From Invention to Patent

A Scientist and Engineer's Guide

Steven H. Voldman

• Publisher: Wiley
• Year: 2018
• Print ISBN: 9781119125259
• eBook ISBN: 9781119125273
• Edition: 1
• Topic: Law
• Subtopic: Intellectual Property Law
• Index: Law

Invention and patents continues to be an important issue in technology and our global economy. Invention and Patenting provides a clear picture of how to be a prolific inventor, to understand patents, and the patent process.  It provides an illuminating insight into the writing of invention disclosures to patents from the submission process to final drafts.  The book shows how to communicate effectively with patent lawyers and patent examiners, teaching the language of "legalese."   

This book is unique in covering both the early invention process to final patent drafting to provide high quality patents in technologies.

Key features include:

• How to become an inventor, how to invent, to what is invention;
• How to write an invention disclosure to writing a patent;
• Examples of utility, design, and plant patents;
• How to prepare the background section, brief listing of figures, detailed description of the invention, claims, abstract to artwork;  
• Using patent search engines;
• Writing independent and dependent claims;
• Analyzing office actions of the US and European patent offices;
• How to write an office action response and amending claims;  and,
• Examples of Office Action responses, preliminary amendments, to notice of allowance response;

Invention and Patenting is the first book by an engineer and inventor from a technologist's point of view. It is an essential reference for engineers and inventors. It is also useful for graduate and undergraduate students in technology and the sciences.

1
Introduction

1.1 Introduction

Intellectual property (IP) is a key goal of corporations across the entire world to achieve success. Inventions and patents are part of the path to build and innovative corporation in today’s world. This shared goal is not of just interest in the United States and Europe but is a goal across South America, Asia, the Middle East, to Africa. With this increased interest, there are more intellectual property organizations [1–7], books [8–17, 23–27], search engines [18, 19], and patent short courses [20–22].

In 2006, I was requested by an IBM management team to build a two‐hour lecture on how to invent [20, 21]. A manager adjacent to my office noted that my productivity in the invention submission process exceeded his sixty‐man team of software developers for supply‐chain software. I provided a two‐hour lecture to his team on how to invent and how to become an inventor. We set corporate goals for the team. The manager asked what the goal should be for his team. I kept it simple. I said you have 60 employees, and 52 weeks per year; I said one invention submission a week, which is approximately one submission per employee per year. Prior to establishing this goal, there were three submissions for the entire team; after establishing the goal, the team was submitting above the target.

In 2007, I was requested to build an invention course in Malaysia. It was stated that the Malaysian government wanted to improve its IP portfolio. I built an all‐day invention course with 80 attendees of the Ministry of Science and Technology (MOSTI) in the convention center in Putrajaya, Kuala Lumpur, Malaysia [20, 21]. The course was expanded into a two‐day course for I Pham, at Universiti Science Malaysia (USM) with attendees from pharmaceuticals, university faculty, bio‐technologists, and chemists. This also acquired interest in Colombo, Sri Lanka, where the course was brought the following year to software developers. This was expanded into a second advanced course [22].

During that time, there were many attendees who requested a text be written based on the course. And, here it is!

1.1.1 Intellectual Property

What is intellectual property?

Formally, intellectual property is creations of the mind. A creation of the mind is creative works or ideas embodied in a form that can be shared or can enable others to re‐create, emulate, or manufacture them. There are four ways to protect intellectual properties (Figure 1.1) [1]:

• Patents
• Trademarks
• Copyrights
• Trade secrets.

Figure 1.1 Intellectual property.

1.2 Patent

In this section, patents will be discussed, addressing what a patent is and why you should patent your innovations, ideas, and inventions.

1.2.1 What Is a Patent?

What is a patent?

A patent is a property right granted by a government to an inventor “to exclude others from making, using, offering for sale, selling or importing” the invention.

The U.S. definition is “ A patent is a property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted [1].

1.2.2 Patents and the US Constitution

The concept of providing protection for the inventors is contained within the U.S. Constitution. The U.S. Constitution states the following [1]:

Congress shall have the power …. To promote the progress of science and useful art by securing limited times to authors and inventors the exclusive right to their respective writings and discoveries. (U.S. Constitution, Article 1, Section 8, 1790).

The idea of protection of intellectual property is built into the U.S. Constitution for patents, copyrights, trademarks, and trade secrets.

1.2.3 Why Patent?

A common question that people have is why they should patent an invention.

A patent is a means in which a government can protect your rights as a citizen to y...

Table of contents

• Cover
• Title Page
• Copyright
• Dedication
• Table of Contents
• About the Author
• Preface
• Acknowledgments
• 1 Introduction
• 2 Invention
• 3 Patents and Patent Languages
• 4 Patents
• 5 Patent Drawings
• 6 Claims
• 7 Office Actions
• 8 Invention Generation Methodologies
• 9 Corporate Patent Strategy
• 10 Expert Witness
• A Text for Invention Disclosure
• B Text for Invention Disclosure Reviewer Form
• C Text for Novelty Search Report
• D USPTO Office Action Details of Contents
• E USPTO Office Action Sections
• F European Union (EU) Office Action
• G European Union (EU) Office Action Response
• H US to EU Attorney Letter – Office Action Response
• I Petition for Submitting Color Photographs or Drawings
• J Patent Cooperation Treaty
• K Certificate of Correction
• L Corrected Notice of Allowance
• M Notice of Allowance
• N Preliminary Amendment
• O Submission of Corrected Drawings
• Glossary of Terms
• Index
• End User License Agreement