Wednesday, 15 March 2017

How to Apply for an International Patent

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How to Apply for an International Patent

Part1

Determining the Patentability of your InventionImage titled Apply for an International Patent Step 1

  1. 1Determine if you have a patentable invention. U.S. law sets forth the following requirements for something that can be patented:
    • It must be invented or discovered by a person;
    • It must be a new and useful process, machine, manufacture, or composition of matter; or
    • If not new, it must be an improvement on a useful process, machine, manufacture, or composition of matter.[1]
     Image titled Apply for an International Patent Step 2
    2Verify your invention is not already patented. If your invention meets the requirements for a patentable invention, you must conduct a search to determine whether your idea has already been patented. The US Patent and Trademark Office recommends you follow the following seven steps to search for a patent:
    • Brainstorm terms that are related to your invention. When coming up with terms, think about words relevant to your inventions purpose, make-up, and use.
    • Search for your terms on the USPTO website at: http://www.uspto.gov. You should conduct your search in the following format "CPC Scheme [plus keywords(s) describing invention]." This search should help you locate the invention’s Cooperative Patent Classification (CPC).
    • Once you have located the CPC, review the linked definition to make sure that the definition fits your invention.
    • Search the USPTO patent database, http://appft.uspto.gov, for all patents matching your CPC. After identifying the patents, quickly skim the first page of each patent to determine whether it matches your own invention. If there is a similarity, read the documents more closely including descriptions of the intended use of the invention and any drawings of the invention.
    • If your initial search does not turn up any similar patents, expand your search by performing a key word search on the http://appft.uspto.gov website. You can also search additional databases at http://worldwide.espacenet.com and http://www.uspto.gov/ptrc.[2]
     
    Image titled Apply for an International Patent Step 3
    3Hire a patent lawyer. Once you have conducted your initial search and found no matching patents, you should hire a patent lawyer. The filing of domestic and international patents requires significant paperwork, legal knowledge of patent law, and experience. While you can attempt to complete the filings yourself, it is strongly advised that you hire someone who has previously applied for patents. This attorney should be able to streamline the process, ensure that you don’t miss any deadlines, and prepare your paperwork so that it meets the requirements.
     
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Part2

Applying for a Patent in Your RegionImage titled Apply for an International Patent Step 4

  1. Determine if you are applying for a provisional or non-provisional patent. A provisional application is essentially a placeholder where you begin to protect your invention before it is a fully formed or completed idea. If you file a provisional application, you will eventually need to file a non-provisional application within one-year of filing the provisional application.
    • A provisional application may be right for you if you are unsure of the commercial value of your invention but you want to protect your invention. It is less expensive to file a a provisional application and you have 12 months to determine if you want to move forward with the cost and time of filing a non-provisional application.
    • If you have already determined the commercial value of your invention and intend to move forward with the production of the product, you should apply for a non-provisional patent and save yourself the time of completing two applications.[3]
     
    Image titled Apply for an International Patent Step 5
    2Draft a provisional patent application. The provisional patent application provides a less expensive means for applicants filing for U.S. patents. A provisional patent means that the patent is pending. You can file a provisional application without a formal patent claim, oath, declaration, or an information disclosure statement.[4] A provisional patent application must include:
     
    Image titled Apply for an International Patent Step 6
    3Draft a non-provisional patent application. Unlike the provisional patent application, a patent officer examines a non-provisional patent application and if it meets all of the requirements, a patent will be issued. In order to submit a complete non-provisional patent application, your application must include:
    • A Utility Patent Application Transmittal Form, which lists the required documents for the application and contains the inventor(s) signature or the signature of the inventor’s attorney.
    • A Fee Transmittal Form that specifies the fees that are being submitted with the application.
    • A signed Application Data Sheet that lists inventor and/or applicant information, an address for correspondence, a description of the domestic benefit, and any foreign priority or assignee information.
    • A certification of small and micro entity status, if applicable. If you qualified as a small and micro entity, you must submit one of the following forms: Certification based on gross income or Certification based on institution of higher learning.
    • Any specification documents, which are documents that describe the invention and how it is used. For a full list of specification requirements visit: http://www.uspto.gov/web/offices/pac/mpep/s608.html#d0e44589.
    • All drawings that are necessary to understand the invention.[7]
    • The inventor’s oath or declaration that states the application was made by or on behalf of the inventor, that the invention is believed to be an original invention, and an acknowledgement that any false statement is punishable under the law and by imprisonment. The inventor must sign the document.[8]
    • You can find a link to patent forms at: http://www.uspto.gov/patent/patents-forms.
     
