The document provides an overview of how to draft patent applications. It discusses clarifying questions about the invention and inventor upfront, including who is entitled to file. It outlines the structure of a patent description and importance of claims. The key steps in drafting are identified as picking the invention, describing it with proper terminology, generalizing the concept, drafting claims and detailed description, and writing introductory and abstract sections. The overall goal is to maximize the scope of protection while making it easy to defend, detect infringement, and prove such claims in court.

1. European Business & Innovation Centre Network
Drafting Patents
András Haszonits
Amman, 16 May 2010
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2. Agenda
• How to build a good patent?
• Drafting patent description
• Start-up questions
– Understanding the invention
– Setting the scope of protection
• Other considerations of patenting
• Claim drafting
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3. Overview
You will be able to answer the following questions:
• Which questions to be clarified up-start?
• How to proceed with patent drafting?
• What is the structure of a description?
• What are claims, why are they important?
• What types of claims exist?
• What are the most dangerous errors to make?
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4. What is a Patent?
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5. When is a Patent Good?
Good Patent
Maximized scope of protection
Easy to defend Hard to avoid
Easy to detect use Easy to prove infringement
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6. Basic Questions and ToDos
• Is the applicant the one who is entitled to file the
patent?
• Has the inventor published the invention by any means
(exhibition, trade show, presentation, etc.)
• Has the inventor ever explained the invention or the
prototype to any one (marketing guy, prospective
investor, customers, etc.)
• Is a patent application possible? ???
• Is patenting recommended?
• When to file a patent?
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7. Basic Questions and ToDos
Who is entitled to filing?
Is the applicant the one who is entitled to file the patent?
• Explain please how the invention was created!
• Have you received help, ideas, jointly
developed with client / supplier?
If so, who actually made the invention?
Who contributed what? Me!
• Where/how are you working?
Are you employed/contracted?
What is your description of work?
(service/employee invention)
Unauthorized claiming!
Figure out who your actual client is!
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8. Basic Questions and ToDos
Has the inventor published the invention by any means?
Do not give it up immediately!
• US: Grace period of 1 year for own pre-publication
• Japan: Only pre-use in Japan for 6 month
• DE: Utility model only pre-use
in DE for 6 month
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9. Basic Questions and ToDos
Has the inventor ever explained the invention or the
prototype to any one?
• For whom?
• By which means?
• Should it be considered as disclosure?
• Should it be considered as abuse?
– 6 month opportunity to file
• Anyone from the same firm/institution?
• Confidentiality/NDA signed?
• Registered exhibition priority?
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10. Basic Questions and ToDos
Is a patent application possible?
• Is it an invention?
Maybe other form of creation of the mind?
Maybe other form of protection available?
Or know-how / trade secret?
• Is the invention patentable
Other rights apply to the US then else
(e.g. business models, software might be patented)
• Is it not excluded from patentability?
(non-patentable inventions due to public order/morale, and
due to human rights)
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11. Basic Questions and ToDos
Is filing of a patent application recommended?
• Core business/IP management/wealth generation strategy?
• Protective right
• Defensive publishing?
• Trade-secret?
• Soft IP?
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12. Basic Questions and ToDos
When to file a patent?
• What is needed for a patent application?
– Complete, accurate description
US: the best application has to be included in the patent!
– Defined scope of protection in a set of valid claims
• What is needed in order to obtain Filing Date?
– Implication on requesting patent protection
– Data sufficient for identification of applicant
– Description (drawings)
– But not necessary claims! 1 year to amend claims.
But claims (even if handed in a year later) can not stretch
beyond the scope defined by description!
(US: Provisional: Claims can be amended in 1 year.)
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13. Basic Questions and ToDos
When to file a patent?
• ASAP – reserve the right for me!
– First on the market
– US: First-to-invent system, provisional
– EU: First-to-file system
• ALAP – don’t file a dead/useless patent for me!
– to obtain real life details from a working prototype,
– to be able to find the real trick or gist of the invention,
– to wait for market conditions to be perfect,
– to be able to start the monopoly period when
commercialization is already prepared,
– Wait until we have the necessary finance and partners.
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14. Innovation from a Patent-centric Point of View
1. Finding a real/important technical problem
2. Finding a solution to the technical problem
3. Distilling the idea behind the invention
4. Drafting and filing patent application
5. Going through the patent granting process
6. Publication and granting of the patent
7. Commercialization
8. Enforcement
9. Business success/failure
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15. What Do We Need to Have?
For a patent application we need to develop:
• Title of the invention
• Abstract
• Technical field of invention
• Background
• Description of the invention
detailed enough to enable a person with average
understanding in the field to reproduce and use the invention
• Illustrations, drawings
• Claims
determining the extent of the protection
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16. Steps of Drafting a Patent Application
1. Picking the invention
2. Terminology to describe the invention
3. Generalizing the invention
4. Drafting claims
5. Drafting detailed description
6. Writing introductory sections to the application
7. Writing the abstract based on the detailed
description
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17. Thank you very much for your attention
András Haszonits
haszonitsandras@upcmail.hu
The training material is to be
used exclusively in conjunction
to the SRTD project in Jordan
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