Patent Application Preparation

Inventions Are Concepts
Firstly, one may ask what are inventions? People, generally think of inventions as tangible things that can be seen. They see the invention as the new more fuel-efficient internal combustion engine, the newly manufactured substance such as a more cost-effective cleaning agent or the battery having a higher energy density and storage capacity. These, however, are mere embodiments of the invention. The invention is not something physical, but a concept. The invention is not something tangible but an abstraction. To protect an invention has to be defined. Definitions are always abstractions. The abstraction is referred to the inventive concept. It is the patent drafter’s task the define the inventive concept present in the embodiment of the inventor. The inventive concept should then be set out in the patent claims. (Slusky, 2012 (2nd ed.)) on page 3.

FIG. 1: More Fuel-Efficient Internal Combustion Engine

Patent Application to be Completed as Soon as Possible 

The patent drafter should try to complete the patent application as soon as possible. Undue delay may result in a third party filing a patent application for an invention similar to or close to the client inventor's invention. This can completely knock out or limit the scope of the patent of the client inventor as it may no longer be new or obvious in certain respects as when the client inventor initially approached the patent drafter. Also, prior art may become available that can be used against the client inventor’s invention. Patent drafting is an iterative process between the inventor and the patent drafter. In the case where there are several inventors, it is useful to have only one “contact inventor”. This contact inventor is someone who knows most of the details of the invention or can obtain the necessary information from the other inventors. He is also someone who can spend the necessary required time with the patent drafter.

FIG. 2: Patent to be Drafted Soon as Possible.

Grace Period and Provisional Patent Applications

It should be kept in mind that in many countries like the United States there is a grace period of one year from the first disclosure of the invention by the client inventor. A patent drafter should be mindful of this if the client inventor previously disclosed the invention at for example a scientific meeting. In the US provision is made for provisional patent applications. A provisional patent application must disclose the invention however, it does not have to have claims. A provisional application on filing establishes a priority date for the invention of the client inventor. A provisional application will come to an end one year after filing. A provisional patent application serves as a placeholder so that a nonprovisional utility patent can be filed within one year without losing the priority date established by the provisional patent application.

Sources Of Technical Information

The patent drafter will need to gather technical information and ideas about the invention from the client inventors. Business considerations may come from other sources, such as the applicant’s managers or marketing executives. The technical information can mainly be provided in writing. This can be invention disclosures, that are contained in sketches, technical drawings, laboratory reports, manuscripts of (unpublished) papers, and prototypes. (WIPO, 2022) on pages 28-30.

FIG. 3: Invention Contained in Technical Drawings.

Inventorship

The definition of inventorship can be simply stated that the threshold in determining inventorship is who conceived the invention. It can be said conception is the complete performance of the mental part of the inventive act, and then the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice. An inventor is a person, or persons in United States patent law, who contribute to the claims of a patentable invention.

A person has to contribute to the conception of the invention, otherwise, he is not an inventor. Insofar as defining an inventor is concerned, reduction to practice, per se, is irrelevant. One must contribute to the conception of the invention to be an inventor. Similarly, a person who shares in the conception of a claimed invention is a joint inventor of that invention. With regard to the inventorship of chemical compounds, an inventor must have a conception of the specific compounds being claimed. General knowledge regarding the anticipated biological properties of groups of complex chemical compounds is insufficient to confer inventorship status with respect to specifically claimed compounds. One who suggests an idea of a result to be accomplished, rather than the means of accomplishing it, is not a coinventor. (uspto.gov The United States Patent and Trademark Office, 2020)

FIG. 4: The inventor is the Person Who Conceived the Invention.

Slusky, R. D. (2012 (2nd ed.)). Invention Analysis and Claiming A Patent Lawyer's Guide. Chicago, Illinois: ABA Publishing, American Bar Association.

uspto.gov The United States Patent and Trademark Office. (2020, 06 25). uspto.gov The United States Patent and Trademark Office. Retrieved 10 15, 2022, from Manual of Patent Practice Procedure (MPEP): https://www.uspto.gov/web/offices/pac/mpep/s2109.html.

WIPO. (2022). WIPO Patent Drafting Manual (Second ed.). Geneva, chemin des Colombettes, Switzerland: World Intellectual Property Organization. doi:10.34667/tind.44657.

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