Patent It Yourself - PDF Archive

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.