PROVISIONAL APPLICATION WORKSHOP

1. PROVISIONAL APPLICATION WORKSHOP PENDING BIO-MEDICAL CASES Law Office of David McEwing PC www.HoustonPatentLaw.com

2. PROVISIONAL APPLICATION WORKSHOP • Invention = Conception (Idea) + Demonstration (Reduction To Practice) • Reduction To Practice Can Be A Prototype. • Patent Application (Teaching Enablement) - Constructive Reduction To Practice.

3. PROVISIONAL APPLICATION WORKSHOP • YOU DON’T NEED A PROTOTYPE OR WORKING MODEL TO FILE A PROVISIONAL APPLICATION!

4. PROVISIONAL APPLICATION WORKSHOP • Must have ENABLEMENT! §112 • A written description of the invention and of the manner and process of making and using it, in full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same and shall set forth the best mode contemplated by the inventor.

5. PROVISIONAL APPLICATION WORKSHOP • For a patent eligible invention (§101) Non-provisional must meet tests for: • Novelty §102 • Non-obviousness §103 • Enablement §112(a) • Claims §112(b)

6. PROVISIONAL APPLICATION WORKSHOP • What is patent eligible? §101 Everything except • Natural laws (math algorithms) • Natural phenomena • Abstract ideas • Patent eligible subject matter must still be shown to be novel, non-obvious and enabled for patent to issue.

7. PATENT APPLICATION WORKSHOP • What is patent eligible subject matter? §101 IMPORTANT TOPIC FOR • Personalized medicine. • Computer software. • Also remember Novelty, Non-obviousness and Enablement

8. SOFTWARE PATENTS • “It is simply ridiculous that after 40 years of debate, we still do not have an answer to the simple question of whether (or when) software is patentable.” Dennis Crouch Patently O blog

9. PROVISIONAL APPLICATIONS • Provisional applications: get filing date (establish priority over competitors) Quick procedure No IDS (prior art disclosure) No inventors oath or declaration No claims Cursory review for minimum filing requirements No formalities (need to use USPTO cover sheet SB/16, documents in pdf format) inexpensive ($65) File online. www.uspto.gov Application not published

10. PROVISIONAL APPLICATION • Provisional applications continued Only effective for 12 months/automatically abandoned unless utility (non-provisional) application filed. Follow-on utility application must claim priority to provisional or it is lost. (Claim priority through the USPTO Application Data Sheet AIA/14) Cost to file a utility application is $500

11. Provisional Application • Provisional applications continued • You can disclose your provisional application. • For example, show to potential investors. • Provisional application is a definition of your invention. • It is the definition of your property

12. PROVISIONAL APPLICATION • Have organized format • Double space • Title • Introduction (What is the problem solved) • Detailed description (Teach how it solves the problem) See next page • Drawings (with numbers) • Explain drawings in detailed description. • Convert all documents to pdf’s. • Cover sheet saved to your computer.

13. PROVISIONAL APPLICATION WORKSHOP • Critical to teach Enablement. • WRITE DETAILED DESCRIPTION AS INSTRUCTION MANUAL FOR PERSON SKILLED IN THE ART HOW TO USE OR MAKE THE INVENTION. • Include details N.B. what appears trivial now can be critical later. (See next page) • The application is NOT an Executive Summary

14. PROVISIONAL APPLICATION WORKSHOP • Don’t need to define “screws”, “plastic” “hook and loop” (Velcro) Don’t need to define “lumen”, “aneurysm”, “venous”, “arterial”, “arterial occlusion” … but it doesn’t hurt.

15. PROVISIONAL APPLICATION WORKSHOP • Provisional filing: Patent Pending 61/xxx,xxx • Utility Application gives right to exclude BUT NOT right to use invention. Prior Art: A+B+C Your Invention: A+B+C+D

21. PROVISIONAL APPLICATION WORKSHOP • Note all components are numbered. • How to describe device and teach its operation? • One solution is to describe what it does step by step. • Also describe what are its essential components. (Describe the parts) • Describe it as a system of components • Describe the method of its operation.

22. PROVISIONAL APPLICATION WORKSHOP • A method of filling syringes comprising positioning a syringe under a moveable vial; moving the vial down on the needle to penetrate a septum, extending the syringe plunger to draw liquid from the vial into the syringe, elevating the vial above the needle, rotating a second vial above the needle, etc. (Omits syringe plunger tool and motors)

23. PROVISIONAL APPLICATION WORKSHOP • Automated filling of syringes using an apparatus (100) comprising a programmed CPU controlling a plurality of servomotors. A syringe (211) is vertically placed in a fixed position with the syringe needle (202) pointed up. A pivoting, motor controlled syringe plunger tool attaches to the syringe plunger. (221) The syringe plunger can be controllably moved up or down by operation of the syringe plunger tool (171).

24. PROVISIONAL APPLICATION WORKSHOP • The vertical syringe is positioned beneath a rotatable and elevatable plate holding uncapped vials containing septums. The plate is motor controlled. The position and elevation of the plate can be controlled by the programmed CPU in communication with at least one motor. There can be one motor controlling plate rotation and a second motor controlling elevation.

25. PROVISIONAL APPLICATION WORKSHOP • A device for automated filling of syringes comprising a CPU controlling a plurality of motors, a motor controlled elevatable and rotatable plate holding inverted vials, a motor controlled carousel holding a plurality of syringes wherein the syringe needles are pointed up and the carousel can position the syringe needle beneath the inverted vial, etc.

26. PROVISIONAL APPLICATION WORKSHOP • Endovascular Aneurysm Clip and Method • Title • Field of Use (Problem solved) • Explanation of drawings (handwritten) • Each drawing is labeled as Figure. • Each drawing component is numbered. • Description of drawings in Specification incorporating component numbers

27. PROVISIONAL APPLICATION WORKSHOP • Invention described by structure (pgs 2-5) • Invention described by method (pgs 5-7) • Reference to additional embodiments (broadens coverage). • Method and system claims included (further opportunity to define invention).

28. www.USPTO.GOV (to file your provisional application)

41. PROVISIONAL PATENT APPLICATION WORKSHIP • Attach your provisional application (saved as a pdf with a Title) • Use the scroll down menu to select the provisional application category. • Attach your completed coversheet. • Use scroll down menu to label it. • Validate • Compute fee ($65) • Click on Submit • Pay fee with credit card and print out receipt.