Patent It Yourself · Your Step-by-Step Guide to Filing at the U.S. Patent Office by Pressman, David -- Read -- Imperial Library of Trantor

Index

Cover Title Copyright Acknowledgments About the Authors Table of Contents Your Legal Companion

A. You Don’t Have to Use a Patent Attorney B. A Layperson Can Do a Quality Job C. Using an Attorney D. Should You Do It Yourself? E. The Seventeenth Edition F. How to Use Patent It Yourself

1 Introduction to Patents and Other Intellectual Property

A. What Is a Patent and Who Can Apply for It? B. The Three Types of Patents C. The Novelty and Unobviousness Requirement D. How Long Do Patent Rights Last? E. Patent Filing Deadlines F. Patent Fees G. The Scope of the Patent H. How Patent Rights Can Be Lost I. What Rights a Patent Grants and the Prior-Art Reference Value of a Patent J. What Can’t Be Patented K. Some Common Patent Misconceptions L. How Intellectual Property Law Provides “Offensive Rights” (and Not Protection) to Inventors M. Alternative and Supplementary Offensive Rights N. Intellectual Property—The Big Picture O. Trademarks P. Copyright Q. Trade Secrets R. Unfair Competition S. Acquisition of Offensive Rights in Intellectual Property—Summary Chart T. Summary of Legal Remedies for Misappropriation of Various Types of Intellectual Property U. Invention Exploitation Flowchart V. Summary

2 The Science and Magic of Inventing

A. What We Mean by “Invention” B. Inventing by Problem Recognition and Solution C. Inventing by Magic (Accident and Flash of Genius) D. Making Ramifications and Improvements of Your Invention E. Solving Creativity Problems F. Contact Other Inventors G. Beware of the Novice Inventor’s “PGL Syndrome” H. Don’t Bury Your Invention I. Summary

3 Documentation and the PPA

A. Introduction B. Documentation Is Vital to the Invention Process C. Documentation Has Legal Implications D. Trade Secret Considerations E. Record Conception and the Building and Testing of Your Invention F. How to Record Your Invention G. Another Way to Record Conception or Building and Testing—The Invention Disclosure H. The Provisional Patent Application—A Substitute for Building and Testing, With Some Disadvantages I. Don’t Sit on Your Invention After Documenting It J. Don’t Use a “Post Office Patent” to Document Your Invention K. Summary

4 Will Your Invention Sell?

A. Why Evaluate Your Invention for Salability? B. Start Small but Ultimately Do It Completely C. You Can’t Be 100% Sure of Any Invention’s Commercial Prospects D. Take Time to Do a Commercial Feasibility Evaluation E. Check Your Marketability Conclusions Using the Techniques of Consultation and Research F. Now’s the Time to Build and Test It (If Possible) G. The Next Step H. Summary

5 Is It Patentable?

A. Patentability Compared to Commercial Viability B. Legal Requirements for a Utility Patent C. Requirement #1: The Statutory Classes D. Requirement #2: Utility E. Requirement #3: Novelty F. Requirement #4: Unobviousness G. The Patentability Flowchart H. Don’t Make Assumptions About the Law I. Summary

6 Search and You May Find

A. Why Make a Patentability Search? B. When Not to Search C. The Two Ways to Make a Patentability Search D. The Quality of a Patent Search Can Vary E. How to Hire a Patent Professional F. How to Prepare Your Searcher G. Analyzing the Search Report H. Computer Searching I. Do-It-Yourself Searching J. The Scope of Patent Coverage K. Patent and Trademark Resource Centers L. Problems Searching Software and Business Inventions M. Searches on the Internet N. NPL (Non-Patent Literature) Searches O. Summary

