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Your Legal Companion
- You Don’t Have to Use a Patent Attorney
- A Layperson Can Do a Quality Job
- Using an Attorney
- Should You Do It Yourself
- New Material in the Fifteenth Edition
- How to Use Patent It Yourself
1. Introduction to Patents and Other Intellectual Property
- What Is a Patent and Who Can Apply for It
- The Three Types of Patents
- The Novelty and Unobviousness Requirement
- How Long Do Patent Rights Last
- Patent Filing Deadlines
- Patent Fees
- The Scope of the Patent
- How Patent Rights Can Be Lost
- What Rights a Patent Grants and the Prior-Art Reference Value of a Patent
- What Can’t Be Patented
- Some Common Patent Misconceptions
- How Intellectual Property Law Provides “Offensive Rights” (and Not Protection) to Inventors
- Alternative and Supplementary Offensive Rights
- Intellectual Property—The Big Picture
- Trademarks
- Copyright
- Trade Secrets
- Unfair Competition
- Acquisition of Offensive Rights in Intellectual Property—Summary Chart
- Summary of Legal Remedies for Misappropriation of Various Types of Intellectual Property
- Invention Exploitation Flowchart
- Summary
2. The Science and Magic of Inventing
- What I Mean by “Invention”
- Inventing by Problem Recognition and Solution
- Inventing by Magic (Accident and Flash of Genius)
- Making Ramifications and Improvements of Your Invention
- Solving Creativity Problems
- Contact Other Inventors
- Beware of the Novice Inventor’s “PGL Syndrome”
- Don’t Bury Your Invention
- Summary
3. Documentation and the PPA
- Introduction
- Documentation Is Vital to the Invention Process
- Documentation Is Vital to Prove Inventorship
- Trade Secret Considerations
- Record Conception and the Building and Testing of Your Invention
- How to Record Your Invention
- Another Way to Record Conception or Building and Testing— The Invention Disclosure
- The Provisional Patent Application— A Substitute for Building and Testing, With Some Disadvantages
- Don’t Sit on Your Invention After Documenting It
- Don’t Use a “Post Office Patent” to Document Your Invention
- Summary
4. Will Your Invention Sell
- Why Evaluate Your Invention for Salability
- Start Small but Ultimately Do It Completely
- You Can’t Be 100% Sure of Any Invention’s Commercial Prospects
- Take Time to Do a Commercial Feasibility Evaluation
- Check Your Marketability Conclusions Using the Techniques of Consultation and Research
- Now’s the Time to Build and Test It (If Possible)
- The Next Step
- Summary
5. Is It Patentable
- Patentability Compared to Commercial Viability
- Legal Requirements for a Utility Patent
- Requirement #1: The Statutory Classes
- Requirement #2: Utility
- Requirement #3: Novelty
- Requirement #4: Unobviousness
- The Patentability Flowchart
- Don’t Make Assumptions About the Law
- Summary
6. Search and You May Find
- Why Make a Patentability Search
- When Not to Search
- The Two Ways to Make a Patentability Search
- The Quality of a Patent Search Can Vary
- How to Hire a Patent Professional
- How to Prepare Your Searcher
- Analyzing the Search Report
- Computer Searching
- Do-It-Yourself Searching
- The Scope of Patent Coverage
- Patent and Trademark Depository Libraries
- Problems Searching Software and Business Inventions
- Searches on the Internet
- MicroPatent Patent Searches on the Internet
- NPL (Non-Patent Literature) Searches
- Summary
7. What Should I Do Next
- Drop It If You Don’t See Commercial Potential (Chart Route 10-12-14-X)
- Try to Sell Invention to Manufacturer Without “Regular” Patent Application (Chart Route 10-12-14-16-18-B)
- File an Application and Sell It to or License a Manufacturer If You See Commercial Potential and Patentability (Chart Route 14-16-18-20-22-A)
- If You Have Commercial Potential Without Patentability, License or Sell Your Invention to a Manufacturer Without Filing (Chart Route 16-24-26-28-30-B)
- Make and Sell Your Invention Yourself Without a Utility Patent Application (Chart Route 16-30-C)
- Manufacture and Distribute Your Invention Yourself, Keeping It as a Trade Secret (Chart Route 20-32-34-D)
- File Patent Application and Manufacture and Distribute Your Invention Yourself (Trade-Secretable Invention) (Chart Route 20-32-34-36-E)
- File Patent Application and Manufacture and Distribute Invention Yourself (Non-Trade-Secretable Invention) (Chart Route 20-32-38-36-E)
- Test Market Before Filing (Chart Route 20-32-38-40-F)
- Summary
8. How to Draft the Specification and Initial Drawings
- Lay Inventors Can Do It!