    Image titled Apply for an International Patent Step 7
    4File your patent with the USPTO. Both provisional and non-provisional applications for patents can be filed in the following ways:
     
 
Part3

Applying for an International PCT Patent

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Overview of the PCT System
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Comparison of Paris and PCT Route
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Patent Cooperation Treaty (PCT) filing flowchart
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PCT COUNTRIES IN GREEN

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  1. Be mindful of the 12-month deadline for filing an international patent under the Patent Cooperation Treaty. The PCT is an international treaty that allows member countries to file a single international patent application that would be recognized by the other 148 member countries. This patent application must be filed within twelve months of the date that you filed your provisional or non-provisional application with the USTPO.
     
    Image titled Apply for an International Patent Step 9
    2
    Check foreign country deadlines. Typically, once you submit your PCT patent application you will have between 18 and 30 months to then file your patent in individual countries. This is called “nationalizing” your patent and is discussed below. Before you file your PCT patent, you should be aware of the deadlines so that you can plan your patent application timeline accordingly.[10]
     
    Image titled Apply for an International Patent Step 10
    3
    Draft a PCT patent application. The PCT patent application requires a number of documents and information for it to be deemed complete. You should consider hiring an attorney that specializes in patent law and is experienced in PCT patents to assist you in drafting your application. Your PCT application must include the following:
    • A PCT Request form that sets forth many of the requirements of the PCT application. The request contains: a petition that the application be processed; the title of the invention; the name of the inventor and/or agent; the inventor’s residence and address; and the inventor’s choice of which international searching agencies he or she wants to conduct the international patent search. The form is located at: http://www.wipo.int/pct/en/forms/
    • The Description must explain the invention in a clear and complete manner. The description should include the following parts: “Technical Field,” “Background Art,” “Disclosure of Invention,” “Brief Description of Drawings,” “Best Mode for Carrying Out the Invention” or, where appropriate “Mode(s) for Carrying Out the Invention,” “Industrial Applicability,” and, if applicable, “Sequence Listing” and “Sequence Listing Free Text.”
    • The Claims section must define the protection that is being sought for the invention.
    • The Drawings section include any technical drawings, perspectives, sections, cross-sections, or other diagrams that are necessary for a reviewer to understand the invention. [11]
    • For applications filed via EFS-Web the application must be in PDF format and on paper size A4.
    • All documents must have a minimum resolution of 300 dpi.[12]
     
    Image titled Apply for an International Patent Step 11
    4
    File PCT patent application. A PCT patent application can be filed with the International Bureau of the World Intellectual Property Organization (WIPO) in the following ways:
    • Electronically via the ePCT system located at https://pct.wipo.int/LoginForms/epct.jsp; or on the PCT-SAFE system located at http://www.wipo.int/pct-safe/en/.
    • By fax to (41-22) 910 06 10 (or (41-22) 338 70 60 in case of transmission difficulties). You must forward the original document within 14 days to the address listed below.
    • By mail or hand delivery to: International Bureau of WIPO, PCT Receiving Office Section, 34, chemin des Colombettes, 1211 Geneva 20, Switzerland.
     
    Image titled Apply for an International Patent Step 12
    5
    Pay required fees. In order got your patent application to be reviewed, you must pay the required fees.
     
    Image titled Apply for an International Patent Step 13
    6
    Wait for international patent search to be conducted. Once you have submitted your PCT application, one of the international patent search companies will perform a patent search and write a report as to the patentability of your invention. If your patent is accepted, your application will be published along with the patentability opinion. You also have the option to withdraw your application.[14]
     
