Introduction, When to File and Where to Prepare the Application

Chapter 1 Introduction, When to File and Where to Prepare the Application 1:1 Need for This Book 1:2 How to Use This Book 1:3 Organization of This Book 1:4 Terminology Used in This Book 1:5 How Quickly Should the Application Be Filed? 1:5.1 Reasons for Filing Promptly 1:5.2 Reasons for Not Filing Promptly 1:5.3 Techniques for Speeding Up the Filing Process 1:6 Where to Prepare the Application 1:7 Conclusion 1:1 Need for This Book There are few tasks more difficult than that of preparing a patent application for an important invention. The U.S. Supreme Court, more than a century ago, wrote that a U.S. patent application is among the most difficult to draft of all legal documents, saying: The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy; and, in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the 1 1

1:1 HOW TO WRITE A PATENT APPLICATION patentee, and err either in claiming that which the patentee had not in fact invented, or in omitting some element which was a valuable or essential part of his actual invention. 1 To prepare a perfect patent application the practitioner must be allknowing in the relevant technology, in patent law, and be able to predict future developments. A perfect patent application needs to realize many objectives, including: 1. Describing the invention so that those of ordinary skill in the art to which the invention pertains can understand it. 2. Teaching how to practice the invention. 3. Explaining the invention in such terms that a judge and a jury will be impressed by the value of the invention. 4. Claiming the invention sufficiently broadly so that the most talented experts in the field cannot design around the claims for the next twenty years, even when millions of dollars in sales and royalties are at stake. 5. Claiming the invention sufficiently narrowly so that all prior art is not encompassed by the claims. This includes the prior art already known to the patent practitioner and unknown prior art. The unknown prior art can include existing documents not found by a novelty search and incubating prior art, such as pending U.S. patent applications and inventions by others under 35 U.S.C. 102(g). 6. Claiming the invention so that those elements that render the invention nonobvious are set forth in the claims. 7. Claiming the invention so that a patent will be issued by the Patent Office, and its validity will be sustained by the courts, even though the Patent Office will give the claim language its broadest reasonable interpretation and the courts will not. 2 8. Including only truthful and accurate statements in the application, so that none of the statements could possibly mislead the examiner, and the inventors will not be embarrassed by cross-examination during litigation. 1. Topliff v. Topliff, 145 U.S. 156, 171 (1892); see also Irving Kayton & Paul L. Gardner, Crafting and Drafting Winning Patents: An Overview, 85 J. PAT. & TRADEMARK OFF. SOC Y 473, 473 81 (1892 was child s play compared to the present). 2. In re Morris, 127 F.3d 1048, 44 U.S.P.Q.2d 1023 (Fed. Cir. 1997). 1 2

Introduction, When to File and Where to Prepare the Application 1:1 9. Describing all features of the invention that may be needed to obtain allowance of the claims, even when the inventor does not appreciate the importance of those features. 10. Describing the best mode contemplated by the inventor of carrying out the invention. 11. Preparing an application suitable as a vehicle for foreign filing. 12. Last, but not least, having the application issue as a valid patent. It is no wonder that skilled patent attorneys and patent agents are so much in demand. 3 It is no wonder that the ability to write a good application is considered by many practitioners to be an art. How is this art taught? At present, by a combination of the mentor system and osmosis. It is necessary to learn the hard way, by writing applications. Typically, a new attorney or agent is handed a stack of prior art and an invention disclosure, and starts writing. Many law schools provide a course in patent law. The purpose of most of these courses is not to teach how to write a patent application, but rather to understand the substantive law of patents. It is, of course, necessary to know patent law to write a good patent application. The requirements of 35 U.S.C. 101, 102, 103, and 112 need to be fully appreciated in order to write a good specification. However, knowledge of the substantive law of patents is not the same as knowing how to write a competent patent application. In fact, there are many excellent patent lawyers who litigate patent issues with great skill. Many of those lawyers, if pressed into service to write patent applications, would be lost. It typically takes at least six months, and usually about two years, before a practitioner can write a competent application. One purpose of this book is to substantially reduce that amount of time. It is hoped that a new practitioner, through use of this book, and the assistance of a skilled practitioner, will be able to prepare a competent patent application on the second or third try. However, this book is not limited to use by the new practitioner. If the experience of all of the practitioners who contributed to this book is considered, this book reflects the wisdom of over 100 person-years of drafting patent applications. The helpful suggestions and tips of the seasoned practitioners who contributed to this book will be useful for anyone practicing in the field. 3. According to the Patent Office, the generic term for patent attorneys and patent agents is patent practitioner. 37 C.F.R. 1.32(a). 1 3

