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PLIREF-PATAPP Author FOR EDUCATIONAL USE ONLY How to Write Pat. Application Author (Cite as: PLIREF-PATAPP AUTHOR)
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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19, October 2006 About the Author
*v About the Author JEFFREY G. SHELDON is the founding partner of Sheldon & Mak, a leading West Coast intellectual property law firm with offices in Pasadena, Riverside, and Ventura, California. Mr. Sheldon is a summa cum laude graduate of Loyola Law School. He has a Bachelor of Science degree in Chemical Engineering from the Carnegie Institute of Technology, and a Master of Science degree in Biomedical Engineering from the University of Strathclyde, Glasgow, Scotland. His studies in Scotland resulted from receiving the Marshall Scholarship from the United Kingdom government. Mr. Sheldon has been litigating patents and prosecuting patent applications since 1975. He has been adjunct professor in intellectual property law and patent law at Southwestern University Law School and advanced patent law at Loyola University, both in Los Angeles. He is a frequent lecturer for the Practising Law Institute and other organizations. He is a member of the American Bar Association and the American Intellectual Property Law Association Association and was chairman of the Los Angeles Angeles Intellectual Intellectual Property Property Law Association. Association. Mr. Sheldon Sheldon is a frequent author and was a columnist for the Los Angeles Daily Journal on intellectual property law. He has been the author of the Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit (PLI). He is a past chairman of the Intellectual Property Law Section of the State Bar of California and was identified by California Lawyer magazine as one of the top patent lawyers in the state of California. Mr. Sheldon has been responsible for the training of many patent practitioners and has been requested by many in-house patent counsel to prepare and prosecute their more challenging patent applications. PLIREF-PATAPP AUTHOR END OF DOCUMENT DOCUMENT
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PLIREF-PATAPP § 2.2.1 How to Write Pat. Application s 2.2.1 (Cite as: PLIREF-PATAPP s 2.2.1)
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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19, October 2006 Chapter 2: Parts of a Patent Application § 2.2 Parts of a Patent Application *2-3 § 2.2.1 What Is Needed to Obtain a Filing Date To obtain a filing date, the application initially filed with the Patent Office must at the very minimum contain the following: 1. a complete specification with a satisfactory description and at least one claim; and 2. any drawing that is necessary to understand the invention. [FN1] These parts of a patent application are indispensable. If any of the indispensable papers is not provided with the initial filing, then the filing date will be the date all the indispensable papers are provided. [FN2] Even if the indispensable papers are provided, a filing date will not be awarded if those papers are incomplete or if they fail to meet statutory requirements. An application with *2-4 missing drawings or pages or with an insufficient disclosure is regarded as incomplete. [FN3] If an incomplete application is filed, the Patent Office issues an office action asking for the missing parts. A disadvantage of filing an incomplete application is that the term of any patent that issues could be shortened. The Patent Office considers filing an incomplete application to be a delay caused by the applicant, and subtracts the delay associated with this from any delay caused by the Patent Office in calculating any term extension. [FN1]. 37 C.F.R. § 1.53. [FN2]. 37 C.F.R. § 1.53(c). [FN3]. M.P.E.P. § 601.01. PLIREF-PATAPP s 2.2.1 END OF DOCUMENT
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PLIREF-PATAPP § 2.2.2 How to Write Pat. Application s 2.2.2 (Cite as: PLIREF-PATAPP s 2.2.2)
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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19, October 2006 Chapter 2: Parts of a Patent Application § 2.2 Parts of a Patent Application *2-4 § 2.2.2 Papers Filed in a "Typical" Application Besides the specification, including at least one claim and drawings (when necessary), a complete patent application also contains an oath or declaration by the applicant and the requisite filing fee. [FN4] The declaration and filing fee may be submitted later (within two months of the date of notice given by the Patent Office) without affecting the filing date, [FN5] if the indispensable papers are provided in the initial filing. In addition to the statutory requirements, the patent application may require several supplementary formal papers. Thus, a typical patent application includes all the following papers: 1. a declaration, 2. a power of attorney, 3. an assignment (if applicable), *2-5 4. a small entity form (if applicable), [FN5.1] 5. drawings (if necessary), 6. a specification, 7. claim or claims, 8. an information disclosure statement, 9. a cover sheet, 10. a fee payment, 11. a postcard, and 12. an application data sheet containing bibliographic data. [FN6] PTO approved forms, some of which are reproduced herein as Exhibits, can be found and downloaded from the PTO website at . [FN4]. See 35 U.S.C. § 111; 37 C.F.R. § 1.51. Although an information disclosure statement is not required per se, failure to disclose relevant prior art (known to the applicant) may be inequitable conduct. [FN5]. 