    Image titled Apply for an International Patent Step 14
    7
    Nationalize your foreign patent. Once you have submitted your application and received a favorable opinion on patentability, you must “nationalize” your PCT application in any country that you want to grant you a patent. For example, if you want France and China to grant you a patent, you must submit your PCT application to each of those countries.
    • As discussed above, each jurisdiction has specific deadlines for when you must nationalize your application. You must file your application before the deadline passes.
    • Typically for nationalization you will have to pay a fee, submit some documentation and potentially translate your application. Since each country has different rules, it is wise to hire a local attorney in the country that you are seeking patent protection. Your U.S. attorney should be able to set up this arrangement and work with local lawyers to ensure the application is filed correctly.
    • You want to nationalize your application where you have expected or actual sales of your invention. The cost for nationalization can run between $4000 and $7000 per country.[15]
     
    Image titled Apply for an International Patent Step 15
    8  Enforce your patent. If someone uses your patented invention without permission. This is called patent infringement. In order to secure the right to sue for patent infringement, you must have nationalized your patent in the foreign jurisdiction where your patent was used unlawfully.
    • Even though countries may allow a lawsuit for patent infringement, not all countries have the legal mechanisms in place to actually enforce the decision.
    • Certain international treaties, such as the North American Free Trade Agreement (NAFTA) or the International treaties such as the North American Free Trade Agreement (NAFTA) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), have provisions to enforce patents and provide remedies for patent infringement. However, these treaties are only relevant if the country where the infringement occurred is a party to the treaty.[16]
    • If you believe that your patent was infringed, ask your domestic attorney speak with the local attorney who you used for the nationalization process. They should be able to help you bring a patent enforcement case.

Sources and Citations

  
  
  
  
   
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///////////////////PCT, PATENT

Tuesday, 14 March 2017

DRAFTING A NON-PROVISIONAL PATENT APPLICATION

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DRAFTING A NON-PROVISIONAL PATENT APPLICATION!

Part1

Determining the Patentability of your InventionImage titled Apply for an International Patent Step 1

  1. 1Determine if you have a patentable invention. U.S. law sets forth the following requirements for something that can be patented:
    • It must be invented or discovered by a person;
    • It must be a new and useful process, machine, manufacture, or composition of matter; or
    • If not new, it must be an improvement on a useful process, machine, manufacture, or composition of matter.[1]
    Image titled Apply for an International Patent Step 2
    2Verify your invention is not already patented. If your invention meets the requirements for a patentable invention, you must conduct a search to determine whether your idea has already been patented. The US Patent and Trademark Office recommends you follow the following seven steps to search for a patent:
    • Brainstorm terms that are related to your invention. When coming up with terms, think about words relevant to your inventions purpose, make-up, and use.
    • Search for your terms on the USPTO website at: http://www.uspto.gov. You should conduct your search in the following format "CPC Scheme [plus keywords(s) describing invention]." This search should help you locate the invention’s Cooperative Patent Classification (CPC).
    • Once you have located the CPC, review the linked definition to make sure that the definition fits your invention.
    • Search the USPTO patent database, http://appft.uspto.gov, for all patents matching your CPC. After identifying the patents, quickly skim the first page of each patent to determine whether it matches your own invention. If there is a similarity, read the documents more closely including descriptions of the intended use of the invention and any drawings of the invention.
    • If your initial search does not turn up any similar patents, expand your search by performing a key word search on the http://appft.uspto.gov website. You can also search additional databases at http://worldwide.espacenet.com and http://www.uspto.gov/ptrc.[2]
    Image titled Apply for an International Patent Step 3
    3
    Hire a patent lawyer. Once you have conducted your initial search and found no matching patents, you should hire a patent lawyer. The filing of domestic and international patents requires significant paperwork, legal knowledge of patent law, and experience. While you can attempt to complete the filings yourself, it is strongly advised that you hire someone who has previously applied for patents. This attorney should be able to streamline the process, ensure that you don’t miss any deadlines, and prepare your paperwork so that it meets the requirements.
Part2

Applying for a Patent in Your RegionImage titled Apply for an International Patent Step 4

  1. 1Determine if you are applying for a provisional or non-provisional patent. A provisional application is essentially a placeholder where you begin to protect your invention before it is a fully formed or completed idea. If you file a provisional application, you will eventually need to file a non-provisional application within one-year of filing the provisional application.
    • A provisional application may be right for you if you are unsure of the commercial value of your invention but you want to protect your invention. It is less expensive to file a a provisional application and you have 12 months to determine if you want to move forward with the cost and time of filing a non-provisional application.
    • If you have already determined the commercial value of your invention and intend to move forward with the production of the product, you should apply for a non-provisional patent and save yourself the time of completing two applications.[3]
    Image titled Apply for an International Patent Step 5
    2
    Draft a provisional patent application. The provisional patent application provides a less expensive means for applicants filing for U.S. patents. A provisional patent means that the patent is pending. You can file a provisional application without a formal patent claim, oath, declaration, or an information disclosure statement.[4] A provisional patent application must include:

