How Does The Patent Process Work?

• Author: Joseph P. Kennedy/Wayne H. Watkins/Elyse N. Ball (With)
• Profession: Distinguished Professor of Polymer Science and Chemistry at The University of Akron/Associate Vice President for Research at The University of Akron/Project Manager for the University of Akron Research Foundation
• Pages: 55-73

CHAPTER 6

HOW DOES THE PATENT

PROCESS WORK?

Suppose you conceived a great idea for a product, tested it experimentally,

and reduced it to practice, and now you are ready to protect (i.e., patent) it.

What must you do to patent your invention? The purpose of this chapter is to

help you along the road to a patent. Just as you became aware of how simple

it is to invent, provided that you know a few basics (see Chapter 5), now we

want to teach you how simple it can be to obtain a patent (provided you really

have made an invention).

A major practical difference between the acts of inventing and protecting

an invention is that inventing can be done alone by you, the technical profes-

sional, whereas patenting generally requires the help of a patent professional

(i.e., a patent attorney or patent agent). Patent law and PTO rules may seem

byzantine in that they are complex, intricate, and procedurally dependent.

You should have someone to hold your hand while you navigate toward a

patent. Your job is to provide the ammunition (i.e., a written record of your

invention) and to educate your patent attorney (or agent) as to the technical

minutiae needed for a patent application. Subsequently, with the attorney’s

or agent’s help, your goal is to convince the examiner that you have indeed

fulfilled the requirements for a valid patent.

How to Invent and Protect Your Invention: A Guide to Patents for Scientists and Engineers,

First Edition. Joseph P. Kennedy and Wayne H. Watkins with Elyse N. Ball.

© 2012 John Wiley & Sons, Inc. Published 2012 by John Wiley & Sons, Inc.

55

56 HOW DOES THE PATENT PROCESS WORK?

6.1. THE NOTEBOOK

Most importantly, you must document your invention. This means you must

record in a notebook your conception, experimentation, and reduction to

practice clearly and understandably for those who may examine it. Your note-

book should be a diary of your invention in which you record everything that

relates to your invention, such as your theories, sketches, experimental facts,

observations, comments of others, receipts for purchases, correspondence,

conclusions, and so on. However, you should avoid negative comments

concerning the project, such as “this experiment did not work,” because they

may come back to limit you. You should also avoid comments reflecting

the utility or quality of the results of your research. It is preferable to state

the data results rather than to draw interpretive conclusions. Photographs,

analytical data, and testing results obtained by others should be permanently

attached (glued or pasted in your notebook) and their origin referenced. If

you need to delete something, do not erase, just cross it out. Do not leave

large empty places and do not skip pages.

Under the old first-to-invent system, the notebook wascrucial for establish-

ing your date of invention. A notebook is still useful under the first-inventor-

to-file system to establish that you are an inventor—that you independently

developed the invention rather than deriving it from someone else’s work.

The notebook may also prove useful in providing supporting documentation

for the patent examiner.

Situations may arise (e.g., during infringement suits or derivation proceed-

ings) where your notebook may be introduced as evidence and examined by

adversaries. If you keep this in mind, you will know how to manage and

organize your notebook. Here are a few tips: Your notebook should be perma-

nently bound with consecutively numbered pages and lines at the bottom for

dating and signatures. Loose pieces and sheets are unreliable to prove events

and dates. Entries should be in ink, in chronological order, and you should

sign and date each page. Critical entries must be witnessed and dated by at

least one person who would understand your entry (i.e., would not be merely a

“signature witness,” likea notary) and, if needed, could provide corroborating

testimony. Your witness must not be a co-inventor or your patent attorney. If

the witness is a fellow graduate student or lab mate, make sure you explain

that the entry they sign is confidential. A dated and witnessed statement of

reduction to practice is of particularly great value in the course of derivation

proceedings (see Section 5.4.2.2).

6.2. THE PROVISIONAL PATENT APPLICATION

In 1995, in order to harmonize U.S. patent procedures with interna-

tional (mainly European and Japanese) practices, a new rule was added