Invention Diagnostic for a Patent Application – Part 2

What is a patent?

A patent is personal property usually created by a patent attorney based on the kind of information being gathered in some form of problem/solution analysis or diagnostic.

A patent is a monopoly as set out in the claims of a patent specification. The monopoly is for a set period of time usually 20 years granted by the Crown for an invention. In return for the monopoly the patentee must make a full disclosure of the invention and how it works in the patent specification. The “claims” are at the end of the patent specification.

How do you get a patent?

A patent application with a patent specification is filed at the Patent Office. The application is processed through an examination stage, an acceptance stage, a public opposition stage and a sealing stage where the patent is “sealed”. Before it is sealed it is “patent pending”.

Generally speaking, before your patent application is filed your invention must not be known to one member of the public who does not have an obligation of confidentiality in order to keep it secret. Otherwise you cannot get a valid patent.

Patent pending in Australia can take 3-5 years but the process time may be shortened at extra cost.

What is a patent specification?

A patent specification is a legal document describing the invention and finishing with monopoly claims. It is required to meet certain legal requirements in order to qualify for the grant of the patent, generally the patent specification has four main parts:

1.            Outline of the invention – a general description of the essential features of the invention in a main “consistory statement” and then important optional features are set out in sub consistory statements;

2.            Detailed description of best known version – this is usually after the outline of the invention and includes detailed description, patent drawings and/or examples of how the features referred to in 1. work together, are made, materials used etc; and

3.            Claims – claims are a single sentence defining what it is that the patent owner is the only person permitted to do or authorise under the patent.

4.            Drawings – these are usually physically after the claims although sometimes they are at the start but they go together with the detailed description and are really part of that.

Why are claims so important?

The claims define the monopoly as a “unilateral statement by the patent applicant written to best advantage”. Patent attorneys are obsessed with claims because a word may unnecessarily limit the claim and provide a loophole where the claim is not infringed. The invention may be taken and you cannot do anything about it.

Troublesome self inflicted limitations in claim after a patent is sealed can not be fixed.

In the example below a non-square sheet would not infringe the patent. If a non-square sheet worked just as well, the patent would not be effective against competitors. Reconsider the claim with the word “square” omitted.

For example:

Claim – A napkin comprising a square sheet of fabric having a peripheral scalloped edge formation and at least one slot extending diagonally across the square sheet of fabric and corresponding in shape to the shape of the scalloped edge formation.

The best way to think of a claim is as a fence of words surrounding the patent “property”. The use of the “property” may be authorised in just the same way a pool owner might authorise someone to use the pool while the owner is on holiday. This is called a license. Any unauthorised use of a patent is like trespass. A patent trespasser is called an infringer. A license allows one to do something one would otherwise not be permitted to do, as in for example a driver’s license.

It may take a few hours to draft a single claim. Patent attorneys have tools such as “Attorney’s Dictionary of Patent Claims” as well as case authority as to how words have been interpreted in patent claims. These assist in selection of words to use.

Patent Attorneys often prefer to avoid “words of art” which can limit a claim to a specific known meaning in the particular industry.. Another tool Patent Attorneys use is the “rule against claim redundancy”, in this case the patent attorney will use a later numbered claim to modify the scope of an earlier claim. For example claim 1 might say “black” but claim 5 appended to claim 1 might say “a shade of grey”, this means that black in claim 1 must include shades of grey.

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