PROVISIONAL PATENT APPLICATIONS - Capstone...

PROVISIONAL

PATENT

APPLICATIONS

Louis T. IsafWomble Carlyle Sandridge & Rice [email protected]

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© 2016 WCSR

PURPOSE

Of Filing Your Provisional

• Meet Capstone Requirement!

• Patent rights are lost by

– Publication / Public Disclosure (e.g., Capstone)

– Offer for Sale• Exception - U.S. Rights - 1 year Grace Period for OWN

activity

• Preserve Rights In Foreign Markets

– Business is International, not just National

– Most Foreign Countries have Absolute NoveltyRequirement

• NO assurance of available rights.2

Why?

PROVISIONALCAUTIONS/CONSIDERATIONS

BEWARE

NO PRIORITY for subject matter not fully disclosed andenabled in the Provisional. NOT PROTECT yourimprovements.

Risk of COMPLACENCY… Thinking “We Have Filed aPatent Application So All Is Well … So Relax” … butthe Disclosure Is Not Adequate to Support DesiredClaims … or avoid activity bars

Automatically GOES ABANDONED By Law After 1Year From Filing … so, MUST file non-provisionalbefore 1 Year ends. [TRACK this 1 year]

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But!

UTILITY PATENT BASICS –Subject Matter Eligibility (Section §101)

– Invention must be directed to at least one ofthe following {statutory}:

• Process (engine cycle; aluminum heat treatment;making fibers; detecting a golf ball)

• Machine (box folding machine; Coin processingmachine)

• Article of Manufacture (fastener; toilet; guage)

• Composition of matter (chemical composition)

• Except: {Judicial Exceptions}

– NO laws of nature

– NO natural phenomena

– NO abstract ideas …4

What?

Patent Basics – Requirements forPatentability

• To be Patentable, an Invention must be:

1. New / NOVEL

2. Useful – has to have some utility

3. NON-OBVIOUS – Would a person ofordinary skill, knowing the prior state of theart, think the invention obvious?

• [BUT, not our focus today … we need to FILE!]

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What?

PROVISIONAL APPLICATION

CONTENT

• Here is what is required:

Specification (formalities not important)

Drawings

Names Of Inventors

Must be identified as a ProvisionalApplication

Correspondence address6

PROVISIONAL APPLICATION

SPECIFICATION

• Possible Sections:» • background description

» • explicit definitions

» • general description (Summary)

» • preferred embodiments (Detailed text & drawings)

» • working examples (perhaps)

» • prophetic examples (perhaps)

» • addendum (perhaps)

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WRITTEN DESCRIPTION

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Sample 1Provisional

WRITTEN DESCRIPTION

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Sample 1Provisional

DRAWINGS

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Provisional

Non-Provisional

Sample 1

DRAWINGS

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ProvisionalNon-Provisional

Sample 1

WRITTEN DESCRIPTION

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Sample 2Provisional

WRITTEN DESCRIPTION

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Sample 2Provisional

Your PROVISIONAL APPLICATION

SPECIFICATION

• Written description of the invention, and ofthe manner and process of making and usingit,

• in full, clear, concise, and exact terms

• to enable any person skilled in the art towhich it pertains to make and use the same,and

• shall set forth the best mode contemplatedby the inventor or joint inventor of carryingout the invention. 14

Think!

Written DisclosureExample Approach

• What is the Problem or need to be satisfied bythe invention.

• What is the proposed solution to the problem,and why is it better than prior solutions?

• What is the likely commercial embodiment ofthe invention?

• Are there other ways to practice the invention?

• Test data • Details • Ranges • Examples

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Think!

EXERCISE

Written DisclosureExplaining the problem(s)

• Write it out … What is (are) theProblem(s) to be solved by yourinvention?

• NOT always same as the projectproblem

• “At least some of the problemsexperienced in the prior

devices/process … “ 16

Do it!

EXERCISE

Written DisclosureExplaining Your Solution

• WRITE down the Kernel/Coreaspect of your solution… What is themain feature that distinguishes yoursolution from all known “prior art”?

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Do it!

EXERCISE

Written DisclosureExplaining Your Solution

• WRITE down another distinguishingfeature

• WRITE down a third distinguishingfeature

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Do it!

EXERCISE

Written DisclosureExplaining your Solution (continued)

• Draft prose broadly expressing yoursolution … focusing on the stateddistinctions …

• Stay high level … not the full workingembodiment …

• Consider invention broader than youcreated it? Think expansively whendrafting …

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Do it!