1:2 How to Use This Book Practising Law Institute 1:2 HOW TO WRITE A PATENT APPLICATION This book should not be used alone to learn how to write a patent application. No one can expect to read this book and be able to sit down and write a satisfactory patent application. The guidance, assistance, and tutelage of a skilled practitioner will be needed. Writing a patent application is similar to learning how to play the piano. The aspiring pianist can read book after book on how to play the piano, but reading alone will not make that pianist competent. The aspiring pianist needs to actually play the piano and benefit from the comments, suggestions, and teachings of a skilled mentor. Even the most experienced and skilled practitioners bounce ideas off other patent attorneys and agents, particularly when it comes to writing the claims of a patent application. After this book is reviewed, the aspiring practitioner can sit down and try to write a patent application. As discussed below, start with the claims. When problems are incurred, refer to the claims chapter in the book, and if problems occur with other portions of the application, refer to the appropriate portion of the book. Inevitably, some people will never be able to write a high-quality patent application, no matter how hard they try. To a large extent, the ability to write good claims and clearly and succinctly describe the invention is an art. Just as some people, including the author of this book, will never be competent at painting a picture, some people, no matter how hard they try, will not be competent at writing a patent application. A warning must be included in this book for the do-it-yourselfers. Inevitably, some inventor will get a copy of this book and attempt to write his or her own patent application. A word of warning to those people: do not file that application until it has at least been reviewed by a skilled practitioner. It is extremely unlikely that a do-it-yourselfer can write a reasonably good patent application on his or her own, just based on the teachings of this book. It has been the experience of this author that even attorneys with advanced degrees in engineering who have graduated at the top of their class in law school require at least six months of intensive training to be able to write a competent patent application. This author is no exception to that rule. Therefore, Mr. or Ms. Do-It-Yourselfer, if your invention is worth filing a patent application, it is worth hiring a skilled practitioner to make certain that the application adequately claims the invention and meets the statutory requirements for a patent application. A poorly written and inadequate patent application will provide a false sense of security and in the long run probably cost much more money in prosecution costs than if a skilled practitioner were engaged up front. 1 4

Introduction, When to File and Where to Prepare the Application 1:4 1:3 Organization of This Book This book is organized logically to follow the steps recommended for preparing a patent application. First, in chapter 2, the various parts of a patent application are described, including the formal papers, drawings, specification, information disclosure statement, and a checklist for verifying the contents of the application. Chapter 3 describes how to file patent applications using the Patent Office s electronic filing system, and why this method is preferable. Chapter 4 describes working with the most important person, namely the inventor. This chapter discusses how to obtain the information needed to prepare a patent application from the inventor. Chapter 5 discusses novelty searches, which are generally conducted before preparing a patent application. The novelty search forms an integral part of the application process, and its advantages and disadvantages are discussed. The next three chapters, chapters 6, 8, and 9, present the meat of this book, namely preparing the drawings, claims, and specification, respectively. Typically, an information disclosure statement is filed with an application, and preparation of that document is described in chapter 10. Much of the discussion of the application preparation process is with regard to applications for utility patents for mechanical inventions, since most patent practitioners at some time need to write a mechanical application. However, applications for inventions other than mechanical ones have unique features that should be discussed separately. Thus, chapters 11, 12, and 13 are directed to different types of applications, namely design patent applications (chapter 11), provisional patent applications (chapter 12), and plant patent applications (chapter 13). Moreover, applications directed to different technologies have their own special features and requirements. Thus, chapters 14 through 17 are directed to special technological fields, namely electrical inventions (chapter 14), computer software (chapter 15), chemical inventions (chapter 16), and biotechnology (chapter 17). Since many patent applications are filed overseas, much money can be saved and better foreign patents can be obtained if the original U.S. application is prepared with a view to eventual foreign filing. Chapter 18 provides many hints and suggestions for writing an application that will serve as a good vehicle for obtaining foreign patents. Procedures are available for correcting defects in patents. One of these procedures, a reissue application, is discussed in chapter 19. 1:4 Terminology Used in This Book Certain terminology used in this book needs to be explained. First, the term patent practitioner is used to refer to both patent attorneys 1 5

