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TECHNOLOGY & ENGINEERING / Reference
If you are an inventor or product developer, it’s a huge mistake to try to patent an invention yourself—unless you have a clear understanding of good patent writing. The Patent Writer explains in detail how to write effective patent applications. In simple layman’s terms, the authors reveal pertinent patent laws and facts, discuss superior word usage, and explore the methodologies required to ensure that your patents cannot be exploited by others. The Patent Writer takes the mystery out of writing patents.
Andy Gibbs is the founder and CEO of PatentCafe.com, the Internet’s largest intellectual property network.
Michael Neustel is a US Registered Patent Attorney and the creator of popular software products such as PatentWizard.
Table of contents
1. Read Before Writing
It’s About Money
Independent Inventor or Product Developer
Who Writes . . . Who Files?
What You Should Know Before You Start
The Patent Writer Plan
2. Patent Basics
Types of Intellectual Property
Types of Patents
Utility Patent Applications
What Is Patentable?
What Is Not Patentable?
Worldwide Filing Rights
Who Can File?
Patent Costs and Fees
Other Related Costs
3. Patent Objectives
Maximizing Patent Protection
Using a Patent Attorney
Trade Secrets as an Alternative
Roles of a Company’s Departments
4. Provisional Applications
Advantages of Provisional Patent Applications
Disadvantages of Provisional Patent
When NOT to Use a Provisional Patent
Provisional Patent Application Strategies
Writing a Provisional Patent Application
Provisional Patent Application Tactics
5. Patentable Subject Matter
The First Step
Types of Patentable Subject Matter
Fields of Invention
Qualify Patentable Subject Matter
Patentable Subject Matter Checklist
6. Claims—The Heart of a Patent
Claims Define Patentable Subject Matter
Claims Define Scope
Types of Claims
Your Claim Strategy
Using a Patent Attorney
Identifying Your Claims
How to Write Your Claims
Preparing a Claim Statement
7. Wording Basics
Using Broad Terms
Words With Ordinary Meaning
Using a Thesaurus
8. Writing The Application
Anatomy of a Patent
The Standard Format
Title of Invention
Cross-Reference to Related Applications
Statement Regarding Federally Sponsored Research or Development
Background of the Invention
Brief Summary of the Invention
Brief Description of the Drawings
Detailed Description of the Invention
Abstract of the Disclosure
Filing Your Patent Applications
Self-Filing a Provisional Patent Application
Numbering Lettering and Line Types
Preparing Your Drawings
10. Design Patents
Ornamental Versus Functional
11. Special Considerations
Publication of Applications
Patent Cooperation Treaty (PCT)
Phillips v. AWH—Claim Meaning
Legislative Changes to Patent Law
USPTO Examination Regulations
Other USPTO Actions and Acts
About the Authors
Introduction or preface
Get a patent—then make MILLIONS OF DOLLARS!
It’s a grand idea, and many people do end up turning their inventions into riches beyond their dreams. However, not many of those successful inventors got rich by mistake. They followed a shrewd strategy, learned the rules needed to play in the patent world, and religiously followed a proven process of writing strong, defensible patents.
The Patent Writer is about to take you step-by-step through the patent-writing process so you can start writing valuable patent applications immediately. Not just any patent-writing process, though. The Patent Writer leverages the authors’ decades of expertise in patent law, inventing, and corporate product development. Their industry experience spans the packaging, automotive, medical, sporting goods, software, computer hardware, telecommunications, business methods, machine equipment, and many more industry segments.
So, regardless of what industry your invention is destined for, you can be confident that The Patent Writer will intelligently guide you by teaching a logical, easy-to-follow process of writing your own patent that’s clear, focused, and strong.
If your patent is going to survive in the real world, it must be “strong.” That means it must be strategically thought out in advance, then well written using the solid principles we teach throughout The Patent Writer.
The Patent Writer is the most up-to-date power tool currently available for those who want to learn the art of writing a solid, valuable patent. The Patent Writer feeds you no hype, and it doesn’t sugarcoat the tough parts of writing a patent. If followed, it will enormously increase your probability of joining the other top inventors who own the patents that have earned the big money.
In The Patent Writer, you will learn:
• How to effectively write valuable patent applications.
• How to save potentially thousands of dollars writing your own patent application.
• How to write a “provisional” patent application.
• When to use patents, trademarks, copyrights, trade secrets, or other intellectual property protection for your invention.
• The different types of patents and which type you should use.
• Why the careful selection of words to describe your invention can mean the difference between a winner and loser—we’ll show you how much power a single word can have.
• Why budgets are important.
• How and when to invest in the expertise of a patent attorney. Yes—there is a reason that patent attorneys spend upwards of a decade learning their craft.
Why Do You Even Want A Patent?
But even before you run to your computer to start tapping out your patent, you’re going to need to see the “big picture” first. We’re going to take you back a few steps and make sure that you have a realistic understanding of your financial, business, and personal objectives, since they will shape your patent-writing strategy.
You probably want to make money from your patent, right? But how are you going to get someone to pay you for your invention?
Some inventors decide to go into business to make and sell their invention themselves. Other inventors have no desire to make their own products, but plan on licensing their invention to a large company that will ultimately pay them a royalty.
