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

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

Provisional application Purpose –Establish filing date –One year to claim priority – automatically abandoned –Does not affect term of non-provisional patent

Provisional application 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

Provisional application Requirements for filing date –Specification (in English) –Drawings

Provisional application 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

Provisional application Advantages –Short on time –Limited financial resources Disadvantages –Often less than complete –Delays prosecution (even longer)

Non-provisional application 35 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)

Elements of Application 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.

Elements of Application 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

Elements of Application 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

Elements of Application Brief Description of the Drawings –Mandatory –Description of the drawings Flowcharts Diagrams or schematics Perspective views Exploded views Side views Partial cutaways

Elements of Application 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

Elements of Application 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

Elements of Application 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”

Elements of Application 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

Elements of Application Drawings –Patent draftsperson Model or prototype Number of views Thickness of lines –Views Perspective Front, Top, Bottom, Side Sectional Exploded Flowcharts Chemical structures

Elements of Application Drawings –Reference numerals –Lead lines –National Standards (fluids, flowcharts, electrical symbols, etc) for structure

Elements of Application Claims –Legal scope of the invention –Formal language and rules

Elements of Application 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?

Title Classification Inventors Assignee

Title Background Field of Invention Sample Specification