1:5 HOW TO WRITE A PATENT APPLICATION and patent agents. Occasionally, the term patent attorney may have been used rather than the more generic term patent practitioner. Unless specifically indicated otherwise by the context, when the term patent attorney is used, it is meant to include patent agents. The term patent application is used to refer to all papers generally included in the initial filing with the Patent Office. This includes the drawings, specification, claims, information disclosure statement, application cover sheet, and formal papers. The formal papers include such papers as the declaration, power of attorney, and assignment (if any). The term specification technically includes all of the parts of the application that satisfy the requirements of 35 U.S.C. 112, including the description of the invention and the claims. 4 The term specification is used both ways in this book; sometimes it includes the claims and sometimes it does not, depending on the context. The Patent Office is officially the Patent and Trademark Office. These two terms are used interchangeably in this book. 1:5 How Quickly Should the Application Be Filed? 1:5.1 Reasons for Filing Promptly It is important to file a patent application as quickly as possible for many reasons, including the following: 1. The United States, joining most of the rest of the world, is a first-to-file country effective March 16, 2013. Accordingly, if two applicants file for the same invention, unless there is derivation by one, the first to file is awarded the U.S. patent. Since the United States is no longer a first-to-invent country, it is extremely important to get as early a filing date as possible. 2. The later the filing date, the more potential there is for prior art to be available to be cited against the application. In fastdeveloping technologies, patents can issue and technical papers can be published with alarming speed. Even a oneday delay in filing can result in the development of new art. 3. Effective March 16, 2013, there is a one-year grace period under 35 U.S.C. 102(d) for the inventor s own disclosures as provided by the America Invents Act. However, the scope of the grace period remains to be determined, and thus it is dangerous to rely upon it. For example, it remains to be decided whether or not obvious variants of the inventor s own disclosure are patentable or are barred. Moreover, it is 4. See 37 C.F.R. 1.71 1.75. 1 6

Introduction, When to File and Where to Prepare the Application 1:5.2 only effective for one year, and thus delay beyond one year takes the inventor outside this limited grace period. 4. Most of the world, including such important countries as Japan and Germany, has an absolute novelty system. Under that system, any prior art is available as a reference, and there is no one-year grace period as is available in the United States. Thus, a publication by the inventor one day before the U.S. filing date will not affect U.S. patent rights because of the one-year grace period under 35 U.S.C. 102(b). However, the same publication may prevent foreign patents from issuing. Thus, by promptly filing the U.S. application, foreign priority rights can be saved. 5. When filing a continuation, divisional, or continuation-inpart application, it is safest to file that application at least one day before issuance or abandonment of a parent patent. In a controversial decision, a district court has interpreted 35 U.S.C. 120 to require the filing before the issuance or abandonment of a parent application. 5 Accordingly, it can be very important to file an application promptly. Section 1:5.3 presents techniques for speeding up the filing process. 1:5.2 Reasons for Not Filing Promptly There are some reasons for a delay in filing. It is unusual that these reasons will overcome the aforementioned reasons for filing promptly. However, they do need to be considered in timing the filing. Among the reasons that may make a delay in filing desirable are the following: 1. If the application is to be filed overseas, then the application most likely will be published eighteen months from the filing date, with resultant loss of trade secret protection for any trade secrets in the application. 6 Thus, the earlier the filing date, the earlier the loss of trade secret protection. 2. Filing a U.S. application triggers the start of the one-year priority period available for filing overseas. This will accelerate the expenses associated with foreign filing. 5. Immersion Corp. v. HTC Corp., No. 12-259-RGA (D. Del. Feb. 11, 2015), http://law.justia.com/cases/federal/district-courts/delaware/dedce/1: 2012cv00259/48234/333/. 6. See 35 U.S.C. 122(c). 1 7

