4.1 Intellectual Property Basics

What is Patentability?

Patent attorney Mika Mayer explains the fundamentals of patentability.

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Tips for Drafting Provisionals: Part 1

IP expert Gerard von Hoffmann shares 10 important tips (in two video clips) for constructing effective provisional patent filings.

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Effective Patent Searching Strategies

IP experts Jessica Hudak and Gerard von Hoffmann share a series of tips for maximizing the effectiveness and efficiency of patent searches.

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Getting Started

Once a lead concept is identified through the screening process, it is time to perform a detailed background search and then prepare a patent filing. This can often seem a monumental challenge to first-time inventors. Fortunately, through the research performed in the “upstream” activities in the biodesign innovation process, innovators have generated a solid base of information that is usually extremely helpful in getting started. Allocate plenty of time for the search and then dive in.

Compile Background Information

What to Cover

Begin by assembling complete background information on the concept/invention and the area in which it will be practiced. This will generally include the disease state and a review of existing treatment technologies/approaches. Consider writing draft claims that cover the basic invention. These can be in plain language, not “legalese.” Brainstorm about keywords for the search. Try to identify as many of these as possible (see example in text). A thesaurus and medical dictionary can be helpful.

Where to Look

Refer back to information collected as part of 2.1. Disease State Fundamentals and 2.2 Existing Solutions. Augment this data with additional research as needed (using previously listed sources).

Search the Prior Art

What to Cover

Start with patent database searches as the most efficient way to see a broad range of prior art (before searching non-patent sources). For patentability searches, scan all parts of any patents that are of interest; for freedom to operate searches, concentrate on the claims. Consider hiring a patent agent, attorney, or reasonably-priced search service to assist with the prior art search. Many inventors benefit greatly from a more formal “prefiling search” or patentability assessment. An attorney can help identify the areas where patent protection is most likely and can help focus the content of the patent application covering the invention.

Where to Look

  • U.S. Patent and Trademark Office Patent Full-Text Databases – These databases provide access to U.S. patents issued from January 1976 through present and are full-text search enabled. Patents from 1790 through 1975 are searchable only by patent numbers and current U.S. classifications. Full-page images are available for most patents from 1970 to present. A tutorial on how to use the database is available on the site. Note that issued patents and patent applications are in separate search fields.
  • U.S. Patent and Trademark Office Official Gazette – A repository of weekly publications that announce those patents being issued and those trademarks being registered or published for opposition. Users can search or browse from 1964 to present to stay informed regarding new patents and changes in the field. It is important to note that innovators cannot search through applications publications and patents at the same time, so every search must be repeated within each category.
  • Google Patent Search This search engine provides searchable access to the full text of the U.S. patent corpus to find patents of interest. PDFs of patents and application publications are downloadable. Importantly, in contrast to the USPTO site, innovators can simultaneously search application publications and patents.
  • Thomson Innovation – A subscription database that allows individuals to search the bibliographical and claims portions of U.S. patents from 1974 to present. This service recently added European Patent Office and World Intellectual Property Office (WIPO) text and images. All patent references are hyperlinked for citation searching. Classification codes are also hyperlinked to assist in finding similar patents granted.
  • Derwent Innovations Index – A database of international patent information. On the site, “equivalent” patents are available in multiple languages. This database is provided by the Institute for Scientific Information.
  • International Patents Databases
  • Other Databases – Be sure to search PubMed and other medical sites for articles and abstracts, and perform general Google searches for more obscure references to relevant information.

Identify Relevant Prior Art for Patentability

What to Cover

The first step is to determine which of the patents and other materials that have been located via the prior art search are most relevant to the patentability of the invention. The draft claims from section 1.1 above are useful here. The more elements of the claims that are referenced by the prior art, the more relevant this patent is to the search. Aim for the most relevant 10 to 20 patents in the first cycle. The second step is to broaden the search out again, using either citation search or classification index from the patents of interest identified in the first cycle. This should result in some new patents, and excluding some others from the first step. Repeat this cycle of broadening and filtering. Once the list of patents of interest stabilizes at some relatively small number (probably five to 15), these are key patents. Remember that new art is published daily, however, so searching is an ongoing process.

Where to Look

Use the information gathered from the prior art search to complete this analysis. When necessary, go back to the sources listed above to perform additional research.

Prepare a Patent Application

What to Cover

For provisional patent applications, the application can be prepared by the inventor, but it is wise to have it reviewed by a patent attorney or patent agent. Although any material can be filed as a provisional patent application (including a drawing on a napkin or a PowerPoint presentation), it is essential to have a thorough description of the invention, including the main sections of a provisional application described in the chapter. For a utility patent application, a patent attorney or agent needs to be involved in writing the application, but the inventor can save considerable time and expense by drafting the background, providing rough drawings, and drafting key claims in plain language (see 5.1 IP Strategy for more information about selecting an IP attorney and the costs involved). If draft claims have already been written (as in step 1.1 above), modify these based on the prior art to clearly demonstrate advantages provided by the new invention. Identify possible variations. Make sure all possible ways of putting together and carrying out the invention have been covered. Consider drafting both method and device claims. Prepare all necessary figures—the USPTO requires that drawings show each and every element claimed in the patent application. Next, draft the specification. With the new claims and the drawings as a guide, write a description of the invention. Be sure to include all of the elements of the invention, and all variations that have been brainstormed. Now there can be an effective meeting with a patent attorney or agent.

Where to Look

Even if an inventor is planning to work with a patent attorney to file, the following resources can be helpful in understanding and preparing for the patent application process: