A utility patent has three main parts: drawings, a disclosure, and claims. The drawings and disclosure together comprise a specification. Drawings depict the innovation for which claims are being made.
A design patent consists of the same three parts, but simplified, focused on the drawings. The drawings have a number of views, completely showing the design. The disclosure is usually merely a listing of the drawings, with a single claim that refers back to the design portrayed in the drawings.
A disclosure outlines a problem that has previously defied solution, and explains the solution. Specifically, a disclosure describes the drawings. Every major aspect of invention in a patent application is supposed to be illustrated. The text accompanies the drawings as explanation.
Oddly, the problem-solution formula used in the past for writing patents became practically taboo in the wake of KSR, because it serves as a roadmap for an examiner to piece together prior art. That kind of hindsight reasoning used to be impermissible, but not anymore.
A patent claim is a statement of a novel and useful process, apparatus, machine, or composition of matter. The value of a patent is in its granted claims. In other words, the claims are the business end of a patent.
A requisite for a patent is that the claimed invention has been "reduced to practice." That means someone skilled in the patented technology would be able to read a patent specification and know how to replicate the invention without "undue experimentation." That, in essence, is what a patent application is: a nuts-and-bolts guide to implementing a claimed invention. Here's how we get there.
The patent process begins with input and interview. You tell us the idea. Preferably you have a write-up, the more detailed the better. Drawings too.
We rough-draft sample claims. You review them. Then we go hunting.
Is your idea novel? Really? Let's find out, otherwise our efforts, and your money, are for naught.
Knowing prior art can inspire further innovation, extending the scope of possible claims, even leading to further invention.
Here's why a prior art search is mandatory prior to filing an application:
1. File claims knowingly over the prior art: not blind to the prior art, not subject to examiner action regarding prior art. If you donít know the prior art, you cannot possibly draft novel claims, know the appropriate claim scope, or reasonably hope that the drafted claims are valid.
2. Proactively explain the prior art to the examiner, so that the examiner grants claims rather than an office action. Increase the odds that your claims are granted straight-away, without frivolous action and the expense of a tedious reply to office action.
3. Knowing the prior art facilitates enforcement after the patent is granted. Examiners often fail to find the best prior art. Knowing that the best prior art has likely been overcome during examination strengthens a patent, and lessens the potential for later re-examination.
So we perform a patentability search. That typically costs $600 or less, depending on the technology area.
Drafting a patent application is an interactive process, getting your input as we progress. We appreciate you being hands-on in the process.
We often begin with the drawings, then draft the disclosure around the drawings. It's best to think of a patent application as an explanation of the drawings, though that's truer for certain technologies than others.
The claims emerge from the specification. While we have a sense of the claims throughout the process, the claims are formally drafted at the conclusion of application preparation.
After the claims are drafted, and we are all happy campers on the invention grounds, we file the application. But before that happens, for complex inventions, we consider claims strategy.
The USPTO has a serious pendency problem. It can take five years to get a utility patent.
To counteract the problem, the patent office introduced a a program for accelerating the examination process: Accelerated Examination (AE). AE has the goal of granting a patent within a year of filing. But Accelerated Examination is appropriate only in certain circumstances. AE involves significant additional prior art search up front, as well as submitting additional documents detailing patentability over the closest prior art, and citing specification support for claimed subject matter.
Having extensive prior art search and litigation experience, Platinum Patents excels in preparing AE applications. We can advise whether AE is right for you.
The best patent applications contain several inventions. If so, you don't just want to file a patent application, you want to file the first of a family of patents, maximizing coverage and windfall potential. So the question becomes, which invention comes first, and how broadly should the first invention be claimed.
A common strategy is to file relatively narrow claims on the first application, then later file a continuation with broader claims. The logic is that the first patent is more easily granted. If you then get the same examiner, chances are improved that he will more readily grant broader claims on the second round.
If you want a home run first round, that's another take...
After filing, claims may be proactively amended, but prosecution really begins with a non-final office action, the examiner rejecting the claims over prior art, or the way the claims were drafted.
Waiting for examination has become interminable, as the patent office has a serious pendency problem. The entire process commonly takes three years or more.
Typically, two strikes and you are out: a first non-final action, where claims may be amended to overcome the rejection, and a second final action. After a final action, an applicant either appeals, if the rejection is meritless, or files a request for continued examination (RCE), to get a couple more bites at the apple.
The current political atmosphere in the PTO is "reject, reject, reject." Examination on the merits is nowadays rough sledding, but patents are still being granted. The best advantage to grant is clarity: an easy-to-appreciate specification, and readable claims readily construed.
That's where Platinum Patents shines. That, and having inside information on rigging the sails for allowance. See our About page for more.
A patent is allowed, and issues. After that, Patent Hawk can help you monetize your patent, to sale or licensing, but most likely, through litigation.
There's another Platinum Patents advantage. We are a full-service patent consultancy, experienced cradle-to-grave in patents. Less expensive than law firms, but no less experienced.
© 2012 Patent Hawk LLC