Full Description

A Plain English Guide for Obtaining Your Patent and Making Money With It

Your invention is the product of effort and ingenuity that deserves to be protected. Reward all your hard work and creativity by obtaining a patent. The Complete Patent Kit contains everything you need to successfully navigate your way through the patent process. It takes you step-by-step through each stage of the application process and provides vital information for what you need to do, both before and after you receive your patent, to make your invention profitable.

- Make Money
Follow proven techniques to gain a stronger competitive advantage in the marketplace.

- Respond to Challenges
Learn the best way to answer questions from the PTO to overcome any hurdles and speed the process along.

- Sample Patents
Find samples of both a Utility Patent and a Design Patent to help guide you through the application process.

- Online Resources
Obtain the latest information directly from the PTO to ensure faster approval of your submissions.

- International Protection
Expand your scope of protection by following international laws for patent approval.

- Maintenance Schedule
Track important dates and never miss a deadline again.

With checklists, handy reference charts and unique forms, The Complete Patent Kit takes you start to finish through the patent process.

Table of Contents

How to Use the CD-ROM -
Using Self-Help Law Books-
Introduction-

Section 1: Before You File Your Application
Chapter 1: Overview of the Patent Process -
The Purpose of Patents
Factors to Consider
Who Can Apply for a Patent
Types of Available Patents
What is Patentable
What is Not Patentable
Length of a Patent
When to Apply for a Patent
The Work Involved with Obtaining a Patent
Hiring an Attorney or Agent
Further Information
Chapter 2: Other Tools for the Patent Holder -
Copyrights
Trademarks
Trade Secrets
Confidentiality Agreements
Joint Ownership Agreements
Disclosure Document Program
Chapter 3: Requirements for Obtaining a Patent -
Novelty
Obviousness
Written Description Requirement
Enablement
Best Mode
Utility
Chapter 4: Searching for Prior Art -
The Importance of a Prior Art Search
Simple Searches for Free
Fee-Based Searching
Extensive Patent Searching at the PTO
Documenting Your Search

Section 2: Filing Your Application
Chapter 5: Drafting Your Patent Application-
Parts of Your Application
How to Go About Drafting a Patent Application
Drafting Your Specification
Step 1: Title of the Invention
Step 2: Cross-Reference to Related Applications
Step 3: Statement Regarding Federally Sponsored Research and Development
Step 4: Reference to a Sequence Listing, a Table, or a Computer Program Listing
Step 5: Background of the Invention
Step 6: Brief Summary of the Invention
Step 7: Brief Description of the Several Views of the Drawing
Step 8: Detailed Description of the Invention
Step 9: Claims
Step 10: Abstract of the Disclosure
Step 11: Sequence Listing
Drawings
Chapter 6: The Most Important Part of the Application: Claims -
Claim Format
Types of Claims and How to Draft Them
Drafting Dependent Claims
Means-Plus-Function Clauses
Jepson Claim Format
General Claim Drafting Rules and Techniques
Chapter 7: Completing Your Application-
Utility Application Transmittal Form
Fee Transmittal Form
Application Data Sheets
Oath or Declaration
Information Disclosure Statement
Cover Letter
Postcard
Sending Your Patent Application
Final Checklist
Chapter 8: Preparing Other Types of Applications-
Design Patent Applications
Provisional Applications
Continuation Applications
Continuation-in-Part Applications
Divisional Applications
Request for Continued Examination
Claiming Priority to Earlier Applications
Chapter 9: Filing Your Application Abroad-
Patent Cooperation Treaty
Overview of the PCT Process
Preserving Foreign Filing Rights
PCT Timeline
Other Foreign Filing Routes

