Posts Tagged ‘non-provisionals’

Anatomy of a Patent Application

Posted on May 11, 2011 by

We’ve previously looked at the anatomy of different types of patent claims. But, like the claims, the application itself is also not as intuitive to read as we might wish. So let’s take a look at the anatomy of a typical software patent application.


Anatomy of a System Claim

Posted on April 6, 2011 by

Keyboard button with the word "learn" on it As we discussed last time, claims are the moral equivalent to the property description and plot plan in a real estate transaction that specify the boundaries of a parcel of land – to truly understand what intellectual property is actually covered in an issued patent, you must look to the claims.

There are a couple of different categories of claims. Last time, we looked at method claims – a set of steps that describe how to do something inventive. If a competitor is to infringe the claim, they must perform each of the steps in the claim. A system claim provides a different approach to protecting the invention. Instead of protecting the steps taken to execute an inventive process, we protect the novel components that carry out those steps. In addition to protecting truly novel aspects of the widgets that the invention relies on, the system claim provides a way of protecting the invention in the event that a competitor doesn’t actually take each of the steps listed in a method claim but they’ve copied the novel widget.

Let’s take a look at the anatomy of a system claim:
System Claim Diagram

Next time, we’ll discuss how to read the rest of the patent.


What is a “continuing” app? Why file one?

Chess pieces Once you have filed a first non-provisional patent application and until that first application issues or is abandoned, you can file additional applications “related” to that first one. No matter when you actually file one of these “continuing” applications, everyone will treat the application as if you filed it on the same day as the very first application. The downside is that these applications have short life spans because they also expire at the same time as that first application. So why file one?

Smart use of continuations can save a company money. For example, you might file an extremely detailed first application that would support claims to a number of different aspects of your invention. You might choose to file the application with a small subset of the claims – perhaps the ones most relevant to your company at the time of filing – and then you only have to pay for the PTO to examine that focused subset of claims (and for you/your lawyer to respond to the PTO’s initial rejections). Once you get a patent allowed you’re 4-7 years out from time of filing and in a different place as a company, both from a funding perspective and from a business perspective. Maybe you’ve long since moved on to another venture – no need to have spent money on those other aspects of the invention. Or maybe the focus of your company has changed to one of those other aspects and you’re thrilled that you can now protect the methods / products that have become relevant to your business. Either way, you’ve bought yourself the time you need to make more informed decisions.

Additionally, filing continuations can be useful when licensing the technology. If you have continuations that are each directed to different aspects or implementations of the invention, you have much more granular control over what rights you license out. Say you have a patent that supports X, Y, and Z, where Z is the least relevant to your business model. You may want to license out Z to a company that is going to be able to use Z and send you substantial royalty fees – but you may not want to enable them to compete with you in areas X and Y. Continuations can help you do that.

Provisionals vs. non-provisionals – what to file?

Chess pieces In an ideal world, inventors would only ever file non-provisional patent applications. We would have plenty of time and resources to thoroughly discuss the invention and work out the claims, draft a detailed specification and prepare a complete application. In the real world, unfortunately, this isn’t always possible. How do you decide whether to file your application as a provisional?