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  Patent It Yourself by David Pressman Patent It Yourself:
Your Step-by-Step Guide to Filing at the U.S. Patent Office

by David Pressman
World's Best Selling Patent Book!
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Quality Paperback, 616 pages, 8 1/2 x 11 inches
Publisher: Nolo; ISBN: 9781413313826 and 1413313825; Pub date: April 2011; ©2011-'85
New 15th Edition!
Catalog# 8549-2
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Table of Contents and List of Forms is below.
Also, see the detailed description of the book here:
Patent It Yourself.

Have a world-class idea? Ready to protect your invention from copycats? Then turn to the best resource available — Patent It Yourself. Attorney David Pressman takes you through the entire patent process, providing scrupulously updated information and clear instructions to help you:

  • Determine if you can patent your invention
  • Understand patent law
  • Evaluate the commercial potential of your idea
  • Perform your own patent search
  • File a provisional patent application
  • Prepare a formal patent application
  • Respond to patent examiners
  • Amend an application
  • Enforce and maintain your patent
  • Market and license your invention

Thoroughly updated to reflect the latest changes in intellectual property law, the 15th edition also provides the latest U.S. Patent and Trademark Office rules and forms. It includes up-to-date details on filing procedures and patent law, including a 2010 Supreme Court ruling on protection for business method and software patents.
Whether you're new at the inventing game or a grizzled veteran, Patent It Yourself will save you grief, time and money.

 

Table Of Contents

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

 

Index

Patent It Yourself
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