- What’s Contained in a Patent Application
- What Happens When Your Application Is Received by the PTO
- Do Preliminary Work Before Preparing Your Patent Application
- Flowchart
- Write Your Patent Specification to Comply With the Full Disclosure Rules
- Software, Computer-Related Inventions, and Business Methods
- First Prepare Sketches and Name Parts
- Drafting the Specification
- Review Your Specification and Abstract Carefully
- Checklist for Your Patent Application Draft
- Specification of Sample Patent Application
- Summary
9. Now for the Legalese—The Claims
- What Are Claims
- The Law Regarding Claims
- Some Sample Claims
- Common Misconceptions Regarding Claims
- One Claim Should Be as Broad as Possible
- The Effect of Prior Art on Your Claim
- Technical Requirements of Claims
- Drafting Your Main (Independent) Claim
- Other Techniques in Claim Writing
- Drafting Dependent Claims
- Drafting Additional Sets of Claims
- Checklist for Drafting Claims
- Summary
10. Finaling and Mailing Your Application
- The Drawing Choices
- PTO Rules for Drawings
- Doing Your Own Drawings
- Consider Using a Professional Patent Draftsperson
- Finaling Your Specification—For Paper Filing
- Finaling Your Specification for EFS-WebFiling
- File the Information Disclosure Statement Within Three Months
- Assignments
- Petitions to Make Special
- Filing a Design Patent Application
- Summary
11. How to Market Your Invention
- Perseverance and Patience Are Essential
- Overview of Alternative Ways to Profit From Your Invention
- Be Ready to Demonstrate a Working Model of Your Invention to Potential Customers
- Finding Prospective Manufacturers/Distributors
- The “NIH” Syndrome
- The Waiver and Precautions in Signing It
- The Best Way to Present Your Invention to a Manufacturer
- Presenting Your Invention by Correspondence
- Making an Agreement to Sell Your Invention
- Manufacturing and/or Distributing the Invention Yourself
- Summary
12. Going Abroad
- Introduction 320
- The Paris Convention and the One-Year Foreign Filing Rule
- Other Priority Treaties Similar to the Paris Convention
- European Patent Office/Europäisches Patentamt/Office Européen des Brevets (EPO)
- The Patent Cooperation Treaty (PCT)
- Non-Convention Countries
- Never Wait Until the End of Any Filing Period
- The Early Foreign Filing License or Mandatory Six-Month Delay
- Don’t File Abroad Unless Your Invention Has Very Good Prospects in Another Country
- The Patent Laws of Other Countries Are Different
- The Ways to File Abroad
- Rescind Any Nonpublication Request
- Resources to Assist in Foreign Filing
- Summary
13. Getting the PTO to Deliver
- What Happens After Your Patent Application Is Filed
- General Considerations During Patent Prosecution
- A Sample Office Action
- What to Do When You Receive an Office Action
- Format for Amending the Specification and Claims
- Drafting the Remarks
- Drawing Amendments
- Typing and Filing the Amendment
- If Your Application Is Allowable
- If Your First Amendment Doesn’t Result in Allowance
- Interferences
- Statutory Invention Registration (SIR)
- If Your Application Claims More Than One Invention
- The Public May Cite Additional Prior Art Against Your Published Patent Application
- NASA Declarations
- Design Patent Application Prosecution
- What to Do If You Miss or Want to Extend a PTO Deadline
- Summary
14. Your Application Can Have Children
- Available Supplemental Cases
- Continuation Applications
- Request for Continued Examination (RCE)
