Wednesday, October 28, 2009

Better Drawings Make A Better Patent by Bernadette Marshall

Patents should be prepared with extreme care. While descriptions should be clear and unambiguous, imagery is just as critical. As we will discuss, patent drawings are an integral part of the process and should be considered with the same care as the rest of the patent application.

Why do you need formal drawings?
Accurate, clear drawings both strengthen and enhance any patent application. Instead of reams of description, an invention can be easily explained through the drawings themselves.
Patent examiners see hundreds of cases and are often overloaded. Accurate formal drawings will help the Patent and Trademark Office examiner understand your invention faster.

Whether you are pursuing an infringer or defending your patent, drawings can help educate a judge and make your case clear. Simple, clear and accurate images will often help you win the day. “When the jury goes to the jury room, where no attorney or judge will be speaking to them, they will take with them the patent”(1)*, having clear drawings could be a big factor in deciding a case. In many jurisdictions the jurors do not take trial exhibits to the jury room, however, they often will have a copy of the patent itself with the complete set of drawings. When deciding on what damages to pursue or if in settlement negotiations, a well defined patent will enable the owner to negotiate for the best result possible.

Litigation is, of course, the worst case scenario. It is more important to deter an infringer before he or she ever gets started. An early upfront investment in professionally prepared drawings may make an infringer think twice about copying an idea when the patent is clear and unambiguous. The earlier an infringer is deterred the better for the patent owner.

Drawings or diagrams are usually created to correspond to the individual claims of the patent.
A skilled draftsperson will produce a set of drawings that best portrays your claims and describes your invention. Specific views may be employed to illustrate a problem that the invention solves or a particular advantage or need it fulfills. They can convey a new function or present how an embodiment implements that function. Prior art can be used to shown contrast or differentiate the new invention from the old or if an invention consists of an improvement to an old invention the drawings can show the improved portion with enough of the old invention to show the connection.
A drawing of the invention in its environment can facilitate understanding and the arrangement of the drawings themselves can be done in such a way to help a reader better understand the invention.
A draftsperson can suggest a single view “for inclusion on the front page of the patent application publication”(2)* that best portrays the invention.
A skilled draftsperson will prepare drawings in the correct scale ensuring that lines, numbers and letters are “sufficiently dense and dark and uniformly thick and well defined” enough to give them “satisfactory reproduction characteristics”(3)*.

Skilled draftspersons have and will use knowledge of tables, chemical or mathematical formulae, waveforms of electrical signals and symbols to create drawings.

Professional draftspersons have experience and ability to create plan or elevational views, perspective views, isometric projection, sectional views and exploded views.

There are many creative methods a skilled draftsperson uses to create a fully functional set of drawings:
The more complex and less defined the case, the more valuable the draftsperson in making constructive suggestions to improve the drawings and presenting the invention clearly.
The drawings may be created before the patent application is actually written. Time can be saved by basing the detailed description on the sequence of the drawings.
Additionally professional drafting firms stay current with regulations for foreign filings and PTO drawing updates.

“The drawing disclosure is the most important element of the application”(4)*.
The PTO states that the drawings in a design patent application “constitute the entire visual disclosure of the claim”. It is of utmost importance that the drawings are so well executed “that nothing regarding the design sought to be patented is left to conjecture”(5)*.
Additionally, all surfaces must be appropriately and adequately shaded to show clearly the character and contour of all surfaces represented.
Accurate drawings are not only important for your application but for possible infringement issues later on. With design patents, infringement is typically based on the design patented and generally does not require proof of unfair competition.

The PTO is very specific in regard to the required views for design patent applications. Often photographs are filed and they may not depict the exact views.
Once inconsistent photographs or informal drawings are filed, you are generally not allowed to correct the inconsistencies unless you can do so without adding new matter. Nothing is allowed to be removed and nothing may be added when formalizing the figures. “An incomplete or poorly prepared drawing may result in a fatally defective disclosure which cannot become a patent”(6)*

There’s a very good option to avoid all of these potential problems. You can have the photographs taken by a draftsperson. He or she will make sure that the photos are taken correctly.
Taking the photographs to depict the exact views can be tricky in itself. For instance, the invention should stay in exactly the same position for all the photographs and the camera should move around the invention at the same height and distance from the invention. Also the photograph should show only the side of the invention that is relevant. Say for instance you are photographing a cube; for the side view, the photograph should be taken in a way that shows only the side and not the side and a bit of the top. This method should apply to all the views.
Using his or her knowledge of perspective theory enables a draftsperson to correct the distortion inherent to photographs when it comes to tracing them into formal drawings.

