TMS - Drafting a Patent Application.pptx

How to draft a patent application

1. Step by Step Guide on How to File a Provisional Patent Things to know and things to do Resource Person: Dr. Haris Masood Dean – CS (University of Wah) 1

2. Contents of the presentation Introduction and Background Can you file a patent? Drafting a patent Types of patents Filing a patent Components of a patent Timelines and Costs IP Litigation UW IP Policy Marketing your patent 2

3. Introduction – what is a patent? A proof of record that a product or process is invented by you. OR A communication bridge between inventor and society. It can offer protection for your idea. It gives you the right to sue someone using your product/process. Lasts 20 years . Traverse patent databases 3

4. Difference between patent and a publication A patent is a techno-legal document. The focus is on obtaining exclusive rights to an invention (a product or a process). Commercial relevance. A publication is a technical document. The focus is on disseminating information. Research oriented. 4

5. Can you file a patent? 3 factors to consider: Novelty Innovation (Inventive) Industrial application Novelty (New): Anything that has been published cannot be patented . Innovative (Inventive): Anything that sufficiently builds upon prior work and is non- obvious . Industrial application (Useful): Anything that is capable of use and has an identifiable benefit . 5

6. Can you file a patent? Contrary to morality/public order (e.g., gambling) Naturally occurring substances. Presentation of info (e.g., traffic signals). Intangible (e.g. time machine). Scheme of doing business. 6

7. Drafting a patent The details 7

8. Types of Patent Applications Sr. No. Name Contents Purpose Advantage/Disadvantage 1. Provisional Application Incomplete application (Descriptions but no claims ). Technical document. (1 year period provided for complete filing). Example: PhD thesis. Used in case of urgency (accidental disclosure, competitive field, inventor leaving institution). + Avoiding claims (reduces time for filing). + Allows selling, advertising. + Cheaper upfront (Rs. 2025) Premature public disclosure. Incomplete filing (may lose actual claim to someone else). Implication not fully understood. 2. Complete Application Describing and specifically claiming invention. Techno- legal document. Provides a full document for claiming patent. + Detailed descriptions and instructional drawings. + Complete filing Time- consuming process. Requires patent attorneys. 8

9. IPO- Pakistan (ipo.gov.pk) Provides step- by- step information regarding filing of patents. Pdf available on IPO- Pakistan website 9

10. Most Important Considerations File First, Publish Later Preserving Novelty A patent can only be granted for an invention that has not yet been disclosed to the public 10 Novelty is destroyed with: your own publications, lectures, posters, thesis, dissertations and other academic papers (if published) final reports (if published), research applications (if published), guided tours, press releases & presentations at fairs

11. Filing a patent application Application forms Fees: Rs. 6,750 Patent specifications Patent Application Patent Office (Acknowledgement Receipt within one week.) 11

12. Components of a patent PERSONAL INFORMATION Applicant Inventor LEGAL INFORMATION Application status Patent Claims TECHNICAL INFORMATION Background Summary Detailed description Method BIBLIOGRAPHICAL INFORMATION A mix of personal and technical information. 12

13. Drafting a patent application Bibliographic data Abstract + Graphical Abstract Specifications Claims 13

14. Drafting a patent application Bibliographic Data Abstract + Image Specifications Title Filing date Priority date (for provisional applications, up to 1 year) Assignee name Inventor name Agent name 14

15. Drafting a patent application Title Filing date Priority date Assignee name Inventor name Agent name Bibliographic Data Abstract + Image Specifications A title should sufficiently indicate the subject matter of the invention. It should not be too broad or too narrow . Patent 144187: HERBICIDAL COMPOSITION COMPRISING A BENZOYLPYRAZOLE COMPOUND WITH IMPROVED HERBICIDAL ACTIVITY Patent 143845: SOLAR ROASTER FOR THERMAL PROCESSING OF NUTS AND BEANS 15

16. Drafting a patent application Bibliographic Data Abstract + Image Specifications Title • The Assignee or Applicant is the party interested in owning the legal rights of the invention. Typically, Filing date, they are paying for the patent and subsequent legal Priority date cases (University, Institution, RCD Facility, etc.). Assignee name • The Inventors are of equal importance to one another. They are the responsible technical party of Inventor name the application process. Agent name • The Agents are the responsible legal party of the application process. In other words, they handle the legal aspects of patent filing. 16

17. Drafting a patent application Bibliographic Data Abstract + Image Specifications An abstract should be less than two pages. It should convey all the technical aspects of the invention. The abstract should be completely relevant to details of the document (provided in specifications). An image (e.g. instructional drawing or representative chemical formula) is typically provided with the abstract, where possible. 17

