ISA HOW FILE PATNT APPL-2014 How to File Your Own U S Patent Application.pdf

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1、How to File Your Own U.S. Patent ApplicationBy Hans D. Baumann NoticeThe information presented in this publication is for the general education of the reader. Becauseneither the author nor the publisher has any control over the use of the information by the reader,both the author and the publisher d

2、isclaim any and all liability of any kind arising out of such use.The reader is expected to exercise sound professional judgment in using any of the informationpresented in a particular application.Additionally, neither the author nor the publisher has investigated or considered the effect ofany pat

3、ents on the ability of the reader to use any of the information in a particular application.The reader is responsible for reviewing any possible patents that may affect any particular use ofthe information presented.Any references to commercial products in the work are cited as examples only. Neithe

4、r theauthor nor the publisher endorses any referenced commercial product. Any trademarks ortradenames referenced belong to the respective owner of the mark or name. Neither the authornor the publisher makes any representation regarding the availability of any referencedcommercial product at any time

5、. The manufacturers instructions on the use of any commercialproduct must be followed at all times, even if in conflict with the information in this publication.Copyright 2014 International Society of Automation (ISA)All rights reserved.Printed in the United States of America.1098765432ISBN: 978-0-8

6、76640-47-0No part of this work may be reproduced, stored in a retrieval system, or transmitted in any formor by any means, electronic, mechanical, photocopying, recording or otherwise, without the priorwritten permission of the publisher.ISA67 Alexander DriveP.O. Box 12277Research Triangle Park, NC

7、27709Library of Congress Cataloging-in-Publication Data in processAbstractIn this booklet, Hans D. Baumann, Ph.D., P.E., a well-known inventor and inter-national engineering and management consultant, gives concise and down-to-earth instructions on how a budding inventor can save time, cost and effo

8、rt byfiling his or her own U.S. Patent Application, based on Dr. Baumanns years offiling for more than 60 patents himself.The text is easy to read and is free of the typical “legalese.” The bookletincludes all the forms required by the U.S. Patent Office. The text concludeswith hints about how to ap

9、proach potential buyers or licensees of yourinvention.vTable of ContentsAbout the AuthorviiIntroduction.ixDo You REALLY Want to Have a U.S. Patent? 1A Non-Disclosure Agreement 3How to File a Provisional (Temporary) Patent Application .7Why Not Hire a Patent Attorney? 11How to Write a Formal Patent A

10、pplication 13Understanding the Patenting Process.25Responding to the First Rejection from the Patent Office 27Filing a CONTINUATION-IN-PART Application 29Filing in Foreign Countries31Getting a FINAL REJECTION from the Patent Office .33Finally, Getting Your Patent Allowed.35viiAbout the AuthorHans D.

11、 Baumann, Ph.D., P.E., received an industrial engineering education inhis native Germany and studied under U.S. Government sponsorship at West-ern Reserve University and later at Northeastern University, culminating in aPh.D. in Mechanical Engineering from Columbia Pacific University. In addition,he

12、 is registered as a Professional Engineer in four states. During his professionalcareer, he personally designed or directed the development of more than 28valve lines. One of them, the famous “CAMFLEX” valve and its derivations, isproduced in eight countries where over three million units have been

13、sold. He iscredited with more than 150 U.S. and worldwide patents and has published 115papers and articles in addition to co-authoring seven handbooks on valves,instrumentation, and acoustic. He also was named by InTech magazine one offifty most important innovators and wrote the acclaimed business

14、book, TheIdeal Enterprise.Prior to founding his own control valve manufacturing company in 1977, hewas an International Consultant, Corporate Vice-President of Masoneilan-Inter-national, Inc., and Manager of R he was named HonoraryMember of the Spanish Chemical Engineering Society, and Honorary Life

15、 Mem-ber of the Fluid Controls Institute. His many valve designs have been honoredwith a gold medal from Germany, prizes from France and Japan, and seven U.S.“Vaaler” awards. He is a member of Sigma Xi, the scientific research society.ixIntroductionHaving successfully applied for over 60 U.S. patent

