousel needles are pointed up and the carousel can position the syringe needle beneath can position the syringe needle beneath the inverted vial, etcthe inverted vial, etc. .


Endovascular Aneurysm Clip and MethodEndovascular Aneurysm Clip and Method

TitleTitle

Field of Use (Problem solved)Field of Use (Problem solved)

Explanation of drawings (handwritten)Explanation of drawings (handwritten)

Each drawing is labeled as Figure.Each drawing is labeled as Figure.

Each drawing component is numbered.Each drawing component is numbered.

Description of drawings in Specification Description of drawings in Specification incorporating component numbersincorporating component numbers


Invention described by structure (pgs 2-5)Invention described by structure (pgs 2-5)

Invention described by method (pgs 5-7)Invention described by method (pgs 5-7)

Reference to additional embodiments Reference to additional embodiments (broadens coverage).(broadens coverage).

Method and system claims included Method and system claims included (further opportunity to define invention).(further opportunity to define invention).

www.USPTO.GOVwww.USPTO.GOV

(to file your provisional (to file your provisional application)application)

PROVISIONAL PATENT PROVISIONAL PATENT APPLICATION WORKSHIPAPPLICATION WORKSHIP

Attach your provisional application (saved as a Attach your provisional application (saved as a pdf with a Title)pdf with a Title)Use the scroll down menu to select the Use the scroll down menu to select the provisional application category.provisional application category.Attach your completed coversheet.Attach your completed coversheet.Use scroll down menu to label it.Use scroll down menu to label it.Validate Validate Compute fee ($65)Compute fee ($65)Click on Submit Click on Submit Pay fee with credit card and print out receipt.Pay fee with credit card and print out receipt.

PROVISIONAL APPLICATION WORKSHOP PENDING BIO-MEDICAL CASES Law Office of David McEwing PC .

Documents

patent application workshop

enablement slide

b slide

property slide

d slide

followon utility application

o blog slide

executive summary slide