37 C.F.R. § 1.53(d). [FN5.1]. A small entity form is not required if the small entity basic filing fee is paid, but it is recommended that the form be filed. See § 2.3.4. [FN6]. 37 C.F.R. § 1.76. The optional application data sheet and software for filling it out are available at the Patent Office website. PLIREF-PATAPP s 2.2.2 END OF DOCUMENT
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PLIREF-PATAPP § 2.5 How to Write Pat. Application s 2.5 (Cite as: PLIREF-PATAPP s 2.5)
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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19, October 2006 Chapter 2: Parts of a Patent Application
*2-18 § 2.5 Specification The specification is a description of the invention that is of sufficient detail to allow a person skilled in the art of the invention to make and use the invention. [FN49] The specification must also set forth the best mode of making and using the invention. The specification must be filed in or translated into the English language and must be legibly written either *2-19 by a typewriter or mechanical printer in permanent dark ink or its equivalent. [FN50] If the translation is not filed with the application, the Patent Office will issue an office action and allow a given period of time to provide the translation. The translation, whenever filed, must be accompanied with a statement that the translation is accurate, and a processing fee as set forth in 37 C.F.R. § 1.17(i). [FN50.1] The following arrangement of the specification is generally provided as a guideline. [FN51] (A) Title of the Invention (B) Cross-Reference to Related Applications (C) Statement Regarding Federally Sponsored Research or Development (D) The names of the parties to a joint research agreement (E) Reference to a "Sequence Listing," a table, or a computer program listing submitted on a compact disc and an incorporation-by-reference of the material on the compact disc, stating the total number of compact discs including duplicates, the files on each disc their date of creation, and their size in bytes (F) Background of the Invention (G) Brief Summary of the Invention (H) Brief Description of the Several Views of the Drawing (I) Detailed Description of the Invention (J) Claims (K) Abstract of the Disclosure (L) Drawings (M) Sequence Listing
*2-20 As discussed in chapter 7, it is not recommended that all of these titles be used verbatim. Not all applications have all of these sections. For example, most applications do not include a microfiche appendix or a compact disc. Although the M.P.E.P. specifies the contents of a model patent application, the applicant has a great deal of discretion as to the form and contents of the application. This discretionary power is necessary to maintain the flexibility required for the many different types of patentable inventions. A brief summary of the statutory requirements for each section of the specification is presented below. A more detailed discussion is provided in chapter 7. The pages of the specification, including the claims and the abstract, must be numbered consecutively, starting with 1, the numbers being centrally located above, or preferably below, the text. [FN52]
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PLIREF-PATAPP § 1.3 How to Write Pat. Application s 1.3 (Cite as: PLIREF-PATAPP s 1.3)
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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 1: Introduction and When to File *1-6 § 1.3 Organization of This Book This book is organized logically to follow the steps recommended for preparing a patent application. First, in chapter 2, the various parts of a patent application are described, including the formal papers, drawings, specification, information disclosure statement, and a checklist for verifying the contents of the application. Chapter 3 describes working with the most important person, namely the inventor. This chapter discusses how to obtain the information needed to prepare a patent application from the inventor. Chapter 4 discusses novelty searches, which are generally conducted before preparing a patent application. The novelty search forms an integral part of the application process, and its advantages and disadvantages are discussed. The next three chapters, chapters 5, 6, and 7, present the meat of this book, namely preparing the drawings, claims, and specification, respectively.