Section 3: After You File Your Application
Chapter 10: The PTO’s Response to Your Patent Application -
Corresponding with the PTO
Checking the Status of a Patent Application through PAIR
Length of Time to Approve Application
Petitions to Make Special
First Office Action
Your Response or Reply
Supplemental Replies
Consider an Interview with Your Examiner
Final Rejection
Advisory Action
Appeal of Your Examiner’s Decision
Notice of Allowance or Allowability
Patent Term Adjustments
Payment of Issue and Publication Fee
Chapter 11: Amending or Modifying Your Application -
Making Amendments to Your Application Data Sheet
When You Can Amend Your Specification
Format of Your Amendment
Examiner Amendments
Correcting Inventorship
Chapter 12: Dealing with Preliminary Examination Communications -
Notices that Relate to an Incomplete Application
Notice of Incomplete Reply
Restriction Requirement
Chapter 13: Overcoming Novelty and Obviousness Rejections -
Novelty
United States Code, Title 35, Section 102(a)
United States Code, Title 35, Section 102(b)
United States Code, Title 35, Section 102(c)
United States Code, Title 35, Section 102(d)
United States Code, Title 35, Section 102(e)
United States Code, Title 35, Section 102(f)
United States Code, Title 35, Section 102(g)(2)
Obviousness
United States Code, Title 35, Section 103(a)
Chapter 14: How to Overcome Other Types of Rejections -
Rejections under United States Code, Title 35, Section 112, Second Paragraph
New Matter Rejections under United States Code, Title 35, Section 132
Rejections under United States Code, Title 35, Section 112, First Paragraph
Utility Rejections under United States Code, Title 35, Section 101
Double Patenting Rejections
Abandonment of Your Application

Section 4: After Your Patent Issues
Chapter 15: Maintaining and Correcting Your New Patent -
Labeling Your Products
Correcting Minor Mistakes
Maintenance Fees
Reissue of Your Patent
Chapter 16: Monitor Your Competitors -
People You Should Rely On
What Competitive Intelligence Uncovers
Tools for Competitive Intelligence
Organize and Analyze Your Intelligence
Strategic Planning
Chapter 17: Patent Infringement -
Start with Your Independent Claims
Construe Your Claims
Determining Infringement
Contributory Infringement
Relief for Patent Infringement
Chapter 18: Commercializing Your Invention through Licensing -
Why License
Types of Licenses
Determining Royalties
Finding Prospective Licensees
Choosing the Best Licensees
Approaching Your Licensee
The License Agreement
Recording License Agreements
Chapter 19: Alternative Ways to Commercialize Your Invention -
Doing Everything Yourself
Selling Your Invention Outright Using an Assignment
Determining Whether to Sell
When an Invention Can Be Assigned
Assigning Patent Rights
Recording
Chapter 20: Strategies for Product Commercialization -
Consider a Unique Design
Price
Limited Life Terms
Choose Catchy Names and Logos
Develop a Website
Align Yourself with Key Partners
Conclusion -
Glossary -
Appendix A: Important Addresses and Telephone Numbers -
Appendix B: Additional Resources -
Appendix C: Sample Patent Application -
Appendix D: Sample Design Patent -
Appendix E: Forms -
Index -
About the Author

Excerpt

 Six Requirements for Obtaining a Patent
Excerpted from Complete Patent Kit by James L. Rogers ©2005

This chapter introduces the most important statutory requirements that can bar you from
obtaining a patent on your invention. These requirements are absolutely vital for you to understand and may also be somewhat foreign to you at this point in time. The requirements are:
? ?novelty;
? ?obviousness;
? ?written description requirement;
? ?enablement;
? ?best mode; and,
? ?utility.

As you read through this chapter, remember this: your goal is not just to write a patent application and obtain a patent. Instead, your goal is to obtain a high-quality patent for your invention. A high-quality patent is one that gives you the broadest protection for your invention and can withstand invalidity attacks from your competitors. The patentability requirements that you will learn about in this chapter are not only necessary from the standpoint of obtaining your patent, but can be used later to attack the validity of any patent that you obtain. These requirements are very important and are referred to throughout the book.

Novelty
As the name suggests, novelty has to do with whether your invention is new. If your invention is an old concept, then it makes sense that the government will not give you an exclusive monopoly in the form of a patent. Patents are granted to inventors in return for the exchange of new information that can advance the technological body of knowledge in this country. The government is not interested in giving away patents in exchange for information that is already known. You can think of novelty as requiring that your invention must not have been known before. However, patent law is much more specific about what this term means. You will be at an advantage if you can start thinking about this in terms of patent law.Under patent law, novelty requires that there is no prior art that anticipates your invention.

