Patent Law Flashcards
Provisional Patent Application
A provisional patent application is just that—an application. Unlike the non-provisional application, a provisional patent application will not result in a patent being issued.
True/False: A provisional patent application is less expensive.
True.
What is the purpose of a provisional patent applications?
Its purpose is to serve as a placeholder.It gets the process “on record” so that a non-provisional application can be filed later to protect the same invention. Its importance lies in its speed and its ability to establish that the filer was first to this invention.
What does the provisional application require?
A fee and cover sheet that includes:
- application is a provisional application for a patent
- the name(s) of all inventors;
- inventor residence(s);
- title of the invention;
- name and registration number of attorney or agent and docket number (if applicable);
- correspondence address; and
- any U.S. Government agency that has a property interest in the application
What does a provisional application establish?
It establishes that, as of the date on which an application was filed, the filer had “possession” of the invention.
How long is the pendency of a provisional patent application?
12 months
What is a non-provisional patent application?
A patent application, that could result in a patent.
What are the 3 basic components of the patent application?
(1) the specification
(2) the claims
(3) the drawings
The application also requires fees, an oath or declaration stating that the invention is original and original to the inventor, and a translation if the application is based upon a foreign, non-English original application.
Why are “claims” important to a patent?
Claims can be thought of as the “metes and bounds” of a patent. They describe what the patent is claiming as the invention. The claims define how another product would be infringing on a patent.
What questions do the claims answer?
What about the invention described in the patent is new?
True or False: Specification as to the written description and claims to the invention are vital to the patent application.
True.
Why is it important for claims and description of the patent to be specific?
So a person a who is “skilled in the art” can learn how to make and use the invention. This is the trade off when an inventor files for a patent. It is a social contract.
What does the USPTO require for specification?
Specification “must be in clear, full, concise, and exact terms to enable any person skilled in the art or science to which the invention pertains to make and use the same.”
Inventor must provide sufficient disclosure to enable another to practice the claim of the invention without undue experimentation
What is the significance of the drawings?
The drawings illustrate the claims and the specification. The specification and the claims, the non-provisional utility patent application describes what the invention is and how to make and use the invention.
T
The back and forth between the patent examiner and the patent attorney or patent agent is called …
patent prosecution
For an invention to be patentable subject matter, the invention must be…
new, useful and non-obvious
“New” or “Novelty Requirement”
To get a patent on an invention, the invention must actually be new. Everything that came before is referred to as the “prior art.” The invention cannot be expressly or implicitly disclosed in any “prior art” references.
If there is already a patent for the invention, a patent application for the invention, a description of the invention in a printed publication, or a product in use that already uses the process used by the invention, the invention does not meet the novelty requirement.
Prior art
Everything that came before the new invention
Usefulness
The utility requirement requires us to answer the questions “Does the invention do anything?” and “Does the invention work?” with “Yes”es.
Non-obvious
An obviousness inquiry asks whether combining the two older inventions would be obvious to “one skilled in the art.” One skilled in the art is similar to the “reasonable person” who appears frequently in other areas of law, but in this case, the reasonably person is one who works in or is skilled in the field of the invention.
Non-obvious 3 part test
(1) Determine the scope and content of the prior art
(2) Examine the differences between the prior art and the claims at issue
(3) Analyze the ordinary skill in the pertinent art
(Graham Case)
Enablement Doctrine
Limits how broadly patent claims may reach; restricts the scope of the inventor’s patent claim. Also requires inventors to file patent applications before they have proven all aspects of the technology (often times, the inventors will file application before proving all aspects of technology
Wand Factors
(1) quantity of experimentation necessary
(2) the amount of direction or guidance presented
(3) the presence or absence of working examples
(4) the nature of the invention
(5) the state of the prior art
(6) the relative skill of those in the art
(7) predictability or unpredictability of the art
When are the Wand Factors used?
To determine the specificity of the patent and the claims at issue.