16、s1, I am considered by myfriends to be an expert in patent law. I hope that after reading this book, youwill better understand the patenting process.Contrary to what you may believe, you do not need a patent attorney to filea U.S. patent application if you are a U.S. citizen, although it might help

17、to haveone to help you comply with the ever more complex rules the U.S. Patent Officecomes up with. Even though some of the rule changes are the result of trying tomake U.S. patent law also comply with foreign patent regulations, gone are thedays when Thomas Jefferson as Secretary of State would app

18、rove a U.S. patent,which would then be signed by President George Washington.Speaking of foreign patent regulations, here you definitely need a foreignpatent attorney, since U.S. patent attorneys are not allowed to practice law inother countries. Besides, there is the language problem. An exception

19、is Euro-pean patents, which can be filed in English.I have had to use foreign attorneys on a number of occasions. Unfortunately,these attorneys are nothing but “letter carriers,” who leave the resolution ofobjections by foreign patent examiners up to you. What this means is that youshould study the

20、objections stated by the foreign patent examiner and you (oryour U.S. attorney) should write an appropriate response, which then will bepassed on to the patent examiner by your foreign attorney.Why did I write this booklet? A number of friends have asked me over theyears how to file a U.S. patent ap

21、plication based on my extensive experience inthis field, even though I am not a patent attorney2. It seems that my friendsliked the advice they received and some asked, “Why not write a book?” Sure,there are a number of “How to File a Patent” books on the market. Patent attor-neys usually write them

22、; some have more than 400 pages and are filled with toomuch detail, confusing the reader, including me. Not being an attorney allowsme to avoid formal legal language and jargon, making this book more readable.I hope you will agree.1. Another 43 were filed by my former employers, using their own atto

23、rneys.2. One of the examiners at the U.S. Patent Office once recommended that I become a “PatentPractitioner,” a person who can file patent applications for others.Do You REALLY Want to Have a U.S. Patent? 1Do You REALLY Want to Have a U.S. Patent?This is a valid question, one you should consider be

24、fore spending lots of moneyand time on obtaining one. Many people are under the impression that owninga patent will make them rich. Of course, it is not the patent that brings monetaryrewards, but the money you receive by producing and selling your uniqueproduct or by licensing your invention.The be

25、st way to make money with an invention is to license your inventionto an interested manufacturer. To do this, you dont need a patent, althoughhaving a patent will make your invention more valuable to the company wholicensed it since it will stop competitors in the United States (or in foreign coun-t

26、ries, if you have foreign patents) from competing against the company. Youshould also realize that owning a U.S. patent has another benefit: it will preventforeign companies from copying your product and selling it here in the UnitedStates, even though they can sell it abroad unless you have patent

27、rights in thatparticular country.At this point, you should also realize that there are two different types ofpatents: a Design Patent, which is a patent describing how things look (e.g., theshape of a special hat) and is only valid for 14 years, and a Utility Patent, whichcovers improvements in devi

28、ces or machinery and is valid for 20 years from thedate the application was received by the Patent Office. A Utility Patent is typi-cally what an inventor should be looking at.The first thing you should consider before applying for a patent is: does thisinvention have any value? This is tough to eva

29、luate, since you may be emotion-ally attached to this gizmo. Asking your friends and neighbors does not help,since they might be afraid to offend you. Do your market research by looking atwebsites or through product catalogs, to see whether something similar exists.Even though there might be a produ

30、ct that resembles your own invention, yourinvention might be patentable if you can prove that it is substantially better (seethe discussion of “prior art” in “How to Write a Formal Patent Application andUnderstanding the Patenting Process”).The next thing you should consider is: has somebody else al

31、ready patentedyour invention? This can be tough, but you should try. Otherwise, the examinerat the U.S. Patent Office may determine that your invention is already patentedand will reject your application, and all your time and money will be wasted.Again, to start your search you might consult one or

32、 more websites or read2 How to File Your Own U.S. Patent Applicationthrough catalogs of companies that make products in an area where your inven-tion might fit in. The website http:/ allows you tobrowse for existing patents or even filed patent applications (U.S. and foreign)by broad subjects, by th

