Strategies For Writing Patent Claims

Writing a patent application is not as straightforward as it seems. The importance of drafting good claims cannot be overstated for they delineate the boundaries of an invention.

Most patent agents and patent attorneys prefer to write claims as broadly as possible without triggering a negative response from the US Patent and Trade Office patent examiner. While a broad claim helps cover more aspects of the invention, though, it can also bring to light a greater range of prior art. Narrow claims are easier to obtain and enforce, but leave room for competitors to move in by making only minor modifications to the invention.

US Patent Classification Search

When on the US patent and Trade office website, key in the phrase, "Tools to help in searching" by patent classification. When you click on the phrase, a listing of all current U.S. classes and subclasses or patents will be displayed. Find the classes and subclasses that most closely match your invention to do a preliminary patent search.

Appreciating the History of the USPTO

All too often, when applying for a US government patent, inventors get frustrated with the process, time and bureaucracy it takes for patent approval.

Turn your frustration to appreciation, and think of it this way. Intellectual Property surrounds us in nearly everything we do. With so much invention, it really is amazing that the process works as well as it does.

And it took tremendous foresight from our earliest lawmakers to realize that the first step towards progress was to reward and protect inventors. Patent protection was granted by the American colonies as early as 1641, before any formal legal system was in place. And when the Constitution was framed nearly a century later, it contained the first legal provisions for protection.

Contents of a Patent Search Report

When you hire a professional to conduct a patent search for your invention, you should receive a patent search report that can be reviewed with your patent lawyer or agent.

Your patent search report should contain:
- a description of your invention written by the researcher to confirm they understand the nuances of your invention
- a list of the patents discovered during the search
- prose that explains the relevance of the found patents and their references
- a list of classes and subclasses searched
- a list of examiners consulted.

Using the Boolean Method

Patent information can be obtained online for patents granted from 1976 to the present with word searches using phrases to describe the invention information you're looking for.

The Boolean method allows you to use more than one word at a time. For instance you can key in ‘telescope' and ‘glass'. This will show you patents that relate to both of your chosen words. To expand or deepen your search, you can comb these related patents for additional words and phrases that you can then use in another search.

The Patent Prosecution Process

Patent prosecution is the term used to describe the USPTOs patent application process from the time an examiner begins working on a non-provisional patent application.

It is first inspected to ensure that the application is complete with all required parts. Next comes the examination phase which can take from 6 months to three years. An examine will look at all claims and issue a First Office Action raising issues about the claims that you will have to answer.

A Second Office Action can be issued, and is often a final action on certain claims. After prosecution is over you will either wind up with some claims being allowed, all being rejected or all being allowed. There is an appeals process, but it does not often end in success.

Do Your Own Preliminary Patent Search

Although it is recommended that a professional such as a patent lawyer or patent agent conduct a formal patent search for your new invention, it is a wise idea to conduct your own preliminary patent search using the online database at the US patent And Trade Office web site.

In addition to this being a free patent search, the advantages of conducting your own preliminary search are:

- You will familiarize yourself with the patent process.
- You will learn about product categories and sub-categories, and about how to present patent materials.
- You might find patents of products in your field or industry, giving you competitive information
- You might just find another product like yours, eliminating the need for a more costly, formal search.

Just remember that the online database at the USPTO only goes back as far as 1975, so it would never be a compete search.

Doing a Patent Number Search

Because the 1790-1975 patents can only be searched by patent number and/or current U.S. patent classification, you must either know particular patents to search, or identify patent classification numbers to search.

To use the patent number search page at the US Patent and Trademark Office Web site at http://www.uspto.gov:
. Type the patent number or numbers into the box. If you include more than one number, they should be separated by a space. It is not necessary to include commas or to capitalize the prefix.
. Anything you enter into the patent number search box that is not a patent number (other terms, operators like 'OR' or 'AND') will be ignored. The search will be conducted only on entries you make that are recognized as patent numbers.

Click the Search button. The database will be searched for all the numbers you provide, and a list of the documents matching your query will be returned, with the most recent ones first.

The Unnecessary Loss of Your Patent Protection

After the hard work and extended time it takes to obtain a patent, it's understandable how a person can think, “Well that's finally over” and wash their hands of the process.

Many people end up losing their patent protection simply because they moved and never updated the address on record with the US Patent and Trademark Office. When notices from the USPTO don't get to you, you may fail to pay the periodic maintenance fees to the USPTO, and your patent will expire before its term.