Here’s what happens when you file informal drawings vs. formal drawings.
When informal drawings are filed, the images are converted to poor quality black and white, reduced images. This process causes the informal drawings to loose integrity, quality and detail. When the PTO invites you to provide formal drawings often the only existing reference material is the poor quality copy from the PTO. When poor reference material in which details are often blurred or illegible or barely legible is all a draftsperson is supplied to base formals on, drawings take longer and will result in more revisions. Multiple revisions, of course, increase time and cost for the drawings and the application itself.

In the case of design patents the PTO may allow the drawings to be fixed if they can be fixed without introducing new matter. However, if the informal drawings were inconsistent, there is often no way to correct them without introducing new matter. You may be in a proverbial “Catch 22” situation. Either the drawings will be rejected for being inconsistent or they will be rejected for adding new matter.

How does a draftsperson do that?
Generating the best drawings requires technical skill and creativity.
Since there is no license or college degree for patent drafting, you should rely on a firm’s experience, body of work, professional references and their use of advanced technology as good indicators of a competent and skilled drafting firm.
Most are skilled in Computer Aided Design and Drafting (CAD) and have gained experience under the supervision of senior professionals. Drafting firms often employ several draftspersons. This can give the benefit of not only a broad skill set but a variety of perspectives and approaches as well.
The PTO provides “less than 8 pages of the patent rules for drawings (37 C.F.R. 1.81 to 1.84)”(7)* so expertise must be learned through years of practice, for which there is no quick substitute.

Computer vs. hand drawn figures
Although we use the latest techniques and computer technology, there is nothing wrong with traditional hand drawn figures. It is not the quality of the equipment but the quality of the person that is important.
We feel the most cost effective process is to make drawings from engineering CAD files. By using existing CAD files a draftsperson does not need to recreate the drawings from scratch. If an item has already been manufactured or a prototype built, chances are there are existing CAD files, used in all modern manufacturing processes. However if engineering CAD files are not available, creating drawings in CAD has advantages; the electronic data can be archived to simplify amending drawings in the future. Drawings can even be modified to create new drawings, and duplicate elements in a drawing can be copied and reused instead of redrawing each one manually.

Good drawings make for good applications and for good defenses when necessary. A competent drafting firm will have experience and skills that help you not only during the patent process but over the life of the invention. Investigate your firm thoroughly. A good firm will have experienced staff and a proven track record. They will be happy to provide you with both professional references as well as examples of their work (from patents that are already issued and now public record).

(1)*. Article Invention-Aimed Patent Drawings for More Lucid Comprehension by Gregory T. Kovounas of IMPINJ, Inc, and Carl K. Turk of Merchant & Gould, PC, available in, Intellectual Property Today, Issue: November 2006.
(2)*. Manual of Patent Examining Procedure - Chapter 600 Parts, Form, and Content of Application. 608.02 Drawing (R-7) V. Drawing Standards 37 CFR 1.84. Standards for drawings (j) Front page view
(3)*. Manual of Patent Examining Procedure - Chapter 600 Parts, Form, and Content of Application. 608.02 Drawing (R-7) V. Drawing Standards 37 CFR 1.84. Standards for drawings (l) Character of lines, numbers, and letters
(4)*. United States Patent and Trademark Office – A guide to filing a Design Patent application – (3) Drawings or Black and White Photographs.
(5)*. United States Patent and Trademark Office – A guide to filing a Design Patent application – (4) Drawings or Black and White Photographs.
(6)*. United States Patent and Trademark Office – A guide to filing a Design Patent application – (10) The Design Patent Application Process.
(7)*. Article Invention-Aimed Patent Drawings for More Lucid Comprehension by Gregory T. Kovounas of IMPINJ, Inc, and Carl K. Turk of Merchant & Gould, PC, available in, Intellectual Property Today, Issue: November 2006

Thursday, October 22, 2009

What Can Be Patented?

Not every invention is patentable in the United States. To be patentable, an invention must fall within the following categories. Patents are granted on new and useful and non-obvious inventions or discoveries of:

1. Processes (or methods, primarily industrial or technical),
2. Machines,
3. Manufactures (articles which are made),
4. Compositions of matter (chemical mixtures of ingredients, and new chemical compounds),
5. Processes involving new uses of known processes, machines, manufactures or compositions of matter,
6. Improvements in any of the above, and
7. Asexually reproduced plants.