1:5.3 HOW TO WRITE A PATENT APPLICATION 3. The author tells clients that any patent application is a balance of quality, cost, and speed, and the client gets to pick two out of three. Since few practitioners are willing to sacrifice quality, the client often may have to pay extra for accelerated filing. 1:5.3 Techniques for Speeding Up the Filing Process There are many techniques available for speeding up the process of filing an application. Some of these are as follows: 1. File the inventor s original disclosure document or draft scientific paper as a patent application by adding an abstract and a single claim. Although such an application would be nowhere near the quality of an application prepared using the procedures of this book, assuming that the disclosure by the inventor satisfies the basic requirements of 35 U.S.C. 112, at least a filing date will be obtained. Moreover, even if the application does not satisfy the U.S. disclosure requirements of 35 U.S.C. 112, it may be sufficient for many foreign countries. This basic application can then be converted into a quality application by filing a continuation-inpart application as promptly as possible. Clearly this approach gets an early filing date. However, one disadvantage is the increased cost of filing two applications. Another disadvantage is that the one-year priority date for filing in foreign countries begins to run on the date of filing of the first application, which means that the decision of whether to file a foreign application needs to be made earlier, and costs associated with filing foreign applications are incurred earlier. 2. During the initial meeting with the inventor, draft at least the broadest claim, and preferably some of the dependent claims. As discussed below, preparation of the claims is the most critical and difficult part of an application. It is efficient and effective to prepare the claims when the inventor is readily available to provide instant feedback and while the patent practitioner s mind is freshly acquainted with the merits and novelty of the invention. 3. Forego a novelty search, or have the novelty search done in parallel with drafting the application. As discussed in chapter 5, novelty searches are often ordered before preparing a patent application. However, when time is of the essence, it may be 1 8

Introduction, When to File and Where to Prepare the Application 1:5.3 necessary to forego the novelty search, or conduct it in parallel with preparation of the application. When the novelty search is conducted while the application is being prepared, once the search results are available, the application can be polished and the claims modified as required, based on the search results. 4. Order the drawings as soon as possible. Preparation of the drawings can be the longest lead-time item due to the schedule of draftsmen. Get the drawings on order promptly. 5. Do not wait for the drawings to prepare the application. Many practitioners wait until the drawings are available before beginning the application. An advantage of this procedure is that the reference numbers can be placed on the drawings as the specification is prepared. However, when it is important to file promptly, rough sketches of the invention can serve the same purpose for preparation of the application. Although some time is lost when the reference numbers are added to the draftsman s drawings, that lost time can be sacrificed when filing early is important. 6. Use the inventor s drawings or drawings prepared by the patent practitioner for filing. The inventor may have some drawings of the invention, or the patent practitioner may be a sufficiently skilled draftsman to prepare rough sketches. If those sketches are sufficient for filing, they can be used for that purpose when it is important to file early. Formal drawings can be prepared later by a skilled draftsman. 7. File the application without the formal papers, including the declaration. A week or more can be lost while the inventor reviews the application and signs the declaration and other papers. It is possible to file without the declaration and formal papers. 7 A disadvantage is that the Patent Office charges a surcharge for filing the application piecemeal. 8 Another possible disadvantage is that the inventor or inventors may have problems with the application and not like it. If the claims are not satisfactory, it may become necessary to file a preliminary amendment under 37 C.F.R. 1.115, which adds to the expense of filing the application. If something is incomplete or inaccurate in the specification, then it may become necessary to file a continuation-in-part application. In the latter 7. 37 C.F.R. 1.53. 8. 37 C.F.R. 1.1(e) (the surcharge fee is $65 for small entity applicants). 1 9

1:6 HOW TO WRITE A PATENT APPLICATION instance, the original filing date may be lost, and thus the fees incurred for filing the first application would have been for naught. 1:6 Where to Prepare the Application To achieve cost savings, some practitioners have been sending invention disclosures offshore for preparation of patent applications. When doing so, consider the following potential disadvantages: 1. Quality standards offshore may not equal the quality standards of competent U.S. practitioners. 2. Trade secret protection in foreign countries might not be the same as in the United States. What are the remedies if the offshore preparer steals the client s invention? 3. Does the offshore preparer have any conflicts? Are they preparing patent applications for the client s competitor? 4. Is sending the disclosure offshore a violation of U.S. law? The Patent Office has noted that foreign filing licenses are limited to filing foreign patent applications, which does not include preparation of U.S. patent applications. The Patent Office recommends that applicants who are considering exporting subject matter abroad for the preparation of a patent application to be filed in the United States contact the Bureau of Industry and Security at the Department of Commerce for appropriate clearances. The Bureau of Industry and Security has promulgated Export Administration Regulations governing exports of dual-use commodities, software, and technology, including technical data. 9 For ethical reasons, it is recommended that the client approve any such outsourcing. 1:7 Conclusion Once a decision has been made to prepare and file a patent application, it is necessary to learn how to do so. The remainder of this book discusses that exact topic. 9. See Scope of Foreign Filing Licenses, 73 Fed. Reg. 42,781 (July 23, 2008). 1 10