Prior art is discussed in the next section. You can also find a detailed discussion on each of the prior art sections in Chapter 13. For now, you can limit your understanding about prior art to what is contained in the next section. But if you get a rejection of your patent application on the basis of one of the prior art sections, you will appreciate the more detailed discussion in Chapter 13 (as well as the tips contained there for overcoming such rejections).

If during your search you uncover prior art related to your invention, the next question to ask is, Does this prior art anticipate your invention? If the prior art that you uncover does anticipate your invention, your invention is not novel. If the prior art does not anticipate your invention, your invention will be patentable, so long as your invention is not obvious with respect to this prior art. (The meaning of obviousness is explained later in this chapter.)

Prior Art
Prior art can include printed material, like patents and publications, or it can include things like public knowledge and use or sale of your invention. Prior art can be a patent or publication that discusses an invention similar or related to yours. It can also be general public knowledge, public use, or public sale of such an invention.

Patents
A U.S. or foreign patent is prior art if it is:
? issued before your date of invention or
? issued more than one year before your U.S. filing date.

A U.S. patent issued to another is also prior art if its U.S. filing date precedes your date of invention, even if it does not issue until after the filing date (or patent issue date) of your claims under examination.

Publications
A printed U.S. or foreign publication is prior art if it is:
? ?published before your date of invention or
? ?published more than a year before the filing date of your application.

A U.S. published patent application is also prior art if its U.S. filing date precedes your date of invention. The PTO takes the position that Internet materials are printed, so long as they include publication dates. (MPEP §2128.)

Public Knowledge, Use, or Sale of Your Invention
Any knowledge or use of your invention by others in the U.S. before your invention date constitutes prior art. Any public use or sale of your invention more than one year before the date of your patent application also constitutes prior art. (Chapter 4 fully explains how to search for prior art.)

Anticipation
As stated, the only time that prior art may bar your invention from being patented is when anticipation is directly related to how you draft your claims. Lack of novelty is when such prior art anticipates your invention.

You define your invention in the claims sections of your patent application. You will learn how to define your invention by writing claims in Chapter 6. For now, all you really need to know is that each of your claims sets the boundaries of your invention.

For example, if your invention is a table, you might have one claim that claims the table with legs and a top. In such a case, you are claiming a table made up of legs and a top. The legs and top are said to be elements or limitations of your claim, because they are the features that you list in your claim. If you were to have a second claim to the table having legs, a top, and an enamel surface, then this claim would have an additional limitation—the enamel surface.
You look at claims individually for anticipation purposes. A claim is anticipated only if each and every element as set forth in your claim is found, either expressly or inherently, in a prior art reference. In other words, anticipation requires that a piece of prior art (a patent, publication, sale, or use) discloses each and every limitation of your claimed invention. The invention described by the prior art must be shown in as complete detail as is contained in your claim. Although the elements must be arranged as required by your claim, identical terminology is not required. (MPEP §2131.)

It is permissible for your examiner to find that a prior art reference inherently discloses an element of your claim, even though the disclosure does not come right out and explicitly state the element. To do this, your examiner must provide a basis in fact or technical reasoning to reasonably support his or her decision.

Obviousness
In addition to a lack of novelty, a claimed invention is unpatentable if the differences between your claimed invention and the prior art are such that the subject matter as a whole would have been obvious at the time your invention was made to a person having ordinary skill in the art (a person skilled in your field). In short, the PTO can take anything that qualifies as prior art, combine it with any other prior art, and then reject your claimed invention on the basis that it is an obvious invention—even though neither one of such references alone would anticipate your invention.

