Intro to u.s. povisonal patent application writing rev4

Provisional Patent Applica0ons

Inventors Forum April 13, 2012 George White

Write Your Own Provisional Applica0on?

Con: “Patent Laws are confusing and complicated, you will screw it up and get a false sense of security from filing it.”

Pro: “What the hell – its beNer than nothing.”

SOLUTION – Learn as much as you can stomach

Provisional Patent Applica0on

What? When?

Why?

How?

What is It?

It is not a kind of a patent !

It is a kind of applica0on

Only granted patents give the right to exclude others

Why?

Less formal requirements than a regular applica0on.

Reasonable chance that what you write will not be held against you.

Danger -‐ you don’t actually cover the important part – but think you did

Actual Example Drawing Sheet from an inventor’s PPA

When is it Looked at? Possibly During Prosecu0on of NPA

Definitely During Li0ga0on

PPA NPA Search and Examina0on

1/2012 1/2013

1/2015

NPA covers A, B and C. Search turns up: 1. 1/1999 Feature A 2. 1/2014 Feature B 3. 6/2012 Feature C

1 -‐ A 2 -‐ C 3 -‐ B

What does a PPA Need?

What do You Need in a PPA?

1.  Iden0fy the cool part 2.  Draw pictures – include the cool part 3.  Describe the cool part and how it works

and how all the parts relate to each other.

4.  Send it in properly

What do You Need for a PPA to be useful ?

By law: 1.  A wriNen descrip0on, with drawings as

needed.

2.  The document as a whole teaching someone in the field how to make and use the WARN-‐inven0on-‐WARN.

3.  The best way you think (now) it is to make or use it.

Tonight’s actual Topic How to write it

a. Understand it yourself

b. Come up a few candidates for the “cool part”

c. Write and draw a descrip0on of one specific version

d. Explain possible varia0ons of that version

e. Write and draw a descrip0on of a 2nd specific version

f.  Explain possible varia0ons of the 2nd version

g. And so on

What is the cool part?

Not the overall benefit, the structures that allow it to have that benefit.

“Only version that is hands free” – no

“Achieve hands free opera0on by using a suc0on cup” -‐ yes

Need to have knowledge as to what has been done already

Hands-‐free Paper towel dispenser

1938 You only touch the sheet you are going to pull out.


Foot pedal


It’s a sofware problem


BeNer analysis of the signal from the sensor to be sure it is a person


It is a motor control problem

Broad or Specific?

Both

Broad in thinking about mul0ple specific versions

The thing signg in front of you -‐

-‐ is not your inven0on, it is an embodiment of a set of concepts that are broader than any specific embodiment.

Figure out what they are and generate addi0onal embodiments, including lame ones if needed.

Drafing Sugges0ons

Explain it to someone else only using the drawings you made as visual aids. Helps iden0fy need for more or different drawings.

For each version first describe the en0re structure and then explain the opera0on aferwards.

Drafing Sugges0ons

Give every component a par0cular name and s0ck to that name in the descrip0on.

Each component should really also have a reference number. Make a parts list.

Drafing Sugges0ons

Do not “disparage” previous work of yours or others.

Please do not use “patentese”.

Prior Art means “something OK to use against me”

Calling something “Prior Art” can make it “admiNed prior art” when it otherwise would not be.

Stay very far away from “means”. I know what means means but you probably don’t. Also many US District Court Judges do not appear to either.

Member, structure, element, mechanism all mean approximately “thingy”

Avoid Patent Profanity

It may not bite you in a provisional but professionals are busy making lists of words like: cri0cal, important, WARN-‐inven0on-‐WARN, always, must, only and requires and segng up their edi0ng programs to flag them.

SubmiNal

Must use a Provisional Cover sheet.

Make sure your address is correct.

If by mail – Use USPS Express Mail. If possible follow the USPTO procedures

Can be uploaded. Google USPTO EFS-‐Web.

Provisional Cover Sheet

A Year is Very Short

Good Luck

George White [email protected]

Intro to u.s. povisonal patent application writing rev4

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