This document provides a guide to understanding the patent process for engineers, scientists, and technology managers. It aims to make the process more efficient and ensure granted patents will have significant value and withstand challenges. The guide covers topics like the invention disclosure process, drafting a patent application, responding to examiner rejections, and foreign patent procedures. Understanding the patent process can help organizations obtain higher quality patents that better protect their products and intellectual property.

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A Guide to Patents for Engineers, Scientists, and Technology
Managers
Getting the Most out of Patents by Understanding the Patenting Process
By Scott M. Garrett, Esq.

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Copyright 2016, Scott M. Garrett
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Contents:
1. Why this book?
a. Who it is for; corporate/academic inventors, tech managers.
b. Independent inventors
c. costs of getting patents and litigating them
2. What a patent is and is not.
a. Patent policy.
b. A right to exclude
c. Owner must assert right
3. When does a patent begin?
a. Upon grant is the wrong view – litigation will focus on application
process
b. When does an invention occur? Idea v. invention.
4. The invention disclosure
a. When
b. What it should contain
i. inventors
ii. description – not just ‘the’ embodiment.
iii. test results
iv. critical dates
v. known prior art
c. Reviewing the IDS
i. Who should review – senior technologists, legal
ii. Look for novelty (and eligibility under 101)
iii. What about BOB?
iv. To search or not to search - for prior art.
5. Between invention and application
a. US and foreign rights
b. Public use/disclosure
c. Diligence in light of FITF
6. The application process
a. drafting the application – overview and themes (enablement, diligence,
best mode)
i. not merely paperwork
ii. who writes the application?
iii. Overview of the parts of an application
aa. Claims are CRITICAL – how claims will be interpreted
i. who will infringe?
ii. How many?

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iii. different embodiments?
iv. Defines inventorship
bb. Background
cc. Drawings
dd. Summary
ee. Detailed description, but not an engineering
specification
b. Reviewing an application
i. what to look for – claims must define, description must enable.
ii. timing
iii. Standard of review
iv. Does it teach one of ordinary skill how to practice “without
undue experimentation?”
v. Definition of terms to avoid ambiguous interpretation.
c. Timing and due diligence
d. filing
i. what papers go with the application - IDS
ii. how it is filed
iii. provisional applications.
7. After filing – the long, long wait.
a. Continued duty to disclose
b. Restrictions – when and how to traverse
c. Publication – everyone can see the record.
d. First office action – the rejection
i. types of rejections
aa. problems with the application/invention
i. 101 – patent-ineligible subject matter
ii. 112 – enablement
iii. 112 – formalities
iv. Drawings
bb. Prior art rejections
i. Anticipate.
ii. non-obvious.
iii. Reading the references; your claims v. the refs
cc. Responding to the rejections
i. Time to respond
ii. Examiner interview
iii. responding to 102 type rejections
iv. responding to 103 type rejections
v. The state of 101 and eligibility
ii. Abandonment
e. Subsequent rejections
i. Subsequent non-final rejections – do it over!
ii. Final rejections – it’s not really final.
aa. Overview

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bb. After final response
cc. RCE – another way to do it over.
dd. Appeal
i. pre-appeal conference
ii. Appeal to the board
ee. CIP – in case something was left out, but lose your
date.
f. Notice of Allowance – checklist
i. Drawings OK?
ii. Any CIPs or Divisionals?
iii. To pay or not to pay (but we’ve come so far!).
8. Foreign patents
a. Pass the absolute novelty test?
b. PCT and non-PCT, the 12 month date.
i. from earliest date, beware the provisional application
c. PCT procedure overview
i. Search report
aa. Duty of disclosure applies in US case
ii. Voluntary amendment
ii. National splits
aa. 20 month split
bb. 30 month split
cc. Backdooring the 20 month Euros via EPC
iii. Foreign prosecution – some easy, some not
9. The role of in-house and “out-house” counsel.
a. In-house counsel is the Ruler
i. Inventions belong to the company, not the inventors
ii. Filing goals, portfolio development
b. Outside counsel - trying to please two bosses (in-house counsel and
inventors)
10. Valuation of patents
a. Actual cash return
i. Licensing
ii. Litigation
iii. Sales
b. Non-monetized patent value
i. Factors based, qualitative
ii. Categories
aa. Core technology covering product(s)
bb. Picket in a fence or boulder in the road scope?
cc. Reach out, technology anticipation scope
iii. Review often.

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11. Patent operation budgeting
a. Cost in US to get a patent; fees and costs
b. Foreign filing costs
c. Opportunity costs often neglected
d. Break it down by units
i. anticipated new filing units
ii. prosecution units
iii. post-grant maintenance units.

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1. Why This Document?
This monograph is intended primarily as a guide for engineers,
scientists, technology managers in corporate operations. Understanding the
patent process can make the process more efficient, ensure that granted
patents are likely to have significant value, and that the granted patents are
more likely to survive challenges in litigation and other post-grant
proceedings. Patents are intellectual property assets; they add value to an
organization and can be used in a variety of business dealings as well as
protecting the organization’s competitive posture in the marketplace. A
failure to appreciate aspects of the process can lead to patents of poor quality
or patents that do not adequately protect a business’ product. Worse, an
organization may not realize that their solutions to problems they have
overcome are patentable, and they may inadvertently give away what could
have been their exclusive intellectual property.
There are numerous pitfalls that await uninformed patent applicants.
Engineering and science schools do a good job of preparing students to
design products, conduct research, and so on, but they do not give much
attention, if any, to the legal protection of the work-product of engineers and
scientists. In the competitive business of technology, however, acquiring