In this first installment, we will discuss the importance of defining the invention in light of the overall patent process.
Core Concept #1
Details versus broad concept
This core concept relates to defining the invention. Oftentimes, in defining the invention, the details divert our attention away from seeing the broadest embodiment of the invention. We remain intently focused on the trees, and forget to see the forest. It is important to get to the details but, the overall picture of the invention, its functionality, its fundamental components are missed in an an effort to include all of the details.
Focus on the fundamentals
Focusing on the fundamental benefits and components first sets the tone for the patent search, the patent application, the claims and all of the work during prosecution of the patent application before the Patent Office. From the general concepts of the invention, we can move on to the details and nuances of the invention.
Uncover the most basic components
To figure out the fundamental components of the invention, we review the various components of the invention and ask whether any component can be dispense with yet still achieve the stated function of the invention. Could the invention still work with different materials, a different number of parts, or a different arrangement of parts? It is these types of questions that help to ferret out the broadest concept of the invention. We do this through the initial consultation.
Benefits
By discussing the invention during the initial consultation, we:1. Expand applicability of the invention to other industries;2. Develop a strategy for the format of the patent application;3. Develop a plan to block competitors from designing around your patent, should one issue;4. Increase the probability that the Patent Office will grant a patent on your invention; and5. Facilitate smoother prosecution of the patent application.As an advocate, my goal is to assist you in exploiting your invention to the fullest.
Contact me at (949) 433-0900 to schedule your initial consultation.
CORE CONCEPTS
1. Define the invention
2. Review of the prior art
3. Explore different ways of protecting your intellectual property
(i.e., patent, trademark, copyright and trade secret)
4. Foreign protection
5. Ownership
6. First to file under the America Invents Act
7. Patent Process
8. Questions and answers
9. Recommended next step(s) and estimated fees
Related Articles for Patent Applications
- How to respond to an office action?
- Request for non-publication of a patent application
- Anatomy of a patent document
- How to write a broad patent application?
- Design patents: pros and cons
- How not to write the background section of a patent application?
- Avoid disparaging prior art in patent application
- Broad claims pose enablement issues
- Claim Drafting Tip: Avoid means plus function claims
- Functional language invalidates patent claim
- Transitional phrase in a claim determines scope of patent protection
- Patent Drafting Tip: Alternative embodiments create prior art
- Preparing Drawings for a Utility Patent Application
- Expedited examination at the USPTO
- Define the invention
- Claim scope negatively impacted due to deleted info from provisional application
- Limits on trade dress protection when also securing a utility patent
- Means plus function without the MEANS trigger
Initial Consultation
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