1. SCIENTIFIC & TECHNICAL WRITING Patents
Prof. R.L. Boxman
Tel Aviv University
R.L. Boxman, 9/2000, 2/2016

2. PATENT APPLICATIONS DEFINITION
A patent, or ‘letters patent’ is a legal document issued by a government granting the holder the right to prevent others from practicing the specified invention within its jurisdiction.
THE ‘SOCIAL CONTRACT’
‘Disclosure’ of a new invention to society, in exchange for a monopoly to that invention for a specified period
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3. A patent does not Give the holder any monetary reward per se
The patent holder profits only by some other activity such as selling products using the invention, licensing the invention to others who pay license fees or royalties, etc.
Most patents are not profitable
Give the holder the right to practice the said invention
it may infringe on previous patents!
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4. A patent does not continued
Provide enforcement against patent infringement
conscientious parties search the patent literature to avoid litigation,
to prevent infringement the patent holder must first discover each infringement, and then take legal steps (threats, law suits, etc.) to stop the infringement and/or recover damages)
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5. Why apply for a patent?
To prevent others from copying your invention, thus limiting your profits
Economic sense only if you can profit from your invention
To convince investors of the seriousness of your invention, and their potential to profit
The psychological value is often higher than the real value
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6. Requirements for a patent
Invention:
Product (may include a living organism)
Process (may include an algorithm embodied in a computer program)
Reduced to practice
Not necessary to actually build a prototype
But sufficient information must be disclosed in the application so that one normally skilled in the art could practice the invention
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7. Requirements for a patent continued
Novel
i.e. new
‘Patentable advance’ over previous art
Not:
Publicly reduced to practice
Published
Offered for sale
Not obvious
to someone normally skilled in the art
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8. Requirements for a patent continued
Useful
Not usually problem
Paper weights, fertilizers, and weed killers
Effective
If the invention doesn’t work, patent not valid (but who cares?)
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9. Writing a patent application
Usually written by a patent attorney
Most have a 1st degree in a technical field and then a law degree
May be written and filed by the inventor, without a patent attorney
But should have knowledge and experience with patents
Purpose of this lecture:
Usually the patent attorney relies on written and oral information provided by the inventor.
Familiarity with the process, application structure and the general requirements of a patent will make the interchange more efficient
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10. Patent Jargon Jargon Example Meaning Said
Coatings are deposited on a substrate having a first surface and a second surface. Said first surface of said substrate is exposed to said plasma jet.
 the, but more precisely indicates that the following object has already been mentioned previously.
Instant invention
According to one aspect of the instant invention, improved mechanical performance is obtained.
The invention described in the present patent application.
Comprising
….comprising the steps of:
Including (does not exclude additional items)
Aspects
Various aspects of the invention
A particular part or feature of something
Embodiment
In one embodiment of the invention, the fill is comprised of Ar and a small amount of Hg, as in prior art fluorescent lamps. In another preferred embodiment, the fill is air at reduced pressure.
A way of carrying out the invention.
Preferred
In a preferred embodiment of the invention, microwave generator (10) is a conventional magnetron,
Specific (not necessarily preferable)
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11. Patent application organization
Preliminary information
Title
Inventor
Citations
Abstract
Specifications
The ‘body’ of the patent application
Claims
Parallel to the conclusions of a technical report but having a precise legal formulation
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12. Preliminary Information
Title
Usually general and vague
“System and method for depositing coatings”
Inventors
Legal requirement – all those, and only those, that reduced the invention to practice.
Assignee
Ownership of the patent may be assigned by the inventors to a third party at the time of registration.
Most employees as part of their agreement with their employers are required to assign their inventions to their employers.
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13. Preliminary Information
Citations
Parallel to references in a research report
previous inventions (usually from other patents) upon which the proposed invention improves
Abstract
Brief description of the invention.
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14. Specifications The “body” of the patent application must contain:
A sufficiently detailed description of the invention that one normally skilled in the art could practice the invention.
Sufficient information to convince the patent examiner (parallel to the referee of a research report) that the proposed invention fulfills all the requirements for a patent.
It typically contains the elements detailed on the following slides:
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15. Background
Parallel to Stages I-III of the introduction to a research report
Stage I – general information describing the field of the invention
Stage II – description of those previous inventions closest to the new invention (all of which are listed in the citations)
Stage III – the ‘gap’. Description of the need for improvement in the previous inventions. (new areas of applications, limited performance, high cost, safety problems, etc.)
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16. Statement of Purpose
Parallel to stage IV of the introduction to a research report
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17. Brief Description of the Invention
Short paragraph
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18. Brief Description of the Drawings
 One sentence for each drawing describing its content in very general terms. Example:
Drawing 1 is a left sectional view of the invention.
  The drawings:
Are appended to the application
Must conform to technical requirements stated by the respective patent office
  Each item in the drawing is numbered
Each numbered item must be described in the specifications - later
The same number may be used to refer to the identical part in several drawings
Each number must be unique
Numbers do not need to be consecutive
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19. Detailed description of the invention
   Typically longest section
    Describe each drawing in detail. Define and describe each part numbered in the drawings
    Description should be sufficiently detailed so that one skilled in the art could duplicate the invention
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20. Embodiments and Examples
Application must contain one embodiment which is reduced to practice
Other embodiments and examples strengthen the patent
Examples should be given which span any range of parameters which are part of the claims
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21. Claims Most critical part of the patent application
 Defines what you wish to exclude others from practicing
 Claims are numbered sequentially, beginning with 1
 Each claim is a single sentence, which is independent of all other parts of the document
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22. Claims continued
 A claim which makes absolutely no reference to any other claim is an independent claim
 A claim which refers to another claim is a dependent claim
should not refer to more than one other claim
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23. Claims continued
 Each patent must include at least one independent claim
The independent claim is a precise definition of the invention
Must include a patentable advance over the previous art
Its language must be such that existing inventions are excluded
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24. Claims continued Usual strategy - onion philosophy:
Write the independent claims as broad as possible
Write numerous dependent claims covering every possible variation and refinement of the broad claim that might be profitable, or serve as camouflage
One or more of the dependent claims should cover the embodiments of the invention as you plan to practice it
 If it is not defined in the claims, it is not protected by the patent, no matter how detailed its description in the specifications!
04 Feb 2016