Robert P. Simpson (Simpson


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Robert P. Simpson (Simpson

  1. 1. ANATOMY OF A UNITED STATES PATENT (US Patent No. 5,048,532) Robert P. Simpson Registered Patent Attorney Simpson & Simpson, PLLC 5555 Main Street Williamsville, NY 14221
  2. 2. Why a Patent Application is The Most Difficult Legal Document to Write  Legal and technical document  Plurality of audiences  Client, Patent Examiner, Board of Patent Appeals and Interferences, District Court for District of Columbia, Court of Appeals for Federal Circuit, Potential Investor, Potential Infringer, Potential Infringer’s Lawyer, Federal District Court Judge & Jury
  3. 3. Legal Considerations  35 USC 101 (Utility and eligible subject matter for patent – apparatus, manufacture, composition of matter, process, improvement)  35 USC 102 (Novelty)  35 USC 103 (Non-obviousness)  35 USC 112 (Complete written description, enablement, best mode)
  4. 4. Application Elements (37 CFR 1.77)  Title of the invention  Cross-reference to related applications  Statement regarding federally sponsored research/development  Names of parties to joint research agreement  Reference to sequence listing, table, computer program on compact disc  Background of invention  Brief summary of invention  Brief description of drawings  Detailed description of the invention  Claim(s)  Abstract of the disclosure  Drawings
  5. 5. Title of the Invention  Should be short and specific as possible  Title may not exceed 500 characters in length
  6. 6. Cross-Reference to Related Application(s)  Continuation, Divisional, Continuation-in-Part  Claim for Priority – Provisional, Foreign
  7. 7. Background of the Invention  State the problem to be solved  Tactfully describe efforts by others to solve the problem  Explain why there is a long-felt need for the invention
  8. 8. Background of the Invention  No-no’s  Do not discuss Applicant’s invention in the Background  Absolutely, positively NEVER call anything “Prior Art” in the Background of the Invention. If you call it “Prior Art”, it is, even if it isn’t!
  9. 9. Background of the Invention Two Schools of Thought Keep it short and simple – especially if foreign filing is contemplated – this will reduce translation costs. vs. Make it interesting and discuss some or all relevant references found in search (regardless of length) – get the Examiner’s attention and let her know you’ve done your homework.
  10. 10. Brief Summary of the Invention  Summarize invention “as claimed”  Set forth objects, features and advantages  Describe alternate embodiments  Attorney trick of the trade – paraphrase broad claim and remove legalese (“said”, “wherein”, “heretofore”, etc.)
  11. 11. Brief Description of the Drawings  “Brief” means “Brief” – useful in helping the reader to get her bearings in understanding the invention.  Perspective, plan view, top view, rear view, cross-sectional, fragmentary  USPTO prefers reference numbers over letters
  12. 12. Drawings  Informal vs. Formal – Two Schools of Thought  Requirements  Must show every feature of the invention specified in the claims  Technical requirements found in 37 CFR 1.84
  13. 13. Detailed Description of the Invention  Complete description of the invention – how complete?  Must be in such full, clear, concise, and exact terms as to enable any person skilled in the art to both make and use the invention  Must set forth precise invention that is claimed in such a manner that distinguishes it from prior art  Must completely describe a specific embodiment  Must set forth the best mode of practicing the invention
  14. 14. Claim(s)  Arguably the most important part of a patent  Defines the metes and bounds of the intellectual property rights
  15. 15. Types of Claims  Apparatus, composition of matter, article of manufacture, method/process, improvement  Independent – stands on its own  Dependent – depends from another claim and includes all limitations thereof  Multiple dependent – depends from more than one other claim
  16. 16. Anatomy of a Claim  Preamble – transitional phrase (comprising/consisting) – elements  “Comprising” means: the following elements and maybe others as well  “Consisting” means: the following elements and only those elements
  17. 17. Claim Objective  The broad claim should include the fewest number of elements possible to define an invention which is novel and was non-obvious to a person having ordinary skill in the art to which the invention pertains at the time the invention was made.  Fewer elements makes it more difficult to avoid infringement.
  18. 18. Example of a Broad Independent Claim  A method for measuring left atrial pressure, comprising:  inserting a balloon-containing catheter into the esophagus and positioning said catheter so that when the balloon is inflated, pressure from the left atrium affects said balloon;  inflating said balloon; and,  determining mean left atrial pressure by the effect of the atrial pressure upon said balloon.
  19. 19. Purpose of Dependent Claims  Dig the well deep so you have a place to retrieve limitations you may need during prosecution  The Doctrine of Claim Differentiation
  20. 20. Abstract of the Disclosure  Must be on a separate sheet  Must be no more than 150 words in length  Purpose is to enable the USPTO and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure  Used often in patent searching  Usually appears after Claims in application but always appears on face of patent
  21. 21. Miscellaneous Parts  Inventor(s)  Assignee  Application No.  Related Applications  International and US Classification  Field of Search  References Cited  Primary Examiner  Assistant Examiner  Attorney, Agent or Firm