The Art of Drafting a Patent Application: Getting Down to the Nitty Gritty

1. The Art of Drafting a Patent Application:Getting Down to the Nitty Gritty

2. Process Overview Provisional First Approach

3. Getting Started:The Invention Disclosure • The Invention Disclosure Form • Naming Inventors: • Inventors vs. Authors • Inventors must play a role in conception of invention • Brief description of invention • Prior public disclosures? • Dates of conception/reduction to practice • Supplemental Materials

4. The Invention Disclosure • What to disclose? • Identification of full scope of invention • Explore metes & bounds • How to disclose? • In writing most preferred, e.g., manuscripts, grant applications • Oral interview – expand on concepts contained in written document

5. Example

6. Example - Manuscript

7. The Invention Disclosure: The Prior Art • In ScientiaOpportunitas (In knowledge there is opportunity) • Know the prior art • What is new and non-obvious • Example case points of novelty • Simple physical mixture • Non-impregnated • Non-calcined

8. The Patent Application • Provisional Patent Application • Invention disclosure document may be the provisional application • Must provide support for invention ultimately claimed in non-provisional application

9. The Patent Application • Non-Provisional Application • Much more formal • PCT: A “patent application” in 148 countries throughout the world

10. Parts of a Patent Application • The Specification • Must be enabling of full scope of invention, not just a limited number of embodiments • Manuscript vs. Grant Application vs. Patent Application

11. The Specification • Road Trip - Hitting the Slopes! • The Manuscript Approach • Why go to the mountains? • How do we get there? • I-70 is East/West Highway in vicinity of Manhattan, KS • We suspected that driving I-70 west, we’d eventually run into mountains • Report results—after driving west for 500 miles, we encountered mountains • Future investigation – alternate routes to the mountains

12. The Specification • The Grant Application Approach • We’ve driven I-70 west and reached mountains • Problems with this approach – boring, not enough places to stop • We suspect there are better routes, but need funding to investigate

13. The Specification • The Patent Application Approach • Go south on K-177 to I-70 and turn right • Providing directions to achieve an outcome • Provide alternative directions, not just your preferred route • Disclosure should enable others to also reach the mountains

14. The Specification - Examples Supporting data • Specific working examples serve two purposes: • Demonstrate possession of the invention • Supports enablement requirement • How many examples are enough? • Varies from country to country • Some jurisdictions permit supplemental data to be presented to support (1) and (2) above.

15. The Specification – Examples Supporting data – continued • What level of detail is required? • Must “report” results, but need not “prove” results • The more critical the feature, the more detail should be provided (e.g., reaction conditions) • What about “failed” experiments? • May be helpful to demonstrate criticality of certain aspects of the invention • Some countries will require examples not ultimately covered by claims to be excised from application.

16. The Drawings • Drawings helpful to understanding the invention • PCT drawing quality issues: • Must be black & white – avoid colored lines! • Amenable to reproduction • Original, editable files a real help

17. Example – Experimental Setup

18. Example – Drawing Problems

19. Example - Solution

20. The Claims • Define scope of patent protection • Can be directed to compositions of matter, apparatus, or processes • Generally, “less is more” • In order to infringe, all elements of at least one claim must be present in accused product or process

21. Example

22. Example – Claim Preamble 1. A method of removing tars from a syngas stream and conditioning said syngas stream comprising the steps of: • Identifies the “type” of claim (apparatus, method, composition of matter) • Provides just enough background to set the stage for what follows • Not considered limiting on scope of the claim unless the body of claim “breathes life” into it

23. Example – Claim Body providing a catalyst comprising a dry, uncalcined physical mixture of discrete particles of a catalytic material and char, wherein said char is not impregnated with said catalytic material; contacting a syngas-containing stream having tars present therein with said catalyst under conditions for converting at least a portion of the tars into syngas components. • All steps performed by or at the direction of a single person or party. No divided infringement…yet. • Avoid infringement by eliminating at least one feature that the claim requires to be present.

24. America Invents Act • The AIA significantly encourages early (and often) filing of patent applications • U.S. patent laws are now based on “first-inventor-to-file” rather than “first-to-invent”

25. America Invents Act • File patent applications before any public disclosure, use, presentation, commercial activity, etc. involving the invention • Limited “grace period” still available • Use Non-Disclosure Agreements consistently, but do not rely on NDAs to fully protect invention • Inter-institutional inventions: Use written joint development agreements with confidentiality provisions and publication restrictions

26. America Invents Act • Invention Disclosure forms and streamlined protocol for submitting and evaluating inventions becomes even more important under the AIA

27. What’s patentable? • Patentable: • Machines, Processes, Compositions, Articles of manufacture • Not Patentable Subject Matter: • Laws of nature, natural phenomena, abstract ideas, mathematical algorithms, mental processes • Isolated DNA

28. Thank You!Hovey Williams LLP84 Corporate Woods10801 Mastin Blvd., Suite 1000Overland Park, KS 66210913.647.9050www.hoveywilliams.com