18. Drafting a patent application Bibliographic Data Abstract + Image Specifications 18

19. Drafting a patent application Bibliographic Data Abstract + Image Specifications Notice the use of words “ mechanically disintegrating ”, “ acid ”, and “ alkali ”. These are left broad enough such that any mechanical disintegration process, acid or alkali can qualify in this patent. No image was provided or needed in this patent. 19

20. Drafting a patent application Bibliographic Data Abstract + Image Specifications The lengthiest part of the application. Background and shortcomings. Detailed descriptions of the invention. Drawings. Claims . 20

21. Drafting a patent application Bibliographic Data Abstract + Image Specifications Background and shortcomings Detailed descriptions of the invention. Drawings. Claims . Background and shortcoming provides the need for this patent. In other words, the justification for innovative and commercial relevance aspects of the patent. 21

22. Drafting a patent application Bibliographic Data Abstract + Image Specifications Background and shortcomings Detailed descriptions of the invention. Drawings are included for better Drawings. understanding of Claims . Detailed descriptions should the descriptions. support the claims of the patent. They could show It should describe how to make technical info (e.g., the invention, and how to use parts of a machine) the invention. or illustrate the process. 22

23. Drafting a patent application Bibliographic Data Abstract + Image Specifications Background and shortcomings Claims define the scope of Detailed descriptions. protection for the innovation. This is the legal part of the patent Drawings. document, and most contested. Claims . It should be clear and concise. It should reflect the need and novelty of the presented invention. 23

24. Drafting a patent application Bibliographic Data Abstract + Image Specifications Background and shortcomings • Use open-ended phrases in claims: “ comprising of ”, instead of Detailed descriptions. “ consisting of ”. Drawings. • As this is a legal part of the document, Claims . attorneys are needed to navigate the proper phrasing and vocabulary. Goal: Include as much as possible in your patent ownership for the most value and “protection”. 24

25. Drafting a patent application Background and shortcomings Detailed descriptions. Drawings. Claims . Bibliographic Data Abstract + Image Specifications Use open-ended phrases in claims: “ comprising of ”, instead of “ consisting of ”. Patent 144187: HERBICIDAL COMPOSITION COMPRISING A BENZOYLPYRAZOLE COMPOUND WITH IMPROVED HERBICIDAL ACTIVITY Patent 143845: SOLAR ROASTER FOR THERMAL PROCESSING OF NUTS AND BEANS Different fields can have different leeway in claims. 25

26. Timelines and Costs Sr. No. Type Cost Time taken Any other costs 1. Provisional Patent Rs. 2,025 15 days Remainder of Rs. 4,725 upon submission of complete specifications 2. Complete Patent Application Rs. 6,750 1 year Patent attorney fees. (Up to Rs. 100,000) A provisional patent is not examined ; it is simply a ‘ holding place ’ for patents until complete submission within 12 months . Expected time from patent submission to acceptance: ~12 months on average. Incomplete or inaccurate patent submissions may drastically increase the time taken. 26

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28. Intellectual Property (IP) Litigation If someone used or earned from your patented invention without your consent, you can take them to court. This is expensive and time- consuming. For example, patent filing takes only Rs. 6,750. The court battle may require up to Rs. 9,000,000. Court battles are also time- consuming (>2 years), and the burden of proof is often on the pursuant (you). Hence, a sole patent ownership is not recommended , unless you have an industrial stake in the patent. 28

29. Submissions Patent application can be filed by mail or hand delivery on the following addresses:  Basement of Lahore Chamber of Commerce Building 11-Shahrah-e-Aiwan-e-Sanat-o-Tijarat (Near China Chowk), Lahore, Pakistan.  IPO HQs, 3rd Floor NTC building, sector G-5/2, Islamabad, Pakistan.  Controller of Patents, the Patent Office, Plot # ST 1 & 2, New Broad 29

30. The aftermath How to utilize an accepted patent as an academic 30

31. Utilizing research in industry University IP Policy ORIC Faculty (inventor) Industry RCD 31

32. UW IP Policy Any IP developed by an inventor attributable to UW will be disclosed within 1 month to ORIC . If the IP has been disclosed, UW is obliged to find the commercial potential. ORIC will evaluate commercial viability and patentability of IP. 32

33. UW IP Policy The ORIC will identify commercial potential of inventions in UW. The inventor will collaborate with ORIC to discuss technical suitability and viability 33

34. UW IP Policy Net revenue will be shared between owner (UW) and inventors on mutually agreed terms and conditions. An Intellectual Property Review Committee (IPRC) will be constituted to monitor IP advancement and agreements in UW. 34

35. Marketing your Patent Generate revenue Requires significant cost and time investment. Losses to be covered by the owner. License to interested 3 rd party Possibility of receiving regular royalties. Aim towards competing companies, not companies selling similar products or employing similar techniques. Sell to interested 3 rd party One time payment. 35

