Anthony Palagonia 0000-00-00 00:00:00
A Knowledgeable Inventor Is A Better Inventor If inventors have a basic understanding of patent law, they more clearly disclose their invention, distinguish the invention from the prior art and work with a patent practitioner to obtain higher quality patents while streamlining the patent drafting process. Inventor education includes: a discussion of what can be patented, what a patent is and what it is not, and who truly is an inventor. Many inventors need a layman’s interpretation of patent law in terms that the inventor can understand. It may be useful to quote the actual law or rule and then explain it in everyday language and relate it to the science or technology known to the inventor. The goal of this process is to clear up misconceptions inventors have about patent law and to help them see how patent laws affect them. Inventors need to know that a patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention. However, enforcement of the right to exclude is at the expense of the patent owner. Most inventors know that machines, structures and materials can be patented and that laws of nature cannot be patented. They may have less understanding about methods that may be patented. For instance, they may understand that methods of making machines, structures and materials can be patented, but believe that methods that yield a non-physical result cannot be patented. For example, a method of designing a computer chip can be patented as long as a computer is used. The role prior art plays in patentability is another area of inventor confusion. Prior art constitutes all information that is available to the public in any form before the filing date or date of invention that is relevant to a patent’s claims of novelty. This confusion centers on the question of what is novel or obviousness. For novelty, it should be emphasized that there must be concrete proof that the invention was known or that it already existed, otherwise it is novel. Concrete proof includes the physical invention or printed matter describing the invention and not just an opinion that it might exist. Subtle points of discussion include: selling a larger item that contains the new invention, offers to sell the invention, and papers written by the inventors must have been made public no more than one year prior to filing the patent application or the invention is no longer considered novel. Inventors should be advised if they say something exists, then as far as patent office is concerned it does exist, even if it doesn’t! The concept of obviousness is invariably more confusing for inventors. Typically, an inventor will say something is obvious when they really mean it is possible. The two most important things about obviousness are: 1. The patent office requires a printed reference that describes part of the invention and another printed reference that supplies what is missing and there must be a good reason to combine the references; or 2. A printed reference that describes part of the invention and case law that indicates that what is missing from the reference is within the skill of a person of ordinary skill (not an expert) in the art. It is useful to indicate techniques the inventor can use in describing the invention to assist in overcoming potential obviousness rejections. Most inventors do not realize that they do not need to know why their invention works and do not need to speculate on why the invention works. Patent applications are not technical papers and they have a different standard of disclosure. The invention must be described in a non-confusing way with enough detail so the proverbial “person of ordinary skill in the art” can practice the invention based on the disclosure. Too much detail is almost as bad as too little. However, for certain types of inventions, the inventor needs to disclose how to make the invention. Most inventors know that patent applications include claims, but know very little of the requirements for claim drafting. Since inventors must read the entire application and sign a declaration that the application describes and claims their invention, time should be devoted to meaning of claim drafting terms such as “comprising” and “consisting of ” and the differences in use of the words “a” and “the.” Further, inventors may not realize that all the claim elements must be shown in the drawings. Also, all inventors must have contributed to at least part of one claim. To suggest a claimed feature makes one an inventor. To add the feature at the instruction of another does not make one an inventor. Improperly naming inventors can be the basis for invalidating a patent application. Inventor education should take place as early in the invention process as possible. Ideally, inventor education takes place before the inventor prepares an invention disclosure and may include formal classes. Inventor education can also be done after the invention disclosure has been written (for example, when discussing the invention with the inventor) by asking for additional disclosure or clarification of certain points in the existing disclosure and explaining why those items are important to the process. Finally, the goal of inventor education is to instill a sufficient understanding of patent law into inventors so they can prepare superior invention disclosures that a practitioner can turn into superior patent applications.
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