Canadian Patent Application
Process and fees
USPTO Patent fees
There are few tasks more
difficult than that of preparing a patent application for an important
invention. To prepare a perfect patent application, the practitioner must
be all-knowing in the relevant technology, in patent law, and be able
to predict future developments. In most cases, a perfect patent application is unrealistic. An excellent patent application needs
to realize many objectives, including:
1. Describing the invention
so that those of ordinary skill in the art to which the invention pertains
can understand it.
2. Teaching how to practice
the invention.
3. Explaining the invention
in such terms that a judge and a jury will be impressed by the value of
the invention.
4. Claiming the invention
sufficiently broadly so that the most talented experts in the field cannot
design around the claims for the next twenty years, even when millions
of dollars in sales and royalties are at stake.
5. Claiming the invention
sufficiently narrowly so that all prior art is not encompassed by the
claims. This includes the prior art already known to the patent practitioner,
and unknown prior art. The unknown prior art can include existing documents
not found by a novelty search and "incubating" prior art such as pending
United States patent applications and inventions by others under 35 U.S.C.
§ 102(g).
6. Claiming the invention
so that those elements that render the invention ”non-obvious" are set forth
in the claims.
7. Claiming the invention
so that a patent will be issued by the Patent Office, and its validity
will be sustained by the courts, even though the Patent Office will give
the claim language its "broadest reasonable interpretation" and the courts
will not.[1]
8. Including only truthful
and accurate statements in the application, so that none of the statements
could possibly mislead the examiner, and the inventors will not be embarrassed
by cross-examination during litigation.
9. Describing all features
of the invention that may be needed to obtain allowance of the claims,
even when the inventor does not appreciate the importance of those features.
10. Describing the best
mode contemplated by the inventor of carrying out the invention.
11. Preparing an application
suitable as a vehicle for foreign filing.
12. Last, but not least,
having the application issue as a valid patent.
It is no wonder that skilled
patent attorneys and patent agents are so much in demand. It is no wonder
that the ability to write a good application is considered by many practitioners
to be an "art."
How is this art taught?
The art of writing patent applications is taught by a combination of the "mentor" system and osmosis - learning the hard way - by writing applications. Typically, a new attorney or agent is handed a stack of prior art, an invention disclosure, and starts writing.
Many law schools provide
a course in patent law. The purpose of most of these courses is not to
teach how to write a patent application, but rather to understand the substantive
law of patents. It is, of course, necessary to know patent law to write
a good patent application. The requirements of 35 U.S.C. §§
101, 102, 103, and 112 need to be fully appreciated in order to write
a good specification. However, knowledge of the substantive law of patents
is not the same as knowing how to write a competent patent application.
In fact, there are many excellent patent lawyers who litigate patent issues
with great skill. Many of those lawyers, if pressed into service to write
patent applications, would be lost.
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It typically takes at least
six months, and usually about two years, of practice and training
before someone can learn to write a competent application
on his/her own.
HOW
TO WRITE A PATENT APPLICATION
by Jeffrey G. Sheldon
Copyright 2000
by Practising Law Institute. All Rights Reserved
Patent
Fundamentals for Scientists and Engineers
by Thomas T. Gordon, Arthur S. Cookfair