Patent drafting


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Patent drafting

  1. 1. European Business & Innovation Centre Network Drafting Patents András Haszonits Amman, 16 May 2010 1
  2. 2. Agenda • How to build a good patent? • Drafting patent description • Start-up questions – Understanding the invention – Setting the scope of protection • Other considerations of patenting • Claim drafting 5/26/2010 Andras Haszonits 2 2
  3. 3. Overview You will be able to answer the following questions: • Which questions to be clarified up-start? • How to proceed with patent drafting? • What is the structure of a description? • What are claims, why are they important? • What types of claims exist? • What are the most dangerous errors to make? 5/26/2010 Andras Haszonits 3 3
  4. 4. What is a Patent? 5/26/2010 Andras Haszonits 4 4
  5. 5. When is a Patent Good? Good Patent Maximized scope of protection Easy to defend Hard to avoid Easy to detect use Easy to prove infringement 5/26/2010 Andras Haszonits 5 5
  6. 6. Basic Questions and ToDos • Is the applicant the one who is entitled to file the patent? • Has the inventor published the invention by any means (exhibition, trade show, presentation, etc.) • Has the inventor ever explained the invention or the prototype to any one (marketing guy, prospective investor, customers, etc.) • Is a patent application possible? ??? • Is patenting recommended? • When to file a patent? 5/26/2010 Andras Haszonits 6 6
  7. 7. Basic Questions and ToDos Who is entitled to filing? Is the applicant the one who is entitled to file the patent? • Explain please how the invention was created! • Have you received help, ideas, jointly developed with client / supplier? If so, who actually made the invention? Who contributed what? Me! • Where/how are you working? Are you employed/contracted? What is your description of work? (service/employee invention) Unauthorized claiming! Figure out who your actual client is! 5/26/2010 Andras Haszonits 7 7
  8. 8. Basic Questions and ToDos Has the inventor published the invention by any means? Do not give it up immediately! • US: Grace period of 1 year for own pre-publication • Japan: Only pre-use in Japan for 6 month • DE: Utility model only pre-use in DE for 6 month 5/26/2010 Andras Haszonits 8 8
  9. 9. Basic Questions and ToDos Has the inventor ever explained the invention or the prototype to any one? • For whom? • By which means? • Should it be considered as disclosure? • Should it be considered as abuse? – 6 month opportunity to file • Anyone from the same firm/institution? • Confidentiality/NDA signed? • Registered exhibition priority? 5/26/2010 Andras Haszonits 10 9
  10. 10. Basic Questions and ToDos Is a patent application possible? • Is it an invention? Maybe other form of creation of the mind? Maybe other form of protection available? Or know-how / trade secret? • Is the invention patentable Other rights apply to the US then else (e.g. business models, software might be patented) • Is it not excluded from patentability? (non-patentable inventions due to public order/morale, and due to human rights) 5/26/2010 Andras Haszonits 11 10
  11. 11. Basic Questions and ToDos Is filing of a patent application recommended? • Core business/IP management/wealth generation strategy? • Protective right • Defensive publishing? • Trade-secret? • Soft IP? 5/26/2010 Andras Haszonits 12 11
  12. 12. Basic Questions and ToDos When to file a patent? • What is needed for a patent application? – Complete, accurate description US: the best application has to be included in the patent! – Defined scope of protection in a set of valid claims • What is needed in order to obtain Filing Date? – Implication on requesting patent protection – Data sufficient for identification of applicant – Description (drawings) – But not necessary claims! 1 year to amend claims. But claims (even if handed in a year later) can not stretch beyond the scope defined by description! (US: Provisional: Claims can be amended in 1 year.) 5/26/2010 Andras Haszonits 13 12
  13. 13. Basic Questions and ToDos When to file a patent? • ASAP – reserve the right for me! – First on the market – US: First-to-invent system, provisional – EU: First-to-file system • ALAP – don’t file a dead/useless patent for me! – to obtain real life details from a working prototype, – to be able to find the real trick or gist of the invention, – to wait for market conditions to be perfect, – to be able to start the monopoly period when commercialization is already prepared, – Wait until we have the necessary finance and partners. 5/26/2010 Andras Haszonits 14 13
  14. 14. Innovation from a Patent-centric Point of View 1. Finding a real/important technical problem 2. Finding a solution to the technical problem 3. Distilling the idea behind the invention 4. Drafting and filing patent application 5. Going through the patent granting process 6. Publication and granting of the patent 7. Commercialization 8. Enforcement 9. Business success/failure 5/26/2010 Andras Haszonits 15 14
  15. 15. What Do We Need to Have? For a patent application we need to develop: • Title of the invention • Abstract • Technical field of invention • Background • Description of the invention detailed enough to enable a person with average understanding in the field to reproduce and use the invention • Illustrations, drawings • Claims determining the extent of the protection 5/26/2010 Andras Haszonits 16 15
  16. 16. Steps of Drafting a Patent Application 1. Picking the invention 2. Terminology to describe the invention 3. Generalizing the invention 4. Drafting claims 5. Drafting detailed description 6. Writing introductory sections to the application 7. Writing the abstract based on the detailed description 5/26/2010 Andras Haszonits 17 16
  17. 17. Thank you very much for your attention András Haszonits The training material is to be used exclusively in conjunction to the SRTD project in Jordan 5/26/2010 Andras Haszonits 62 17