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Disclaimer

April 11, 2018 by James Yang

Back to: Navigating the Patent System

Navigating the Patent System

Learn the WHYS of the fundamentals and strategies to protect your invention

James Yang

Copyright © 2017 James Yang

All rights reserved. Except as permitted under U.S. Copyright Act of 1976, no part of this publication may be reproduced, distributed, or transmitted in any form or by any means, or stored in a database or retrieval system. Short sections of this book may be copied so long as you receive preapproval and a do-follow backlink to www.ocpatentlawyer.com for online content and attribution for print content is given. For preapprovals, please send an email to [email protected].

Visit my website at https://ocpatentlawyer.com.

Library of Congress Control Number: 2017915845

ISBN-13: 978-0-9994601-0-8

Printed in the United States of America

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Disclaimer: No part of this publication may be reproduced, stored in a retrieval system, or transmitted in any form or by any means, electronic, mechanical, photocopying, recording, scanning, or otherwise, except as permitted under Section 107 or 108 of the 1976 United States Copyright Act, without either the prior written permission of the Author/Publisher. Requests to the Author/Publisher for permission should be addressed to James Yang at [email protected]

Disclaimer

This book provides my personal opinions and not the views or opinions of my employer or clients. The opinions in this book cannot therefore be attributed to them. Moreover, my opinions may change over time based on upon further reflection.

This book provides legal information, not legal advice. Attorneys give legal advice only after listening to facts specific to a case, investigating and confirming those facts, reflecting on them, and conducting legal research if necessary. After this process, attorneys give a legal opinion or recommendation. I do not provide any recommended course of action for your situation in this book. For legal advice about your case, you should consult an attorney.

By reading this book, you agree that I am not your attorney and that no attorney-client relationship is formed except by a subsequent written retainer agreement. You agree to not send confidential information unless directed to do so. Communicating with me in any way does not indicate you have retained me as your attorney. If you would like me to represent you, that representation starts only after execution of a retainer agreement signed by both of us and payment of the requested fee.

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What you will find in this course

Table of Contents

  • Introduction
    • Disclaimer
    • What you will find in this course
    • How to use this course
  • To Patent or Not To Patent (Section 1)
    • Purpose of the patent system
    • Benefits to the patent owner
    • Overview of the Seven Core Concepts
  • Getting Started: Seven Core Patent Concepts
    • Core Concept 1: Defining the Invention (Chapter 1)
    • Core Concept 2: Ownership–Resolving Ownership Issues (Chapter 2)
    • Core Concept 3: Conducting a Novelty Search (Chapter 3)
    • Core Concept 4: Different Ways to Protect an Idea (Chapter 4)
    • Core Concept 5: Three Bars to Patentability and the First-Inventor-to-File Regime (Chapter 5)
    • Core Concept 6: Preserving Foreign Patent Protection (Chapter 6)
    • Core Concept 7: The Overall Patent Process and Costs (Chapter 7)
  • Utility and Design Patent Applications (Section 2)
    • How to use this section on patent applications
    • Deciding what application to file: Design or utility?
    • Design Applications (Chapter 8)
    • Cost Considerations for Provisional and Nonprovisional Utility Patent Applications (Chapter 9)
    • Overarching Principles of a Utility Patent Application (Chapter 10)
    • Parts of a Utility Patent Application (Chapter 11)
    • Claims section
    • Writing Tip #1: How to write an application with the broadest possible protection (without breaking the bank) (Chapter 12)
    • Writing Tip #2: Be explicit. Don’t rely on inferences made in the patent application
    • Writing Tip #3: Using the word “may” versus “is”
    • Writing Tip #4: Preferred embodiments and using the word “substantial”
    • Writing Tip #5: Do not use the word, “invention” 
    • Writing Tip #6: Suboptimal embodiments
    • Writing Tip #7: Ranges
    • Writing Tip #8: Software Inventions
  • Patent Examination FAQs (Section 3)
    • FAQ #1: Patent Process Timing
    • FAQs #2-3: Patent Costs
    • FAQ #4: Duty to search v. Duty to disclose
    • FAQ #5: Review of Formalities
    • FAQs #6-7: Secrecy
    • FAQs #8-9: Nonpublication request and foreign patent protection
    • FAQs #10-16: Restriction Requirement
    • FAQs #17-21: Responding to Office Action rejections
    • FAQs #22-29: Broadening patent protection
  • Appendices
    • Appendix A: Trademark
    • Appendix B: Sample Utility Patent  
    • Appendix C: Sample Design Patent
    • Appendix D: Sample Trademark Registration
    • Appendix E: Entity Size 
    • Appendix F: Patent Laws

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