Invention Diagnostic for a Patent Application – Part 1

The following is general advice only and should not be relied upon for any specific case.

The objective of this tool is to briefly explain what we are trying to achieve with a patent and gather the information needed for preparation of a patent specification.  A patent specification has a description and claims. The claims set out those things where the Applicant wants exclusivity. Claims usually have a hierarchy with claim 1 being the widest. At any time during the life of granted patent and claim can be held invalid. The other claims only come into play if claim 1 is held invalid.

The present diagnostic will focus upon the content of the patent specification with some important explanation and then some tables to complete.

The example given in this diagnostic is to a simple invention namely, a crack inducer for concrete flooring. This example is a real case of an effective patent.

Expressions in quotes are terms that have special legal or legislative importance.

What is a patentable invention?

Generally speaking a patentable invention is one that is patentable “subject matter” and “novel” and having an “inventive step” at the filing date of a patent application, “novel”, meaning not already in the public domain (“publicly available”) in the same form, “inventive step” meaning “novel” but non-obvious having regard to what the “non-inventive skilled person” would have done given certain facts at the time.

The application must be accompanied by a “patent specification” providing an “enabling” description. More is better than less to achieve this objective.

Most but not all inventions are patentable “subject matter”. Once you have completed this diagnostic if there are any reasons why we think your invention is not patentable we will let you know.

Most patentable inventions are “combinations”. A patentable combination is a new combination of old things put together to produce “a new or improved result”. In a true combination there is a “working or a potential working interrelationship” between the parts, the invention is the interaction between the parts.

The invention cannot be merely an idea. It must have a practical or useful form described in the patent specification. There must be a real “technical” contribution. Any technical contribution that the applicant wants to “claim” must be described. As a rule of thumb each technical contribution should have a drawing or example.

This practical or useful form must be described in the patent specification in enough detail so that someone skilled in the field of the invention can read, understand and make the invention without “undue burden”. The description will be enough if the skilled person can make the invention with no more that “reasonable trial and experiment”. If the skilled person has to add missing parts and these “have a material effect on the way the invention works” then the patent will be at risk of being invalid.

Who qualifies as an inventor and who owns the patent?

Anyone who collaborates on the invention may be an inventor. Any contribution that “has a material effect on the way the invention works” will most likely give rise to inventor status. Anything claimed in a claim will most likely give inventor status for that claim.

The patent will belong to the inventor(s) or if there is a contract the inventor(s) entitlement may have been or be transferred by that contract. Therefore a company can own a patent if it has an assignment from the inventor(s).

Employers can be owners of employee inventions automatically but only if it is clear from the terms of employment. A design engineer would be employed to design but a service engineer may not be. It is prudent to consider all collaborators as “consultants” to a project whether they be employees or not and have them execute a deed of assignment and confidentially specific to the project before they commence work on the project.

All inventor(s) have to be named and in many countries inventor(s) signatures are required. In the case of Australia a “Notice of Entitlement” must be filed naming the inventor(s) and setting out how the applicant became entitled to apply.

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