*1-7 Typically, an information disclosure statement is filed with an application, and preparation of that document is described in chapter 8. Much of the discussion of the application preparation process is with regard to applications for utility patents for mechanical inventions, since most patent practitioners at some time need to write a mechanical application. However, applications applications for invention inventionss other than mechanical mechanical ones have unique features features that should should be discussed separately. Thus, chapters 9, 9A, and 10 are directed to different types of applications, namely design patent patent applicatio applications ns (chapter (chapter 9), provisiona provisionall patent patent applicatio applications ns (chapter (chapter 9A), and plant patent applicati applications ons (chapter 10). Moreover, applications directed to different technologies have their own special features and requirements. Thus, chapters 11 through 14 are directed to special technological fields, namely electrical (chapter 11), computer software (chapter 12), chemical inventions (chapter 13), and biotechnology (chapter 14). Since many patent applications are filed overseas, much money can be saved and better foreign patents can be obtained if the original United States application is prepared with a view to eventual foreign filing. Chapter 15 provides many hints and suggestions for writing an application that will serve as a good vehicle for obtaining foreign patents. Procedures are available for correcting defects in patents. One of these procedures, a reissue application, is discussed in chapter 16. PLIREF-PATAPP s 1.3 END OF DOCUMENT DOCUMENT
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PLIREF-PATAPP § 1.4 How to Write Pat. Application s 1.4 (Cite as: PLIREF-PATAPP s 1.4)
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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 1: Introduction and When to File *1-7 § 1.4 Terminology Used in This Book Certain Certain terminology terminology used in this book needs to be explained. explained. First, First, the term "patent practitioner practitioner"" is used to refer to both patent attorneys and patent agents. Occasionally, the term "patent attorney" may have been used rather rather than the more generic term "patent "patent practition practitioner." er." Unless specifica specifically lly indicated indicated otherwise otherwise by the context, context, when the term *1-8 "patent attorney" is used, it is meant also to include patent agents. The term "patent application" is used to refer to all papers generally included in the initial filing with the Patent Office. This includes the drawings, specification, claims, information disclosure statement, application cover sheet, and formal papers. The formal papers include such papers as the declaration, power of attorney, assignment, and small entity form. There are papers that are only occasionally included when filing a patent application, such as petitions to make special under 37 C.F.R. § 1.102. 1.102. These papers are not considered part of a patent application for the purpose of this book. Thus, petitions to make special are not discussed. The term "specification" technically includes all of the parts of the application that satisfy the requirements of 35 U.S.C. § 112, 112, including the description of the invention and the claims. [FN3] The term "specification" is used both ways in this book; sometimes it includes the claims and sometimes does not, depending on the context. The Patent Office is officiall officially y the Patent and Trademark Trademark Office. These two terms are used interchan interchangeabl geably y in this book. [FN3].. See 37 C.F.R. §§ 1.71[FN3] 1.71-1.75 1.75.. PLIREF-PATAPP s 1.4 END OF DOCUMENT DOCUMENT
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PLIREF-PATAPP § 1.5.1 How to Write Pat. Application s 1.5.1 (Cite as: PLIREF-PATAPP s 1.5.1)
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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 1: Introduction and When to File § 1.5 How Quickly Should the Application Be Filed ? *1-8 § 1.5.1 Reasons for Filing Promptly It is important to file a patent application as quickly as possible for many reasons, including the following: 1. If filing the patent application will serve as a constructive reduction to practice of the invention, diligence *1-9 in preparing the patent application could be a critical factor in determining the effective filing date of the application to win an interference proceeding pursuant to 35 U.S.C. § 102(g) and to avoid prior art. In one case, where a patent practitioner required six months to prepare the application, it was determined there was diligence under 35 U.S.C. § 102(g) if the attorney had a reasonable backlog of work that he took up in chronological order and carried out expeditiously. [FN4] However, However, an unexplaine unexplained d delay by the attorney or unreasonable deference to other business may negate diligence. [FN5] 2. In an interference proceeding in the Patent Office, it is beneficial to be the senior party, that is, the party with the earlier filing date. For example, if no evidence is provided by either party in an interference, the senior party wins. Delay in filing an application may result in an applicant's being a junior party rather than a senior party. 3. The later the filing date, the more potential there is for prior art to be available to be cited against the application. In fast-developing technologies, patents can issue and technical papers can be published with alarming speed. Even a one-day delay in filing can result in the development of new art. If the delay becomes sufficiently long, some of the prior art may become an unremovable statutory bar under 35 U.S.C. § 102(b).. 102(b) 4. An applicant' applicant'ss own publications publications and commercia commerciall activities activities can be statutory bars under *1-1035 U.S.C. § 102(b) if too much time is taken in preparing a patent application. 5. Most of the world is on a first-to-file priority system rather than the United States' first-to-invent system. If the United States application is to serve as a basis for foreign applications, then the United States filing date can be critical in determining who obtains foreign patent rights. There are situations in which the United States inventor was able to obtain a United States patent under the United States first-to-invent system, but was unable to obtain obtain foreign foreign patent rights because of the foreign first-to-fi first-to-file le system. If the United States application had been filed promptly, the United States applicant would have also been able to obtain both the United States and foreign patent rights. 6. Most of the world, including including such important important countries as Japan and Germany, has an "absolute novelty" system. Under that system, any "prior art" is available as a reference, and there is no one-year grace period as is available in the United States. Thus, a publication by the inventor one day before the United States filing date will not affect United States patent rights because of the one-year grace period under 35 U.S.C. U.S .C. § 102 102(b (b)). Howeve However, r, the same same public publicati ation on may preven preventt foreig foreign n patent patentss from from issuin issuing. g. Thus, Thus, by promptly filing the United States application, foreign priority rights can be saved. Accordingly, it can be very important to file an application promptly. § 1.5.3 presents techniques for speeding up the filing process.
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