- Divisional Applications
- Continuation-in-Part and Independent Applications
- Reissue Applications
- Statutory Invention Registration (SIR) and Defensive Publications
- Substitute Applications
- Double Patenting and Terminal Disclaimers
- Summary
15. After Your Patent Issues: Use, Maintenance, and Infringement
- Issue Notification
- Press Release
- Check Your Patent for Errors
- Patent Number Marking
- Advertising Your Patent for Sale
- What Rights Does Your Patent Give You
- Be Wary of Offers to Provide Information About Your Patent
- Maintenance Fees
- Legal Options If You Discover an Infringement of Your Patent
- What to Do About Patent Infringement
- Product Clearance (Can I Legally Copy or Make That )
- Citing Prior Art Against Patent Applications and Patents
- The Court of Appeals for the Federal Circuit (CAFC)
- Using the Reexamination Process to Reduce the Expense of Patent Infringement Suits
- Jury Trials
- Arbitration
- How Patent Rights Can Be Forfeited
- Your Patent Is Subject to Interference for One Year
- Tax Deductions and Income
- Patent Litigation Financing
- Summary
16. Ownership, Assignment, and Licensing of Inventions
- The Property Nature of Patents
- Who Can Apply for a Patent
- Joint Owners’ Agreement
- Special Issues Faced by the Employed Inventor
- Assignment of Invention and Patent Rights
- Record Your Assignment With the PTO
- Licensing of Inventions—An Overview
- Universal License Agreement
- How Much Should You Get for Your Invention
- Summary
- Desiderata for PTO
Appendixes
1. Abbreviations Used in Patent It Yourself
2. Resources: Government Publications, Patent Websites, and Books of Use and Interest
- Government Publications
- Patent Websites
- Books of Use and Interest
- Books Relating to Self-Improvement
3. Glossaries
- Glossary of Useful Technical Terms
- Glossary of Legal Terms
4. Fee Schedule
5. Mail, Telephone, Fax, and Email Communications With the PTO
- Patent and Trademark Office Mail Addresses
- Patent and Trademark Office Telephones and Faxes
6. Quick-Reference Timing Chart
7. Tear-Out Forms
- Nondisclosure Agreement
- Invention Disclosure
- Provisional Patent Application Cover Letter
- Application Data Sheet—PTO SB/14
- Positive and Negative Factors Evaluation
- Positive and Negative Factors Summary
- Consultant’s Work Agreement
- Searcher’s Worksheet
- Drawing Reference Numerals Worksheet
- Declaration for Utility or Design Patent Application
- Patent Application Declaration (Supplemental Sheet)
- Utility Patent Application Transmittal
- Fee Transmittal
- Credit Card Payment Form
- Information Disclosure Statement Cover Letter
- Information Disclosure Statement by Applicant
- Nonpublication Request
- Request Under MPEP 707.07(j)
- Petition to Make Special
- Design Patent Application
- Design Patent Application Transmittal
- Request for Expedited Examination of a Design Application
- Amendment
- Submission of Corrected Drawings
- Supplemental Declaration
- Petition for Extension of Time
- Pre-Appeal Brief Request for Review
- Request for Continued Examination (RCE) Transmittal
- Request for Certificate of Correction
- Certificate of Correction
- Maintenance Fee Reminder Sheet
- Submission of Maintenance Fee
- Joint Applicants—Statement of Respective Contributions
- Joint Owners’ Agreement
- Assignment of Invention and Patent Application
- Recordation Form Cover Sheet
- Universal License Agreement
8. Forms Available at the PTO Website
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