36. Marketing your Patent - Tips Provisional patent A university portfolio for commercialization Conduct showcases at an HEI or larger level for industries Inventors should participate by gauging technical relevance Reach out to relevant individuals on LinkedIn Do not share the specifications! 36

37. International Patent (USPTO) 37

38. Plant Design Utility 38 Types of patents

39. Types of Patents 39 Utility patent : may be obtained by anyone who invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. The term “ composition of matter ” relates to chemical compositions and may include mixtures of ingredients (chemicals) as well as new chemical compounds. Examples may include a pharmaceutical drug or shampoo. An example of a machine may include a bicycle, an apparatus, or device. The term “ manufacture ” refers to articles that are made or manufactured. Examples may include a tire or an integrated circuit. Design patent : may be obtained by anyone who invents a new, original, and ornamental design for an article of manufacture. A design consists of the visual ornamental characteristics embodied in an article. The subject matter of a design patent relates to the configuration or shape of an article. Plant patent application : may be filed by anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

40. Provisional utility applications 40 A provisional application for patent (provisional application) is a U.S. national application filed in the USPTO for utility and plant inventions. – Design inventions are not eligible for filing provisional applications. Provides a low- cost way to establish an early effective filing date (priority date) with fewer formalities. A provisional application does NOT issue as a patent, but only a later- filed non - provisional application may issue as a patent and benefit from the provisional application filing date. Provides a 12- month window to file corresponding utility nonprovisional patent application in order to benefit from the priority date of the provisional application. Provisional application is abandoned automatically at 12 months and is not examined. 40

41. Provisional utility applications 41 Additional benefits of provisional applications: Patent term measured from filing date of subsequent nonprovisional application Patent term is currently 20 years from the date of filing Provides up to an additional 12 months of protection on your invention based on filing of the non - provisional. Term patent pending allowed to be applied Inventors may use term during time period after patent application (provisional, nonprovisional, design, or plant) has been filed, but before patent has issued 41

42. Provisional utility applications 42 Filing requirements: Title of invention Name(s) of all inventors Inventor(s) residence(s) Correspondence address Attorney information (if applicable) U .S. government interest (ownership) (if applicable) NOTE: The use of USPTO form PTO/SB/16 (Provisional Application for Patent Cover Sheet) is encouraged to provide the above information. A fillable form can be downloaded here: www.uspto.gov/sites/default/files/documents/sb0016.pdf 42

43. Provisional utility applications 43 Filing requirements (continued): A detailed written description of the invention (specification), including: Background of the invention Summary of the invention Drawings describing the invention A detailed description of the invention Filing fees NOTE: A more detailed guidance for writing a specification can be found in the Manual of Patenting Examining Procedures (MPEP) Section 608 (see link): www.uspto.gov/web/offices/pac/mpep/s608.html 43

44. Provisional utility applications 44 Title of the Invention : should be brief but technically accurate and descriptive, preferably from two to seven words . Background : A paragraph(s) describing to the extent practical the state of the prior art or other information disclosed known to the applicant. Also, the problems involved in the prior art or other information disclosed which are solved by the applicant’s invention should be indicated. Summary of the invention : S hould set out the exact nature, operation, and purpose of the invention. the summary should be directed to the specific invention being claimed, in contradistinction to mere generalities of the invention. The subject matter of the invention should be described in one or more clear, concise sentences or paragraphs. Drawings : F or the understanding of the subject matter sought to be patented. A Detailed Description : The detailed description must be in such particularity as to enable any person skilled in the pertinent art or science to make and use the invention without extensive experimentation. Applicant is permitted to use his or her own terminology, as long as it can be understood. The subject matter of the invention should be described in one or more clear, concise sentences or paragraphs. 44

45. Provisional utility applications Fees: Low- cost submission to establish filing date $140 small entity (individual or a small business (fewer than 500 employees) $70 micro entity (a gross income below three times the U.S. median household income) For micro entity status , the following certifications are made: Qualifies as a small entity (less than 500 employees); Has not been named as an inventor on more than four previously filed patent applications; Did not, in calendar year preceding the calendar year in which the applicable fee is paid, have a gross income exceeding three times median household income; and Has not assigned, granted, or conveyed (and is not under obligation to do so) a license or other ownership interest in the application concerned to an entity that, in calendar year preceding the calendar year in which applicable fee is paid, had a gross income exceeding three times the median household income. To obtain a Micro Entity Certification, the applicant must fill out the Certification of Micro Entity Status form (PTO/SB/15A). The form can be downloaded here: www.uspto.gov/sites/default/files/forms/sb0015a.pdf 45

46. END. Questions and Answers 46