33、e name of the inventor or by patent number. This will atleast give you a start.Finally, consider the fact that having a patent only allows you to sue anyinfringer in court. The Patent Office will not protect you and enforce your pat-ent rights!Before you decide to apply for a U.S. patent, be aware t

34、hat besides all the fil-ing fees and issuing fees, which amount to $3,380 for a large entity (a largecompany), $1,690 for a small entity (a small company or an individual) and $845for a micro entity, you also have to pay what I call a “maintenance fee” amount-ing to $800 after 3.5 years and in ever-

35、increasing amounts in the following threeyear maintenance cycles. These fees are valid at the time of this writing (2013),but change every year. For more on fees, please consult the U.S. Patent OfficeWebsite: www.uspto.gov.NOTE: It is possible to sell your invented product before you file your paten

36、tas long as you actually file within six months of the first sale (the sale consti-tutes publicizing your invention). That way you retain later patent protection,assuming that your patent is approved.A Non-Disclosure Agreement 3A Non-Disclosure AgreementBefore you decide to apply for your patent, af

37、ter you determine that your prod-uct has commercial value and there is no infringement on somebody elsespatent, you may want to approach a potential buyer or licensee for your inven-tion. This could save you the cost and effort of filing for patent protection sincethe prospective buyer or licensee m

38、ay decide to do the patent application him-self. Then again, you may want to do this after you have filed your patentapplication, considering that it takes an average of three years to get an applica-tion approved.Approaching potential customers also helps you to find out whether thereexists real co

39、mmercial interest to justify further investment on your part. How-ever, before you show your invention, you should insist that the potentialcustomer sign a NON-DISCLOSURE AGREEMENT. This will protect yourrights, at least for a given time, as stipulated in the agreement. This documentallows you to su

40、e the customer if he utilizes your invention without yourpermission.On a related matter: This might also be the time to build a working proto-type. A working prototype will enable you to demonstrate to your potentialcustomer that the invention really works. A hands-on model is worth more thanhundred

41、 drawings, especially if you are talking to the sales manager of a pro-spective company, who may have difficulty reading drawings or sketches.Here is a somewhat abbreviated version of a typical Non-disclosureAgreement:4 How to File Your Own U.S. Patent Applicationnon-disclosure AgreementThis agreeme

42、nt is made on the date indicated below, between _ (1) located at _ (2), here-inafter called the DISCLOSING PARTY and_ (3) located at_ (4), hereinafter called the RECIPIENT.Whereas, the Disclosing Party may share certain proprietary information withthe Recipient during discussions that may lead to a

43、possible future businessrelationship:For the purpose of this agreement, proprietary information means any data,designs, models, inventions, or other confidential and proprietary matter thatmay be submitted by the Disclosing Party to the Recipient or their agent, eitherverbally or in writing. As defi

44、ned herein, the proprietary information specifi-cally relates to _ (5).Proprietary information, as defined herein, shall not include informationwhich was known by the Recipient prior to submission by the Disclosing Party.The Recipient agrees to use the proprietary information solely in connectionwit

45、h a contemplated future business relationship and shall return all submitteddata, models and other forms of information upon completion of the terms ofthis agreement, or at the termination of any dealings between both parties.This agreement shall remain in effect for _ years (6), unless extended bym

46、utual agreement.Each party warrants that it has the right to make this agreement and thatthere are no further WARRANTS being made nor implied.The validity and performance of this contract shall be governed in accor-dance with the laws of the State of _ (7).In WITNESS WHEREOF, the parties have hereby

47、 executed this agreement onthis _ day of _ in the year _._ _ (8)_A Non-Disclosure Agreement 5Legend:1. Your first and last name.2. Your legal address, town, county and state.3. The name of the Recipient.4. The legal address of the Recipient.5. Give a brief description of the invention. This can be t

48、ricky. It has to bedetailed enough so that the recipient knows it relates to his business but not toospecific, to avoid giving away details of your invention. For example, if youinvented a new socket wrench, say WRENCH instead of TOOL, since “tool”could also relate to a hammer, but do not say SOCKET WRENCH.6. The number of years; two years is customary.7. The Recipient most likely will insist on using his own state.8. Write your signature below your name and title.How to File a Provisional (Temporary) Patent Application