7 What Should I Do Next?

A. Fig. 7—Invention Decision Chart B. Drop It If You Don’t See Commercial Potential (Chart Route 10-12-14-X) C. Try to Sell Invention to Manufacturer Without “Regular” Patent Application (Chart Route 10-12-14-16-18-B) D. File an Application and Sell It to or License a Manufacturer If You See Commercial Potential and Patentability (Chart Route 14-16-18-20-22-A) E. If You Have Commercial Potential Without Patentability, License or Sell Your Invention to a Manufacturer Without Filing (Chart Route 16-24-26-28-30-B) F. Make and Sell Your Invention Yourself Without a Utility Patent Application (Chart Route 16-30-C) G. Manufacture and Distribute Your Invention Yourself, Keeping It as a Trade Secret (Chart Route 20-32-D) H. File Patent Application and Manufacture and Distribute Your Invention Yourself (Trade-Secret Protectable Invention) (Chart Route 20-32-34-E) I. File Patent Application and Manufacture and Distribute Invention Yourself (Non-Trade-Secret Protectable Invention) (Chart Route 20-32-34-E) J. Summary

8 How to Draft the Specification and Initial Drawings

A. Lay Inventors Can Do It! B. What’s Contained in a Patent Application C. What Happens When Your Application Is Received by the PTO D. Do Preliminary Work Before Preparing Your Patent Application E. Flowchart F. Your Written Description Must Comply With the Full Disclosure Rules G. Software, Computer-Related Inventions, and Business Methods H. First Prepare Sketches and Name Parts I. Drafting the Specification J. Review Your Specification and Abstract Carefully K. Checklist for Your Patent Application Draft L. Specification of Sample Patent Application M. Summary

9 Now for the Legalese—The Claims

A. What Are Claims? B. The Law Regarding Claims C. Some Sample Claims D. Common Misconceptions Regarding Claims E. One Claim Should Be as Broad as Possible F. The Effect of Prior Art on Your Claim G. Technical Requirements of Claims H. Drafting Your Main (Independent) Claim I. Other Techniques in Claim Writing J. Drafting Dependent Claims K. Drafting Additional Sets of Claims L. Checklist for Drafting Claims M. Summary

10 Finaling and Mailing Your Application

A. The Drawings B. PTO Rules for Drawings C. Doing Your Own Drawings D. Consider Using a Professional Patent Draftsperson E. Finaling Your Specification for Paper Filing F. Finaling Your Specification for EFS-WebFiling G. File the Information Disclosure Statement Within Three Months H. Assignments I. Petitions to Make Special—Getting Your Application Examined Faster J. Filing a Design Patent Application K. Summary

11 How to Market Your Invention

A. Perseverance and Patience Are Essential B. Overview of Alternative Ways to Profit From Your Invention C. Be Ready to Demonstrate a Working Model of Your Invention to Potential Customers D. Finding Prospective Manufacturers/Distributors E. The “NIH” Syndrome F. The Waiver and Precautions in Signing It G. The Best Way to Present Your Invention to a Manufacturer H. Presenting Your Invention by Correspondence I. Making an Agreement to Sell Your Invention J. Manufacturing and/or Distributing the Invention Yourself K. Summary

12 Going Abroad

A. Don’t File Abroad Unless Your Invention Has Very Good Prospects in Another Country B. Foreign Filing: The Basics C. The Paris Convention and the One-Year Foreign Filing Rule D. Other Priority Treaties Similar to the Paris Convention E. European Patent Office/Europäisches Patentamt/Office Européen des Brevets (EPO) F. The Patent Cooperation Treaty (PCT) G. Non-Convention Countries H. The Early Foreign Filing License or Mandatory Six-Month Delay I. The Patent Laws of Other Countries Are Different J. The Ways to File Abroad K. Rescind Any Nonpublication Request L. Foreign Filing Resources M. Summary