Obviousness is a potent tool for the examination of your application because the examiner does not have to find that each particular reference, such as one individual science report, anticipates your claim. The examiner would have to reject your invention on the basis of a lack of novelty. Instead, the examiner only needs to find that all of the references combined teach or suggest your invention.
Any reference that your examiner uses as prior art, however, must be analogous to the art of your invention. A reference is considered analogous and, therefore, available for use in an obviousness rejection, if it is either:
? within the field of your endeavor or
? reasonably pertinent to the particular problem with which your invention was involved.

The requirement that prior art references be analogous to the art of your own invention is a requirement unique to obviousness. It is not a requirement for the purposes of whether a single reference anticipates your invention under the concept of anticipation above. In determining whether a single reference bars your invention under anticipation, the reference may be from an entirely different field than your invention or may be directed to an entirely different problem from the one addressed by you, yet the reference will still anticipate if it explicitly or inherently discloses every limitation recited in your claims.

You will learn much more about obviousness in Chapter 13. Note that not finding any one reference that does not anticipate your invention may end your inquiry for novelty, but not for obviousness purposes. Keep both novelty and obviousness in mind as you do your patent searching in Chapter 4.

Written Description Requirement
The written description requirement is the first of three requirements under the first paragraph of 35 U.S.C. §112. The second and third requirements, enablement and best mode, are discussed in the next two sections.

The written description requirement prevents you from claiming subject matter that was not described in your patent application as filed. In fact, it prevents you from doing anything to the claims of your patent application that are not supported by your written description in your application as you file it.

The essential goal of the written description requirement is to clearly convey the subject matter that you have invented. The requirement for an adequate disclosure ensures that the public receives something in return for the exclusionary rights that are granted to you by a patent. The government will give you a patent, but in return, wants you to disclose your invention to the public.This disclosure adds to the scientific body of knowledge that will advance technology.

To satisfy the written description requirement, your patent application must describe the claimed invention in sufficient detail so that one skilled in the art can reasonably conclude that you have possession of your claimed invention. This is done by describing your invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth your invention.

Possession can be shown by describing an actual reduction to practice of your invention. You could do this, for example, by showing that you constructed an embodiment or performed a process that met all the limitations of your claimed invention and determined that your invention would work for its intended purpose.

Possession can also be shown by proving your invention was ready for patenting, such as by the disclosure of drawings or structural chemical formulas that show your invention was complete, or by describing distinguishing, identifying characteristics sufficient to show that you were in possession of your claimed invention.

Enablement
Enablement is another requirement and becomes an issue in more unpredictable fields like biology and chemistry. The test for enablement is whether one skilled in your art would be able to practice your claimed invention without an undue amount of experimentation. The state of the art that is considered is based on the art as it exists at the time you file your application. The fact that the state of art later changes so that one is enabled to practice your invention does not eliminate this rejection if one skilled in your art was not enabled to practice your invention at the time your application was filed.

For some types of inventions, particularly computer-related inventions, it is not unusual for the claimed invention to involve more than one field of technology. For such inventions, the disclosure must satisfy the enablement standard for each aspect of the invention.

Example: To enable a claim to a programmed computer that determines and displays the three-dimensional structure of a chemical compound, the disclosure must
enable a person skilled in the art of molecular modeling to understand and
practice the underlying molecular modeling processes. The disclosure must also
enable a person skilled in the art of computer programming to create a program
that directs a computer to create and display the image representing the three dimensional structure of the compound.

As long as your specification discloses at least one method for making and using your claimed invention that bears a reasonable correlation to the entire scope of your claim, then the enablement requirement is satisfied.

Determining Enablement
There are many factors that are considered when deciding whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is undue. These factors include, but are not limited to, the following.

The Breadth of Your Claims
If your claims are narrow in scope, it will be easier to satisfy the enablement requirement. It is more likely that someone can practice your narrowly defined invention without undue experimentation.

The Nature of Your Invention
This is the subject matter to which your claimed invention pertains. The nature of your invention will become a backdrop to determine the state of the art and the level of skill possessed by one skilled in your art.

The State of the Prior Art
This is what one skilled in your art would have known, at the time you filed your application, about the subject matter to which your claimed invention pertains. The state of the prior art will provide evidence for the degree of predictability in the art.

