Jump-start your patent application: Diagram, then catalog, your invention s resource flows

Transcription

1 Jump-start your patent application: Diagram, then catalog, your invention s resource flows D. C. Toedt III (The last name is pronounced Tate ) Attorney at law intellectual property, Houston [See the About the Author slide at the end] 1

2 The traditional patent-drafting process can be tedious, expensive, and frustrating 2

3 Some contributing causes Everybody s busy Patent committee, patent counsel might not be familiar with the technology and/or the jargon Back-and-forth lobbing of drafts can be inefficient 3

4 Standardizing the communication: Diagram, and then methodically catalog, the invention s resource flows 4

5 An invention example (made-up) A novel spice rub that reduces baking time for potatoes 5

6 Four phases 1. Sketch the initial resources used, along with a saleable end result 2. Methodically catalog the resource flows 3. Draft claims (easiest way: collaborative drafting with patent counsel, in real time) 4. Refine the diagrams and the catalog to reflect the claim language 6

7 Phase 1: First, sketch the initial resources used, along with a saleable end result Initial resources Colors are for illustration only; diagrams can be in black and white Saleable end result 7

8 then add processes to the diagram Colors are for illustration only; diagrams can be in black and white 8

9 to get a high-level overview of doing something useful 9

10 Sketch additional diagrams, sketches, etc. to focus on noteworthy points From Figure 1 [Item numbering stays the same In all drawing figures] a 10

11 Footnote: A rule of thumb for diagramming Consider adding any pictures that might help explain the invention to a non-expert * * For example, a judge or jury in a lawsuit against an infringer 11

12 Phase 2: Methodically catalog the resource flows For each resource, list / describe: a) How obtained b) Function / purpose (if known) c) Specific requirements and/or preferences * d) Significance (if known) e) Contemplated alternatives * f) Notes * If and to the extent necessary (i) for enablement and/or (ii) to help explain the invention to a non-expert For each process, list / describe: a) Inputs (resources; outputs from other processes) b) Processing (use additional diagrams if necessary) c) Outputs d) Specific requirements and/or preferences * e) Significance (if known) f) Contemplated alternatives * g) Notes * * If applicable 12

13 Example: Catalog entry for a resource RESOURCE: Powdered unicorn horn (204) Might as well write complete sentences now, for use in the draft patent application a) How obtained: A unicorn horn can be obtained, for example, by searching a nearby unicorn trail for castoff horns. The unicorn horn can be powdered in any convenient manner. b) Function / purpose (if known): The powdered unicorn horn is believed to break down the potato s proteins, which speeds up the baking process. c) Specific requirements / preferences (if any): Grinding the unicorn horn to powder size F100 (FEPA) is preferred. 13

14 Question: How much detail is necessary? In colloquial terms: Create a hand-off package to give to a competent colleague Legal requirement: A written description sufficient to enable a person of ordinary skill in the relevant art to make and use the invention, including the best mode contemplated by the inventor of carrying out the invention see U.S. Code, Title 35, section

15 Phase 3: Claim drafting 100. In a method of baking cooking a potato tuber, the improvement comprising rubbing the exterior of the potato tuber, before baking cooking, with a spice mixture that includes powdered unicorn horn. Draft claims to mark the outer boundaries of the invention s advance over the prior art 102. The method of claim 100, wherein the method of cooking comprises baking The method of claim 100, wherein the tuber is a potato. 15

16 Real-time collaboration with patent counsel is often the easiest way to draft solid claims In person, or remotely via screen-sharing Immediate feedback means greatly-reduced inventor rework later 16

17 Phase 4: Refine the diagrams and the catalog to reflect the claim language 17

18 Along the way: Draft helpful glossary entries Helps you make sure you say everything you want to say Easier review & editing of the draft patent application Handy sound bites for future use Re-use glossary entries in future projects? 18

19 Payoff: More effective use of inventor time and lawyer time The diagrams and the catalog can be the heart of the draft patent application Less inventor time is needed for later review (because specific language was reviewed in drafting the diagrams, catalog, and glossary) File a provisional patent application the same day? 19

20 About the author D. C. Toedt III (The last name is pronounced Tate ) Attorney at law intellectual property, Houston; adjunct law professor, University of Houston Law Center Past positions: o o o Partner and member of management committee of Arnold, White & Durkee (150-lawyer intellectual-property boutique law firm, now part of Howrey LLP) Vice president and general counsel, BindView Corporation (publicly-traded software company, acquired by Symantec) U.S. Navy nuclear-engineering officer Education: University of Texas at Austin o Law review o Mathematics undergraduate degree, with high honors dc@toedt.com O: Blog: On Technology Law LinkedIn: dctoedt 20