13 Getting the PTO to Deliver

A. What Happens After Your Patent Application Is Filed B. General Considerations During Patent Prosecution C. A Sample Office Action D. What to Do When You Receive an Office Action E. Format for Amending the Specification and Claims F. Drafting the Remarks G. Drawing Amendments H. Typing and Filing the Amendment I. If Your Application Is Allowable J. If Your First Amendment Doesn’t Result in Allowance K. Interferences L. Defensive Publication M. If Your Application Claims More Than One Invention N. The Public May Cite Additional Prior Art Against Your Published Patent Application O. NASA Declarations P. Design Patent Application Prosecution Q. What to Do If You Miss or Want to Extend a PTO Deadline R. Summary

14 Your Application Can Have Children

A. Available Supplemental Cases B. Continuation Application C. Request for Continued Examination (RCE) D. Divisional Applications E. Continuation-in-Part and Independent Applications F. Reissue Applications G. Defensive Publications; SIR Program Abolished H. Substitute Applications I. Double Patenting and Terminal Disclaimers J. Summary

15 After Your Patent Issues: Use, Maintenance, and Infringement

A. Issue Notification B. Press Release and Marketing C. Check Your Patent for Errors D. Patent Number Marking E. Advertising Your Patent for Sale F. What Rights Does Your Patent Give You? G. Be Wary of Offers to Provide Information About Your Patent H. Maintenance Fees I. Legal Options If You Discover an Infringement of Your Patent J. What to Do About Patent Infringement K. Product Clearance (Can I Legally Copy or Make That?) L. How to Cite Prior Art and Other Information in Patent Applications and Patents M. The Court of Appeals for the Federal Circuit (CAFC) N. Jury Trials O. Arbitration P. How Patent Rights Can Be Forfeited Q. Tax Deductions and Income R. Patent Litigation Financing S. Summary

16 Ownership, Assignment, and Licensing of Inventions

A. The Property Nature of Patents B. Who Can Apply for a Patent? C. Joint Owners’ Agreement D. Special Issues Faced by the Employed Inventor E. Assignment of Invention and Patent Rights F. Record Your Assignment With the PTO G. Licensing of Inventions—An Overview H. Universal License Agreement I. How Much Should You Get for Your Invention? J. Summary

Appendixes

1 Abbreviations Used in Patent It Yourself 2 Resources: Government Publications, Patent Websites, and Books of Use and Interest

A. Government Publications B. Patent Websites

3 Glossaries

A. Glossary of Useful Technical Terms B. Glossary of Legal Terms

4 Fee Schedule 5 Mail, Telephone, Fax, and Email Communications With the PTO

A. Patent and Trademark Office Mail Addresses B. Patent and Trademark Office Telephones and Faxes

6 Quick-Reference Timing Chart 7 Forms

Nondisclosure Agreement Invention Disclosure Provisional Patent Application Cover Letter Application Data Sheet—PTO SB/14 Positive and Negative Factors Evaluation Positive and Negative Factors Summary Consultant’s Work Agreement Searcher’s Worksheet Drawing Reference Numerals Worksheet Declaration for Utility or Design Patent Application Using an Application Data Sheet Declaration for Utility or Design Patent Application Supplemental Sheet for Declaration Utility Patent Application Transmittal Fee Transmittal Credit Card Payment Form Information Disclosure Statement Cover Letter Information Disclosure Statement by Applicant Nonpublication Request Request Under MPEP 707.07(j) Petition to Make Special Design Patent Application Design Patent Application Transmittal Request for Expedited Examination of a Design Application Amendment Submission of Corrected Drawings Supplemental Declaration Petition for Extension of Time Pre-Appeal Brief Request for Review Request for Continued Examination (RCE) Transmittal Request for Certificate of Correction Certificate of Correction Maintenance Fee Reminder Sheet Submission of Maintenance Fee Joint Applicants—Statement of Respective Contributions Joint Owners’ Agreement Assignment of Invention and Patent Application Recordation Form Cover Sheet Universal License Agreement

8 How to Use the Online Forms

A. Editing RTFs B. List of Forms

Index

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