Developing Patent Claims. Writing Patent Claims. The Rest of the Story.

1. September 28, 20111
Developing Good Patent Claims:
A Fellow’s Guide to Successful Interaction with the OTC
Jim Patterson
September 28, 2011
Developing Patent Claims
Writing Patent Claims
The Rest of the Story

2. SM
© 2011 Patterson Thuente Christensen Pedersen, P.A., some rights reserved - www.ptslaw.com
DISCLAIMER: This presentation and any information contained herein is intended for informational purposes only and should not be construed as legal
advice. Seek competent legal counsel for advice on any legal matter.
Developing Good Patent Claims:
A Fellow’s Guide to Successful Interaction with the OTC
MDC Fellows Bootcamp
September 28, 2011
James H. Patterson
Patterson, Thuente, Skaar & Christensen

3. Developing Patent Claims: A Two Step Process
1. Identify the Invention
2. Express the invention in
proper claim lexicon
and syntax
Identification
90%
Expression
10%
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4. What is the product, really?
Where did the idea of the product originate?
What motivated the decision to spend time, effort and money developing the
product?
What problems are being solved?
What is the purpose of the product?
What is the intended impact of the product?
September 28, 20114
Developing Patent Claims: Identification of the
Invention

5. What is the current state of the art?
What key words should be used in patent and literature searches
What is the prior art?
What are competitors’ products?
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Developing Patent Claims: Identification of the
Invention

6. What are the differences between the product and the prior art?
How is this intellectual property different from existing technology?
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Developing Patent Claims: Identification of the
Invention

7. Which differences have economic value?
Which differences provide a commercial advantage?
Why is this intellectual property better than existing technology?
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Developing Patent Claims: Identification of the
Invention

8. Which differences are new, useful and non-obvious?
35 USC §101,102,103
Don’t be a lawyer!!
Instead, ask yourself:
Which differences will help us gain market share if we are the only ones
who can make, use, sell or offer to sell the product?
September 28, 20118
Developing Patent Claims: Identification of the
Invention

9. 9 September 28, 2011
Developing Patent Claims: Expression of the
Invention
University of Minnesota Intellectual Property Disclosure Form

10. 10 September 28, 2011
Developing Patent Claims: Expression of the
Invention
University of Minnesota Intellectual Property Disclosure Form

11. University of Minnesota Intellectual Property Disclosure Form
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Developing Patent Claims: Expression of the
Invention

12. Writing Patent Claims: The Product
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13. Writing Patent Claims
1.3 What are the applications of this Intellectual Property?
1.4 How is this Intellectual Property different from existing technology?
1.5 Why is this Intellectual Property better than existing technology?
1.6 Please list the key words to use in patent literature searches
5 Prior Art
6 Commercial Market
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14. Writing Patent Claims
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15. Writing Patent Claims
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16. Writing Patent Claims: Describing Key Features
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17. Writing Patent Claims: The Claim
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18. The Rest of the Story
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19. Questions?
Jim Patterson | patterson@ptslaw.com | 612.349.5741
19 September 28, 2011