Patent Filing Advice
Preliminary disclosure of your invention
Once you have selected a practitioner, one of the first tasks and probably one of the most important task is to determine the scope of your invention. For this purpose, you should provide your practitioner with some information, one or more sketches, drawings and/or written description which describe sufficient detail so that the practitioner may research the field of interest, determine the closest prior references, products, publications (known collectively as “prior art”)and compare them to your disclosed invention. If you already have references which you believe are representative of the closest prior art, you should provide these to your practitioner as a starting point.
In order to be a patentable invention, your disclosure needs to have at least one significant feature which was not previously disclosed in the closest prior art reference. Patentability also requires that your “invention” not be a straightforward combination of elements (or steps of a process) which are already known from two or more prior art references.
At this point, a short paragraph is drafted which describes the scope of your invention emphasizing the elements or steps which are novel and significant.
Once an initial scope of your invention is found, it may be advisable to search again specifically using keywords based on the short paragraph describing your disclosure. The short paragraph will eventually be used as a basis for a claim which defines the scope of the invention in legal language in the patent application. The second or even a third search may be used recursively to further refine the claim that will eventually define the scope of invention in the patent application to be filed. The extra searching is intended to mimic the searches performed by a patent Examiner and will reduce the chances of receiving an outright novelty rejection of overly broad claims.
Now is the time for the inventors to brainstorm in cooperation with the patent practitioner in order to come up with the most comprehensive single inventive concept which best describes the invention.
Online patent authorities vary in the amount of information disclosed about patent applications, as well as the amount of access for an applicant/ inventor to file things with respect to their patent applications online. Some web interfaces are easier to use. Here are some links:
Below are links to Prior Art Data Base Searches:
Need some clues as how to respond to an office action from various patent jurisdictions?
Below are some useful blogs/ websites:
- Patentably Defined (deals with items with respect to USPTO)
- PEER TO PATENT (provides a comparison of examination strategies of various jurisdictions via ‘crowd sourcing’ techniques). Crowd sourcing is the practice of obtaining needed services, ideas, or content by soliciting contributions from a large group of people, and especially from an online community, rather than from traditional employees or suppliers.
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“We manage patent portfolios of well known companies. We achieve the most appropriate patenting strategy for protection of their inventions. We view our clients as partners and work collaboratively with them to achieve results they can measure.”
Dr. Hanan (Allan) Farber • Reg. US Patent Agent and Patent Attorney (Israel)
ABOUT DR. FARBER
Dr. Farber is a patent attorney registered to practice patent law before the Israel Patent Authority and as a patent agent before the United States Patent and Trademark Office. He obtained his A.B degree in physics from Princeton University and a PhD degree in physics from Brandeis University with expertise in condensed matter physics. He held professional positions in: US Army Materials Research Laboratory, Israeli companies including El-Op, Ophir Optronics, Foxcom Wireless (now Mobile Access), and Optical Access (MRV).
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We’re here to help answer your questions. Filing for a Patent can be complicated, we are on hand to help you determine the patentability of your product or process and identify patentable features at no cost for the initial consultation. looking forward to hearing from you.