Sources and Citations

MORE DETAILS.............
What makes a good patent? The classic definition is that a good patent claims an invention as broadly as possible. That definition is fine as far as it goes, but the definition is deficient in that it glosses over both of the fundamental steps in drafting a good patent, namely: (a) identifying what the "invention" is relative to the prior art; and(b) describing the "invention" in a manner that best serves the purposes of the particular client.
A well-written patent claim takes into account the needs of the inventor vis-à-vis the marketplace. Among other things a patent drafter should weigh (a) the likely cost of lengthy arguments during the patent prosecution process to achieve the greatest possible coverage against (b) the benefit of narrower claims that might still be "good enough" to keep the competition at bay.
The main point is that good patenting is a lot more than simply securing the broadest possible coverage on what the inventor thinks is the invention. A good patent means that the patent drafter took the time to see through the applicant’s disclosure, not just into it. The task of patent drafter is much more than just describing and claiming what the inventor thinks he invented. The drafter must also describe and claim all that is inherent in that "invention". To do this, the patent drafter must thoroughly understand how the invention differs from the prior art, and devise all possible ways of embodying that difference.
This generally takes much more creativity than inventing the thing in the first place. Often it takes an hour, or even several hours to understand where the invention lies, and to figure out all alternatives. Remember that the invention is almost always broader than the inventor thinks it is. The easiest way to distinguish good patents from bad is to focus on the length and number of claims. Well-drafted patents tend to have claims that are short and few in number.
An invention disclosure form contains all of the information on the product or process which you believe to have invented. This is an important first step to help organize thoughts and explain the invention in a clear and concise way. A detailed invention disclosure form template can be found here and the essential information needed is summarized below:

Patent Specification
The next step is to prepare a patent specification. The contents of a patent specification are shown in the diagram below:
Drafting the Patent Claims
First, include a claim that defines your invention in broad terms, leaving out any and all unnecessary options. Second, include another claim that defines your invention with as much specificity and with every option you can think of. It does not matter that the claims won’t be in perfect format, with appropriate being defined as the format the Patent Office will ultimately require. At the initial filing stage what matters most is that claims are present and they have appropriate scope, with some being broad and some being narrow and quite specific.
Three criteria to take note of when drafting your claims are that they should clear, complete, and supported.
• Be Clear - Your claim must be clear so that you do not cause the reader to speculate about the claim. If you find yourself using words such as "thin", "strong", "a major part", "such as", "when required", then you are probably not being clear enough. These words force the reader to make a subjective judgment, not an objective observation.
• Be Complete - Each claim should be complete, so that it covers the inventive feature and enough elements around it to put the invention in the proper context.
• Be Supported - The claims have to be supported by the description. This means that all the characteristics of your invention that form part of the claims must be fully explained in the description. In addition, any terms you use in the claims must be either found in the description or clearly inferred from the description.
Patent drawings/Illustrations
The patent applicant is required to furnish at least one patent of the invention whenever the invention is capable of illustration by way of a drawing. Based on my experience I can say that a patent drawing is almost always required. The only time patent drawings are not required is when the invention relates to a chemical compound or composition.
In reality, you should also not think in terms of a single patent drawing or illustration, but rather in terms of however many patent drawings are necessary in order to demonstrate what you have invented. Most patent applications have at least several sheets of drawings, with each sheet routinely having multiple views of the invention. You may need to show various views (top, bottom, right, left, etc.) and you may need to break down the invention and show drawings of one or more of the component parts.
The drawings must show every feature of the invention specified in the claims, and it is required by Patent Office rules to be in a particular form. The Office specifies the size of the sheet on which the drawing is made, the type of paper, the margins, and many other hyper-technical details relating to the making of the drawings. The reason for specifying the standards in detail is that the drawings are printed and published in a uniform style when the patent issues, and the drawings must also be such that they can be readily understood by persons using the patent descriptions.
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