Patents are also granted for fourteen years (and shorter terms) for any new, original and ornamental design for an article of manufacture.
In general, the Patent and Trademark Office is liberal in applying the limitations of these invention classes providing that an invention is presented in a palatable fashion. For example, over the years patents have been granted on: automobile parking structures, drive-in theaters, slot machines, and a host of computer applications.
Perhaps a better notion of what kinds of developments may be patentable, if they meet the other requirements of the law, can be acquired by indicating some of the things that are not patentable. Unpatentable subject matter includes: plans for doing business, business forms, perpetual motion machines, promotional advertising schemes, intended results of desired goals, functions (without apparatus), nebulous concepts or ideas, and laws of nature (as distinguished from applications of such laws). To summarize, desired functions are not patentable. It is the thing or the method that can be patented, not the result.
Other general requirements for patentability are that the invention must not be frivolous or contrary to public policy or to the public welfare.
Must be Useful, New and Non-obvious
Regardless of the type of invention for which a patent is sought, there are three general requirements for patentability which are critically important. A patentable invention must be new, useful and unobvious.

The term useful in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent.

In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if --
"(a) The invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
"(b) The invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States . . . ."

If the invention has been described in a printed publication anywhere in the world, or if it has been in public use or on sale in this country before the date that the applicant made his invention, a patent cannot be obtained. If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which an application for patent is filed in this country, a valid patent cannot be obtained. In this connection it is immaterial when the invention was made, or whether the printed publication or public use was by the inventor himself or by someone else. If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he/she/they must apply for a patent before one year has gone by, otherwise any right to a patent will be lost.

A patent cannot issue if the subject matter sought to be patented is obvious to one of ordinary skill in the art to which the patent pertains. The section of the statute involved (35 U.S.C. § 103) states it this way:

A patent may not be obtained . . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

To determine the "obviousness" of a discovery, one must first identify the prior art or technology. Locating the most pertinent prior art is not easy in view of widespread technological activity around the world. As a practical matter, one can never be positively certain of having located the most pertinent prior art in view of the abundance of technical knowledge and publications. However, any determination of patentability must be based upon some known prior art. With the known prior art in mind, patentability is determined by asking whether or not the invention would have been obvious to a person of ordinary skill in the field, who is aware of that prior art. To be patentable, an invention must differ from the prior art in a way that is not just an obvious change or addition. In considering the question, people may disagree on the abilities expected of the fictitious "person of ordinary skill," or on the content of the prior art, or on the conclusion that the imaginary person would reach. Any such disagreement is likely to result in a disagreement on the patentability of the invention in question. It remains an open question until decided by the court of last resort.

U.S. Department of Commerce – Patent and Trademark Office.
What Can Be Patented, available at
(last visited on September 17, 2009)

Wednesday, October 14, 2009

Funny Patent Drawing


Here one for the guys out there who dominate the remote control.
This one prevents a numb thumb caused by constant channel changing.
Take note, the fiber optic light and fancy wrist mounted battery strap.
Not everyone can invent an iPod.

Patent Drawing Requirements – Utility & Design Patent Drawing Views

An experienced draftsperson will produce a set of drawings that best portrays your claims and describes your invention in a utility patent application. A design patent application “must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design”.

Views may include:
FIG 1. Is a perspective view
FIG 2. Is a front elevational view of figure 1
FIG 3. Is a right side elevational view of figure 1
FIG 4. Is a rear elevational view of figure 1
FIG 5 Is a left elevational view of figure 1
FIG 6. Is a top elevational view of figure 1
FIG 7. Is a bottom elevational view of figure 1

Reference from: Manual of Patent Examining Procedure – MPEP
1503.02 Drawing (R-5)
37 CFR 1.152. Design Drawings
US Patent and Trademark Office.

Wednesday, October 7, 2009

Patent Drawing Requirements – Surface Shading

This is a first entry dealing with Patent Drawings. From NB Graphics and Associates, Inc., a company with vast experience in the Patent Drawing field.

Patent Drawing Requirements – Surface Shading

A skilled drafts person will make certain when preparing formal utility or design patent drawings that shading is correctly applied. “Shading shows clearly the character and contour of all surfaces of any three-dimensional aspect of the design”. Bold lines are a part of surface shading and should be used to emphasize openings, indentations, raised areas and the shadow side of an outline of an object.

Reference from: United States Patent and Trademark Office - A Guide to Filing a Design Patent Application – Surface Shading