這個清單沒有很完整。我刪掉了很多內容,讓它比較簡明扼要。若需要比較詳細完整的,關於美國專利說明書的專業寫作介紹,請參考:
- MPEP 608.01 Specification
- MPEP 608.02 Drawing (這個製圖工程師必看)
- Faber on Mechanics of Patent Claim Drafting (我買的時候它叫做Landis on Mechanics of Patent Claim Drafting,整本書都在介紹claim怎麼寫。關於claim drafting 的基本觀念,看這本就夠了。)
- How To Write A Patent Application (這本很實用。以下有部分觀念是從這本書來的。)
The Basic Knowledge
- Claim construction rules
- Eligibility issues
- Written description requirement
- Enabling requirement
- Definiteness
- Means clause
Before The Interview With The Inventor
- Study technical disclosures from the inventor
- Understanding underlying technology
- Try to prepare a picture claim including all elements and alternatives reflecting your understanding about the invention
- Try to be a PHOSITA
At The Interview With The Inventor
- Clarify the novel and non-obvious points with the inventor
- Compare the invention with the prior art known by the inventor
- Confirm the problem solved by the invention / the technical advantage of the invention
- Clarify and confirm with the inventor:
- essential elements/limitation
- non-essential elements/limitation
- environment/workpiece
- Confirm the names of the elements
- Confirm verb/adj/adv of the limitations
- Confirm possible alternatives of the elements
- Especially elements having functional limitations only
- Obtain an enabling written description
- How it works
- The theory behind it (if the theory is known)
- All other information necessary to teach one of ordinary skill in the art to practice the invention.
- Draft at least the broadest claim at the interview: the best way to confirm the invention with the inventor
- Ethics issue: do not become a co-inventor
After The Interview
- Confirm the points discussed at the interview in writing
- Send the meeting minutes prepared at the interview (not after the interview)
- Include date, place, name of the attendees, draft drawings, key points discussed
- Put the meeting minutes in the file jacket as a record
Starting From The Claim
- Prepare draft drawings
- Attach reference numbers to every elements in the draft drawings
- Be careful about the hierarchical relationships between the numbers
- Identify essential elements / non-essential elements / environment or workpiece in the draft drawings
- The first independent claim
- Preamble
- Subject matter
- Consider eligibility issue
- Overall function / purpose of the subject matter
- Environment
- Workpiece
- Transitional phrase
- open / closed
- Body
- Essential elements: avoid limitations unnecessary to the invention
- Essential relationship between elements
- Common approach of introducing elements
- Imagine that you are preparing a solid-model diagram for a structure
- Imagine that you are preparing a flowchart for a method
- Functional limitation / wherein / whereby
- Consider the possibility to transform functional limitation into structural limitation
- Means-plus-function considerations
- Proper Markush group
- Let the preamble "breath life" in the body of the claim
- First dependent claim set
- Be careful about the hierarchical dependencies of the claims
- Use the same name for the same element
- Preamble
- Use the same subject matter
- Transitional phrase
- Addition (“further comprising”) or Explanation (“wherein”)
- Body
- Non-essential elements
- Non-essential relationship between elements
- Alternatives
- Dependent claim strategy
- Present the feature that may be patentable even if the parent is not patentable
- Claim differentiation doctrine
- Claim your product
- Other claim set: claim strategy
- Different statutory classes / varying scopes
- Process - Product
- Combination – Sub-combination
- Software claim: Consider Process – Product – Storage Medium
- Network claim: Server – Client
- Keep in mind the Unity requirement
- Always keep these in mind:
- Eligibility issues
- Statutory class
- "Directed to" a non-statutory subject matter
- Practical application
- Significantly more
- Indefinite risks
- Antecedent basis
- Double inclusion
- Approximation
- Negative limitation
- Alternative limitation
- Claim as broad as the prior art permits
- Catch the infringer!
- Protect your own product
- Patent exhaustion doctrine
- Post-Festo considerations
- Royalty base considerations
- Smallest-salable patent practicing unit
- Apportionment theory
Writing the Specification
- Prepare drawings first
- Start from the draft drawings prepared when drafting claims
- Enlarged view / diagrams for different states
- Abstract
- Redraft claim 1 into plain language
- Summary of the Invention
- Redraft the claims into plain language
- All / some / independent claims
- Objectives of the invention (consider the necessity)
- Make sure that the objectives are directly related to the problem addressed in the Background Section
- Make sure that the objectives recited are those of "the invention", not some embodiments only.
- Advantage of the invention (consider the necessity)
- The Background Section
- Field – consider IPC
- Related Art
- Put content of IDS, if any, into Background section
- Begin the sales pitch of the invention
- Address problem(s) in the related art
- Make sure the problem is directly related to the objectives of the invention
- Be careful about undue limitation
- The Detailed Description
- Effective composition
- Use the claim structure as a guide
- One topic per paragraph
- Try to use the claim limitation as the Topic Sentence of each paragraph
- First Paragraph: Overall structure of the embodiment
- Following Paragraphs:
- Use the hierarchical relationships of the claims to discuss each element
- Discuss the element itself and its relationships with other elements
- Discuss alternatives of the elements
- Describe different aspects/embodiments
- Support the claimed numerical range
- Functional language in the claim
- Put multiple structures to support the functional language
- Computer-related invention: algorithm as structure
- Clear correspondence
- “Non-limiting” statements
- Hardware description for software inventions
Review the Whole Specification Again
- Avoid undue limitation
- Objective description without subjective emphases
- Avoid using terms like “critical”, “necessarily”, “primary”, “essential”, or even “preferable” in the specification
- Check whether every claim limitation has support in the specification
- Check whether every claim limitation has support in the drawings
- Avoid “not shown in the drawings” when the feature is claimed
- Check reference numbers
- Do not assume knowledge of the state of the art
- Use claim terms consistently throughout the specification
- Make sure that all embodiments have all the listed objectives and advantages
- Functional limitations: make sure all of them have corresponding structures in the disclosure
- Avoid dedicate-to-public rule
- Avoid legal phraseology in the specification – use plain language
- For different countries:
- Fee considerations
- CN/EU: Two-part form requirement
- CN: Amendment issues
- Later added claim cannot beyond the scope of the original claims
- Draft broad claims
- Can only add limitations in the dependent claims.
- Draft dependent claims to overcome potential patentability rejections.
- CN: Objective / Advantage requirement
- EU: multiple dependent claim practice
- CN: functional limitations "deemed as prior art" in claims of utility model applications
- Eligibility issues
- "use" claims
- "computer program product" claims
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