It stands to reason that only the inventor who wants to make and sell his or her invention needs to learn about marketing, sales, manufacturing, and finance. In reality, the inventor that plans on licensing his or her invention must become the most knowledgeable about these “big company processes.”
In order to make sure your invention is successful, you must make sure that the big corporations will pay you for it. Each manager will look at your invention from completely different perspectives, and try to find reasons NOT to license it. For that reason, we’ll help you to understand what motivates the finance manager, manufacturing director, marketing executive, and senior engineer, and how to make sure you write your patent to address their issues.
Your invention, and more to the point, your well-written patent, should speak to every one of these corporate managers. Your patent must answer their questions even before they are asked—and by the time you finish applying the The Patent Writer formula, it will.
Follow Our Lead
The Patent Writer not only tells you the patent-writing process you’ll need to follow to succeed, we immediately apply our suggestions to an actual patent application, making it easier than ever to understand how to write a winning patent. Throughout this book, you’ll follow how we write our own patent application for our “Illuminated Hammer” invention.
At each critical step of the patent-writing process, whenever you see the small square hammer icon, you will see how we applied The Patent Writer method to our Illuminated Hammer invention. Follow the same process to writing the patent for your own invention and you are on the road to success!
In fact, our Illuminated Hammer sample will show you the entire process of taking the invention from the idea stage right through to a final patent application, including our different approaches to the invention (the embodiments), and the drafting of our patent claims to obtain maximum protection. We’ll even show you the different approaches that could be used to manufacture our hammer—and you’ll be amazed at how manufacturability issues actually reshaped how we wrote our important patent claims.
By following the Illuminated Hammer throughout The Patent Writer, you’ll learn first-hand the logical process you will follow to write your own patent.
Patent drafting is a wonderful art form that you will find interesting and challenging. Inventors who draft their own patent applications are usually better educated and appreciative of the patent process. By following the guidelines in this book, you will discover the art of patent drafting and how to apply it to your respective inventions in a responsible manner.
From this point forward we will be discussing patent drafting. Parts of a patent are written, but patents also contain references to other similar patents discovered during a patent search, as well as drawings. Together, we refer to the whole of creating a patent application as patent drafting.
This book cannot show you all of the possible methods of drafting patent applications. However, in view of the much-anticipated decision in Phillips v. AWH Corporation (decided July 12, 2005), we can explain current laws describing how patent claims are now interpreted so you may write a successful patent application. Unfortunately, other patent-drafting books printed before the Phillips case utilize outdated writing techniques —and are possibly even dangerous to use. You will also want to visit www.patentwriter.com often to ensure that you are educated as to the most current patent laws and cases.
Based upon current law and practices, we’re going to show you the two main approaches to patent drafting:
1. Ordinary Meaning Technique; and
2. Lexicography Technique.
You do not have to limit yourself to only one technique for drafting your patent application—you can easily choose which technique works best for each portion of your application. After reading this book, you will be able to determine which technique or combination thereof is best.
Here’s a quick preview of these techniques—you’ll see why it’s important to understand the key differences in your writing approach.
Ordinary Meaning Technique
This technique is relatively basic and simple as suggested by its title. The patent drafter utilizes words that have established meanings to “one skilled in the art” of his or her invention. In other words, no conflicting meanings for words are used in the patent application that would give a word a meaning different than the “ordinary meaning.” In addition to your written patent, dictionaries, encyclopedias, treatises, and other types of extrinsic evidence may be used by a court to help determine the ordinary meaning of the words used in your application. Throughout the book, we’ll provide you with examples, making it easy for you to follow.
The potential upside to this method is that it’s simple, easy, and reduces the chances of including an unnecessary limitation within your patent application. The potential downside to this method is that you are stuck with the ordinary meanings of terms as understood by a hypothetical person of ordinary skill in the art of your invention.
Lexicography is the art of making up words or applying a certain definition to existing words. The definition you provide to words with this technique may narrow or broaden their ordinary meaning.
As stated, you are determining the exact definition of words in your patent application through this technique, which requires a solid understanding of the invention and the industry. When you specifically define the meaning of a term, you are trumping the established ordinary meaning and creating your own meaning for that term. Remember, you can use this technique for one or more of the terms used in your application while allowing the remaining words to retain their “ordinary meaning.”
The potential upside to this method is that you are in control of the meanings applied to the words in your patent application. The potential downside to this method is that you may inadvertently include unnecessary narrowing language in your definitions.
Make Your Own Decision
Remember, you do not have to select just one technique for drafting your patent application. Choose the technique that you feel the most comfortable with. If you are very strong in grammar and understand the industry of your invention very well, then the lexicography technique may be attractive to you. If you are not that strong in grammar or do not fully understand the industry of your invention, then the ordinary meaning technique may be attractive to you. As always, you can mix these two writing techniques as you feel comfortable doing.
Know Before You Go
We’ve given you the quick tour of The Patent Writer roadmap to writing a successful patent. Now it’s time to put the process into action.
As every successful inventor knows, being prepared is the first order of business, so pull out your inventor’s journal and pencil, get your computer fired up, and then get ready to begin The Patent Writer method! Remember, anyone can “invent.” Now enter The Patent Writer world, and prepare to successfully invent—you’re about to write your first winning patent.