Global Innovation Management Workout on Writing a Patent

1. Global Innovation Management Workout on Writing a Patent

2. What is Patentable • 3 sections of the patent law are universally applied in patent granting • 35 US Code § 101 addresses whether the claimed invention covers a subject that is eligible for a patent, and also requires demonstration that the claimed invention is ‘useful’ for some purpose. • 35 US Code § 102 sets forth the doctrine of anticipation by requiring novelty of invention. It requires the applicant to demonstrate that the invention is new, and is not ‘anticipated’ from ‘prior art’ (i.e. prior patents or industry practice). • 35 US Code § 103 states that, assuming § 101 and § 102 have been satisfied, the claimed invention would not have been obvious to a person having ‘ordinary skill in the art’.

3. Utility patent • A utility patent application will consist of the following sections: • specification; • title; • patent cross-reference; • background; • brief description; • drawings; • description; • claims; • abstract.

4. Claims • Claims: The claims define the scope of the protection of the patent. Whether a patent will be granted is determined, in large measure, by the scope of the claims. There are two categories of claims: • 1. independent claims, which stand on their own, and • 2. dependent claims, which depend on one or more independent claims providing insurance in case those claims are invalidated.

5. Claims use precise language • Claims use precise language, and particular words have specific legal meanings deter- mined by prior court decisions (e.g. the word ‘comprises’, when used in the claims of a US patent, means ‘consists at least of’ but the word ‘consists’ means ‘consists only of’, leading to a different scope of protection). Claims need to be specific, simply because the fewer the specifications in a claim, the more likely it is that the claim will have been anticipated by some prior art (i.e. another invention already patented) and be rejected during exami- nation or found to be invalid at a later time for lack of novelty or obviousness.

6. Title & Cross-reference • Title of invention: A title may have up to 500 characters, but generally should be as short, descriptive and specific as possible. • Cross-reference to related applications: Google Patent Search, or findings from other search for ‘prior art’, are listed and summarized here. This in particular is important in arguing that the current invention has not been ‘anticipated’ by prior inventions, and is truly novel.

7. Overview • Brief summary of the invention: This section should present the substance or general idea of the claimed invention; for e • Drawings: Drawings follow specific guidelines and are numbered with corresponding

8. Background • Background of the invention: This includes a description of the field of endeavor to which the invention pertains and of the US patent classification definitions or the subject matter of the invention. It should contain a description of specific documents related to the invention, and references to specific problems involved in the prior art.

9. Specification • Specification: The specification is a written description of the invention and of the man- ner and process of making and using the invention that concludes with the claims to the invention.

10. Detailed description • Detailed description of the invention • the invention must be explained along with the process of making and using it, and should be distinguished from other inventions or standard industry practice. It should also describe the complementary parts that are necessary to completely understand the invention. The description should be suf- ficient so that any ‘person of ordinary skill in the pertinent art, science, or area’ could make and use the invention without extensive experimentation.