The Role Of The Patent Examiner

At the U.S. Patent and Trademark Office, Patent Examiners review patent applications to determine if they comply with basic rules and legal requirements. Patent examiners are professionals with expertise in disciplines like biology, chemistry, physics, chemical engineering, electrical engineering, mechanical engineering, computer engineering or computer science. And your patent application will find its way to an appropriate examiner.

Because patent examiners are well versed within their fields, it is to your advantage to hire a patent agent or patent attorney who is also an engineer or scientist.

Invention Documentation Service

The US Patent Office offers a service to inventors called the Disclosure Document Program. It will help establish and maintain evidence of your rights as first inventor.

Under this program, the documents will be kept in confidence and without publication for two years. The disclosure document has to be formatted according to USPTO standards outlined on their web site and should include a complete description including a drawing. It should be accompanied by a letter requesting that the document be protected under the Disclosure Document Program, and signed by the inventor.

This two year period is neither a grace period, nor should it replace keeping a daily log of your invention and its progress.

Patent vs. Trademark

It might seem absurd, if not impossible, to protect a color. But some colors intrinsic to the utility or design of a product have merited protection by the US Patent and Trademark Office.

Whether or not a color, or for that matter, texture, sound, or smell is patentable depends on the type of patent your intellectual property falls under, and whether the color has a useful purpose or exists for design purposes only.

If filing for a utility patent, the color can be protected only if it has a purpose. For example, red might be a patentable improvement for fire engines because the color has a useful purpose – to help identify the fire engine to other vehicles and pedestrians.

If the color has no utility, but is intrinsic to the design of the product or is distinct to the brand's recognition, the color could be protected under trademark law. And, many products have simultaneously filed for a patent to protect their product and a trademark to protect the product's marketable distinctions. The pink of Owens Corning insulation is a good example of a color that is distinct to the brand's recognition without having utility.

How To Find Patent Numbers

If you are searching for patents prior to 1976, the only way to do so online is by patent number. If you have a product that you want to do some research on, you can often find the patent number right on the product, the box it came in or in its manual.

You will recognize it because it looks something like this:

Utility Patent: 5,226,120
Design Patent: D488,297

By typing the patent number in the box provided on the search page, users will obtain access to a data sheet that contains the abstract, bibliographic data (such as, for example, the name(s) of the inventors, the entity that owns the patent, and the filing date of the application), the references that were cited in the application, and a listing of all of the claims of the patent. A copy of the full patent, with drawings, can be accessed by clicking on “Images” at the top of the data sheet.

Searching by product number is not the best way to find out if your invention has already been patented. But, if you want to look at similar inventions to see how they wrote it, what claims they've made and see their drawing, searching by patent number is very direct.

Help From The US Trade and Patent Office

If you're conducting a preliminary search using the USPTO database and are having trouble, or just have general questions about patent searches, the US Trade and Patent Office gives you several ways to get your questions answered.

- FAQs – The USPTO web site (http://www.uspto.gov) has FAQs. Check to see if your question can be found here - http://www.uspto.gov/main/faq/.
- Customer Service Representatives are available Monday through Friday (except federal holidays) from 8:30 a.m. to 8:00 p.m. Eastern Time. Contact the USPTO Contact Center (UCC) for additional information at 800 786-9199 or 571 272-1000.
- From time to time, senior officials of the United States Patent and Trademark Office, as well as a representative from the Patent and Trademark Depository Library Program go online for a live question and answer period. Check their website for dates and times.

Patent Searching as Competitive Intelligence

Companies in competitive fields who need to keep abreast of the developments of others in the filed often use patent seach methods as a way of finding out where their competitors are heading.

For this purpose, patent searches can be conducted by classification or sub-classifications to find all patents in a specific category, or you can search by company to see what a specific competitor is up to.

Business Method Patent

Business method patents are invention patents that are part of the larger family of utility patents. Classified as a process because there is no physical object, any company that develops a new way of conducting business or manufacturing can protect the method.

Henry Ford's invention of the assembly line is a historic example of a business method. A More modern one would be Amazon's 1-Click method of e-commerce. The method allows a repeat customer to bypass address and credit card data entry forms, because Amazon can access that information directly from the customer's account. Amazon was granted a patent on this business method in September 1999 (U.S. Pat No. 5,960,411).