EXERCISE

Written DisclosureDetailing Embodiments

• Now, Shift Gears … Describe yourprimary embodiment

• The detailed facts!!

• What is your likely commercialembodiment?

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Do it!

EXERCISE


Some terminology:

Invention => Disclosure

Preferred embodiment => First Exemplary embodiment

In some embodiments of the disclosure …

In accordance with an alternate embodiment …

According to one aspect …

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Do it!

EXERCISE


Enable – skilled person can practice

Written Description –

Full Scope;

Sufficient;

Possession of the invention

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Do it!

EXERCISE


Write STRUCTURE

• components, links, combinations,interactions

• drawings

• number all groups, pieces, links

be consistent

numbering charts23

Do it!

EXERCISE


Write METHOD of ASSEMBLY

Write METHOD OF OPERATION

Write METHOD OF USE

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Do it!

[Slide 32]

EXERCISE


Software

Think “Structure” … [meet enablement]

Specially Programmed Computer

Think something more than aprogrammed computer (added structureor function not previously known orperformed by human) [avoid ABSTRACT]

[this is MUCH more complex]25

EXERCISE


SoftwareRegarding “Structure” …

• Software is not “structure”

• Structure is the computer programmedby a special algorithm

• Spec MUST disclose the algarithm

[FLOW CHART]26

EXERCISE


Software

“Something more” than idea

Something the human mind didn’t dobefore

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EXERCISE


Software

• An "Algorithm" is a finite sequenceof steps for solving a logical ormathematical problem or performinga task."

– "Applicant may express the algorithmin any understandable terms includinga mathematical formula, in prose, in aflowchart, or in any other manner thatprovide sufficient structure." 28

EXERCISE


Software

A set of instructions:

• Is not machine or article of manufactureor composition of matter, and does notpurport to be a process. Does not fitwithin any of the statutory categories ofsection 101,

• Is Intangible, and except for processes,“eligible subject matter must exist in somephysical or tangible form.” 29

EXERCISE


Software

• NOT GOOD• Method of providing a secure online sales transaction is

not patent-eligible because it is just a computerized way ofcreating a contractual relationship.

"This is simply a generic recitation of a computer and acomputer network performing their basic functions.” "Theclaim amounts to no more than stating create a contract ona computer and send it over a network."

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EXERCISE


Software• GOOD• Method of displaying multiple merchant websites within a single

page, allowing Web users to visit several stores without leavingthe page, was shown as patent-eligible. … Held: the patent didmore than apply an existing business practice on a computer.

"The claim does not recite a mathematical algorithm; nor does itrecite a fundamental economic or longstanding commercialpractice," the office said. "The claim addresses a businesschallenge (retaining website visitors) that is particular to theInternet."

Software inventions likely need to have a component thatimproves the functioning of a computer, rather than simply usinga computer to make an existing process run more efficiently 31

EXERCISE


Write the Specific Embodiment AGAIN,but broaden the language

Write as a second embodiment, keepingthe narrower, first embodiment

e.g., “fastener, example of which is a screwor a nail or adhesive”

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Do it!

EXERCISE


Write any Alternate Embodiments …

How might you or someone else do thisdifferently and still take advantage ofyour “inventive thoughts” (your“distinguishing features”)?

“Third alternate embodiment”

“Forth alternate embodiment”33

Do it!

EXERCISE


• Perhaps insert your CapstonePresentation and your Capstone“speech” as an addendum.

• That’s what would otherwise be barredby the Capstone Event

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Do it!

HOW TO FILE

• Electronic Filing System (EFS) …Non-Registered … (see next slide)

• Or via US Postal Service Express Mail … MUST

use express mail certificate. (Not Preferred)

• Always keep a copy of filing

• Pay fee … $130 Small / $65 Micro(Are you a Micro Entity) … if yes, file affidavit …

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File it!

HOW TO FILEUSING PTO EFS

• Go to www.USPTO.gov => EFS-Web(expect "Java not enabled")

• Select “Patents” from upper left menu=> efile (unregistered)

• Proceed with forms and uploading, etc.

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File it!

HOW TO FILEUSING PTO EFS

• EFS TIPS:

– No spaces in filename

– Upload as PDF file, all fonts embedded

– Review ONLINE the package, page-by-page, after upload

– Micro entity needs a certification (PTOFORM PTO/SB/15A)

– Print and keep the filing receipt, and acopy of what you filed 37

File it!

HOW TO FILEHELP

GLA (Georgia Lawyers for the Arts)pro bono patents program:

http://glarts.org/patents/

• 2 weeks may not be enough

• Must qualify financially

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Help!

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