Working with a Patent Attorney to Draft a Non-provisional Application

• Author: Dylan O. Adams
• Profession: Seattle-based patent attorney
• Pages: 171-191

171

11

Working with a Patent

Attorney to Draft a

Nonprovisional

Application

“e patent laws ‘promote the progress of Science and Useful

Arts’ by rewarding innovation with a temporary monopoly.

U.S.C.A. Const., Art. I, § 8, cl. 8. e monopoly is a proper ty

right; and like any property right, its boundar y should be clear.

is clarity is essential to promote progress, bec ause it enables

ecient investment in innovation. A patent holder should know

what he owns, and the public should know what he does not.”

—Justice Kennedy writin g for the court in Festo

v. Sh oket su, 535 U.S. 722, 730-31 (2002)

As discussed in t he previous chapters, one way to begin the patent pro-

cess is by ling a provisional patent application and then ling a non-

provisional patent application within one year. In some cases, however,

it makes sense to skip the provisional application step and begin the

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172 PATENTS DEMYSTIFIED

patent process by initially ling a nonprovisional patent application.

Either way, the process of draing and li ng a nonprovisional is essen-

tially the sa me aside from being able to use content from a provisional

application as a head start.

In the previous chapters that discussed provisional patent appli-

cations, the focus was on dra ing a document that broadly teaches

how to make and use an invention. Having an adequate description

of the invention is equally important in a nonprovisional application,

but because it is substantively examined by the USPTO, the nonprovi-

sional includes an additional part that will be center-stage during the

exami nation process—the patent cl aims.

EXAMPLE PATENT CLAIM FOR A

BICYCL E FR AME

1. A bicycle assembly comprising:

a main frame comprising a seat tube, a head tube and an

intermediate tube connecting the seat tube and the head tube;

a sub-frame congured to rotate with respect to the main

frame;

a shock absorber having rst and second opposing ends

and a rst eyelet connected to the main frame at the rst end

and a second eyelet at the second end, the shock absorber

dening an axis between the rst and second end;

an extension body comprising a rst end and a second

end, wherein the second eyelet at the second end of the

shock absorber is positioned within the rst end of the

extension body and the second end of the extension body is

connected to the sub-frame forming a rear pivot of the shock

ab so rber; and

a fastener to secure the shock absorber within the rst end

of the extension body, the rst end of the extension body con-

gured to prevent rotation about the axis between the second

eyelet of the shock absorber and the extension body.

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