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180 | PATENT IT YOURSELF Inventor’s Commandment 10 In recent years, the Patent Court began limiting the scope of some patents by relying upon “limiting statements” that the patentees made in their specifications and remarks to the PTO. For that reason, your patent application should not contain any statements that the courts could possibly use against you to limit the claims of your invention—that is, do not indicate any field of the invention, do not mention any problems with the prior art that are not already known, or that your invention doesn’t solve, do not indicate that any embodiment is preferred, do not include any specific advantage unless at least one embodiment has this advantage, indicate that “one or more aspects” have the advantages, do not include any objects, make the summary and abstract as broad and nonspecific as possible, do not refer to “the invention” but only to “this embodiment,” do not state that any part is essential, and include as many embodiments as possible. This and the next two chapters are the heart of this book: They cover the writing and transmittal of your patent application to the Patent and Trademark Office (PTO). This chapter provides an overview of the patent application drafting process and contains specific instructions on drafting a specification and preliminary drawings. Chapter 9 explains how to draft patent claims (sentence fragments that delineate the precise scope of the patent being sought). Chapter 10 explains how to “final” the application as well as the precise steps involved in transmitting it to the PTO. In addition, Chapter 10 covers design patent applications. Because these subjects can be difficult to understand in the abstract, I use concrete examples throughout. And, at the end of this chapter, you’ll find the specification (including the abstract) and formal drawings of a sample patent application. Similarly, at the end of Chapter 9, you’ll find the patent claims of this same application. In Chapter 10, I have provided a completed set of formal papers for a mailed application and full instructions for online filing. Inventor’s Commandment 11 The specification and drawings of your patent application must contain a description of your invention in full, clear, concise, and exact terms so that anyone having ordinary skill in the field will be readily able to make and use it. While a statute requires you to disclose the best mode for carrying out the invention, you should disclose all possible modes (embodiments) without indicating any preference, unless the PTO requires you to do so. Inventor’s Commandment 12 In your patent application, you should “sell” your invention to the examiner or anyone else who may read the application. State all the disadvantages of the prior art factually and the advantages of one or more embodiments (not the invention per se) in a nonlimiting way. New Patent Revision Pending As this edition goes to press (winter 2010) a complete revision of the patent statutes is pending. Other revision bills have been introduced in previous Congresses but were derailed because of protests by independent inventors, Nobel laureates, friends of the patent system, concerned legislators, labor unions, “green” advocates, and the drug companies, who prefer strong patents. The current bill adds a new wrinkle in that it would provide a three-tier examination system (quick examination for a high fee, regular examination for a moderate fee, and deferral of examination until a fee is paid). Complete information about the current bill and the arguments against its provisions can be found on the Professional Inventors’ Alliance site (www.PIAUSA.org). While the proposed bill has some provisions that would help independent inventors, it also has some provisions I consider harmful. I urge you to visit the above site and call or write your congressperson and senators and urge them to oppose the harmful parts of this bill. The PIA site, above, will post updated information. You can also find current information on these issues at Nolo’s website at www.nolo.com/patentityourself and at my update site, www.PatentItYourselfUpdates.Blogspot.com.
ChaPter 8 | How to DRAFT the SPECIFICATION and INITIAL DRAWINGS | 181 Have you filed a Provisional Patent Application (PPA)? As a result of legislation enacted in 1999, you may now convert the PPA to a regular patent application (RPA) even if the PPA did not include any claims. (35 USC § 111.) I don’t recommend converting the PPA to an RPA, because your patent will expire 20 years from the earlier date of your PPA (rather than the later date of your RPA). If you filed a PPA and are ready to file your RPA, I recommend that you file a separate RPA to start the 20-year term from the date of your RPA. To file a separate RPA, follow the instructions in this chapter for preparing an RPA from scratch. You should claim the benefit of the PPA in the RPA. If the one-year anniversary of your PPA falls on a weekend or holiday, you can still get the benefit of the PPA by filing the RPA on the next business day. Remember that your PPA will not be read by any PTO personnel unless you need to rely on its date to predate a reference cited against your claims or in case you’re unfortunate enough to get into an interference (a situation in which two pending patent applications by different applicants claim the same invention). A. Lay Inventors Can Do It! It’s a common myth that a lay inventor won’t be able to prepare a patent application, or prepare it properly. Having worked with many lay inventors I dispute this vigorously. I have found that lay inventors can and have done very good jobs, often better than patent attorneys, by following this book. To prepare a proper patent application, you should be mainly concerned with four basic, essential considerations: 1. The specification (description and operation of your invention and drawings) should be detailed enough so that there will be no doubt that one skilled in the art will be able to make and use the invention after reading it. 2. You should not state anything in the application that a court could use to limit your invention—see Inventor’s Commandment 10 at the beginning of this chapter. 3. The main claims should be as broad as the prior art permits. (More about this in Chapter 9.) 4. You should “sell” your invention by stressing all of its advantages in a nonlimiting way. If you satisfy these four criteria, you’ll be home free. All the other matters are of lesser import and can be fixed if necessary. I’ll show you how to satisfy these main criteria in this and the next chapters. Now let’s get started by looking at what’s contained in a patent application. B. What’s Contained in a Patent Application A regular patent application that is filed by mail or hand delivery to the PTO must contain several more items than one that is filed over the Internet via the PTO’s EFS-Web (Electronic Filing System) and consists of the following parts, which are all sent together to the PTO after assembly in the below order: The items that are omitted when filing by EFS-Web are indicated by the ‡ symbol. 1. A self-addressed receipt postcard (see Chapter 10, Section E5)‡ 2. A check or, if paying by credit card, a completed Form PTO-2038 for the filing fee (see Appendix 4, Fee Schedule)‡ 3. A Transmittal Letter and a Fee Transmittal (Forms 10-2 or PTO/SB/05 and 10-3 or PTO/SB/17)‡ 4. A Non-Publication Request (NPR) (Form 10-7 or PTO/SB/35). Send this if you don’t want the application to be published 18 months after filing (if it’s still pending then), you want to avoid the publication fee, or if you want to keep your invention secret if it doesn’t issue. ‡ 5. A drawing or drawings of the invention—either formal or informal (see Chapter 10, Sections A-D) 6. A specification containing the following sections: a. Title of the Invention (no more than 500 characters) b. Cross-Reference to Related Applications.† This is used to refer to and claim priority of any PPA or prior related applications that you’ve filed. c. Federally Sponsored Research.† This is used to indicate that the invention was made under a government contract and that the government has rights in it. d. Sequence Listing or Program.† This is used to indicate if the application contains a biotech sequence listing or computer program as an appendix or on CD-ROM. e. (1) Background—Prior Art. This section should state any known problems that the invention definitely solves and discuss and criticize the relevant prior art (previous patents and other relevant developments in the same technological areas). (A Field of Invention was previously required but is no longer needed and should not be used because it can be used to bring in prior art that might not otherwise be relevant.) ‡ This part is not needed if filing by Internet (EFS-Web). † If this section is not applicable, it can be omitted or the phrase “not applicable” should follow the heading.
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N O LO ® “The best roll-up-your-
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Acknowledgments My deep thanks go t
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Online Legal Forms Nolo offers a la
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About the Author David Pressman is
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