The Level of One of Ordinary Skill
This refers to the skill of one in your art in relation to the subject matter to which your claimed invention pertains.

The Level of Predictability in the Art
The more predictability in your art, the more likely it is that someone can practice your invention without undue experimentation. If one skilled in the art can readily anticipate the effect of changes within your invention’s field or subject matter, then there is predictability in the art.

On the other hand, if one skilled in the art cannot predict how your invention’s topic matter would react to a change, then there is lack of predictability in the art. For example, in fields like chemistry, there may be times when the well-known unpredictability of chemical reactions will alone be enough to create a reasonable doubt as to whether an invention enables others in your field.

The Amount of Guidance or Direction Provided by You
This refers to the information in the application, as originally filed, that teaches exactly how to make or use your invention. The amount of guidance or direction needed to enable your invention is inversely related to the amount of knowledge in the state of the art as well as to the predictability in the art. The more that is known in the prior art about the nature of your invention—how to make it, how to use it, and the more predictable the art is—the less information needs to be explicitly stated in your specification. In contrast, if little is known in the prior art about the nature of your invention and the art is unpredictable, your specification will need more detail as to how to make and use your invention in order to be enabling.

The Existence of Working Examples
A working example is based on work that has actually been performed. The more working examples there are, the more likely someone can easily practice your invention.

The Quantity of Experimentation
Obviously, the quantity of experimentation needed to make or use the invention based on the content of the disclosure also affects the ease at which someone can practice your invention.

Missing Essential Claims
Enablement will bar your application when any critical or essential features to your claimed invention are missing from your claim. Such essentiality will be determined by looking at your application to see if you have recited any feature as being critical to the practice of your claims. If this feature is missing from your claims, then those claims fail the enablement test. This is discussed further in Chapter 14.

Best Mode
The best mode requirement is the third requirement under the statute. (35 U.S.C. §112(1).) The best mode requirement prohibits inventors from disclosing only what they know to be their second-best embodiment, while retaining the best for themselves. In other words, if you know of a preferred way of using and making your invention, you cannot conceal this from the public by leaving it out of your patent application.

There are two factual inquiries to be made in determining whether a specification satisfies the best mode requirement. First, there must be a subjective determination as to whether, at the time your application was filed, you knew of the best mode of practicing your invention. Second, there must be an objective determination as to whether the best mode was disclosed in sufficient detail to allow one skilled in the art to practice it. (Fonar Corp. v. General Electric Co., 107 F.3d 1543 (Fed. Cir. 1997).)

Utility
Utility is a patentability requirement that makes sure your claimed invention has an actual real world use. In most cases, this will not be a concern to you, as most novel inventions are useful to someone in this world.

Some types of inventions that plainly lack utility are inventions that do not operate to produce the results claimed. Such inventions are called inoperative, and if an invention does not work, it cannot be said to have any utility. These cases are rare, however, and usually revolve around inventions that are incredible, such as speculative claims that some uncharacterized composition cures a wide range of cancers. The PTO may establish a reason to doubt your asserted utility when the written description suggests an inherently unbelievable undertaking or involves implausible scientific principles. (In re Eltgroth, 419 F.2d 918 (CCPA 1970).)

While an invention that is inoperative is not useful according to the law, the Federal Circuit has stated that a claimed device must be totally incapable of achieving a useful result in order to have no utility. (Newman v. Quigg, 877 F.2d 1575 (Fed. Cir. 1989).) If an invention is only partially successful in achieving a useful result, a rejection of the claimed invention as a whole for lacking utility is not appropriate. (In re Gardner, 475 F.2d 1389 (CCPA 1973).)


Utility vs. Enablement Requirement
The requirement of utility under 35 U.S.C. §101 is different from the requirement of how to use the invention under 35 U.S.C. §112(1). The requirement of utility is that some specific, substantial, and credible use be set forth for the invention. On the other hand, enablement requires an indication of how the use (required by utility) can be carried out (i.e., how the invention can be used).

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