Patent Attorneys & Engineers    

                  Patentics - Scientific patenting  

Patent4U Limited
P.O. Box 2162
87 Jabotinski St.
Petah Tikva 49120
Israel

ph: +972-3-9226767
fax: +972-3-9192287

Patentics™: Unified Multi-IP Protection

Function: A unified approach for Multi-IP protection of an invention
Use: Used at our office, to plan the overall protection strategy for an
invention using several types of IP registration, and implement the plan.
Benefits: Stronger IP protection is achieved; there is synergy between the
IP instruments used, while interference between various IP means is minimized.
IP protection for prolonged time periods - protection starts earlier, to
protect a business in its early stages; and the protection continues after the
patent expires.

Patentics(TM) Patentics: Unified Multi-IP Protection

  • Suitable IP protection for each invention


    The Figure details one embodiment of a unified method for achieving
    intellectual property IP protection as suitable for each invention. Various
    aspects of the invention may require different types of IP instruments.
    Several activities may be concurrently performed, as the need be.
    In one embodiment, the method includes:

    a. Defining the invention: by the inventor, assisted by the patent agent.
    1) The inventor describes the new system and/or method. Advantages,
    benefits. For a computer program - computer code or a plurality of codes
    and/or computer menus, etc.
    2) The patent agent, preferably using forms, questionnaires, computer
    modeling and simulations and other means, will challenge, provoke,
    stimulate, guide and help the inventor, to enhance the inventor's
    disclosure, to prepare a more complete disclosure of the invention.
    3) The activities in para (1), (2) above to be performed before the
    inventor is exposed to the prior art. The enhanced disclosure is written
    together with drawings, recorded and/or otherwise put in a tangible form.
    4) The activities in para (1), (2), (3) above to be performed during
    person-to-person meetings and/or using various telecommunication means.

    5) Other info is gathered which will affect the IP protection strategy,
    including details on the inventor (experience in this field, etc.), the
    present status of the project (patent applications filed, practical tests to
    prove the concept, basis for benefits assumptions, etc.), the goals for this
    project (geographical coverage required, timetable to pursue
    commercialization, commercialization strategy, etc.).

    6) Planning a total IP protection strategy.
    The complete disclosure is reviewed by the patent agent to identify
    parts/aspects thereof which may be protected by various IP instruments:
    patents, trade marks, designs, copyright, moral right, trade secrets.

    According to the strategy devised, activities will proceed to file a patent
    application), perform a patent search and/or perform other IP protection
    activities.

    7) The inventor, however, may decide to skip the above steps; he may have
    already decided to file a patent application per his written description, for
    example, or start with a search. He does not want advice nor strategy
    planning. In this case, the system may proceed to step 45 or 47 for example.

    b. Filing an urgent preliminary patent application:
    - Without exposing the inventors to the prior art.
    - Presenting applicants' unadulterated, original concepts.
    Preferably - the patent agent, with the support of the system and method
    herein presented, questions the inventor to stimulate him/her to fully
    disclose the novel inventive concept(s), address gaps in the disclosure
    coverage, explain/define unusual terms used by inventors, etc.

    As a minimum: File inventor's material with minimal corrections,
    Or a short description of the invention. Including for example one Claim,
    draft of drawings, without applicants' Review.
    Sometimes formal changes may be necessary for the application to be accepted
    at a specific Patent Office; these changes should then be made accordingly.
    Preferably, an enhanced, detailed application should be prepared in a short
    time; it is possible, although this approach may be rather expensive.
    To do: Preferably Within 1 week.

    Rationale: A preliminary application, even if imperfect or incomplete,
    may present a strong claim to an earlier filing date. Lack of such an
    application may result in lack of a priority, which sometimes may be of a
    critical importance. Interpretations vary, there is the First to file vs
    First to invent issue, etc., however: a significant advantage can often be
    gained by this Preliminary filing.

    c. Patents search, initial
    New patent search, Initial international search or search at the US PTO for
    example. May be performed by the patent attorney or the inventor.
    To do: Preferably Within 1 week.

    d. Preparing other IP protection means. These may include, for example,
    trade marks, designs, copyright, moral right, trade secrets.

    e. Studying search results for improved definition of the invention.
    Improved definition of the invention, to distinguish from prior art.
    Consulting with experts, ie to enhance weak points in the disclosure.
    To do: As soon as possible.

    f. Editing and submitting a complete patent application.
    Preferably, a full disclosure of the invention is prepared by the patent
    agent with inventor's cooperation.
    Including a glossary for defining inventor's unusual terms in use, or a
    translation of such terms to the terms accepted in prior art.
    After the disclosure is completed, an in-depth search may be performed, prior
    art studied and the application may be enhanced to include additional matter
    if required.

    Claiming priority (or specific partial priority) from the preliminary
    patent application filed, and/or possibly several priority dates
    from several prior filings.
    The application may include applicant's review and specific corrections
    according to the applicants' notes.
    To do: Within 1-2 months.

    A common misconception among inventors is that a preliminary (or provisional)
    application confers protection beyond the actual disclosure therein presented.
    The inventor then waits one year before filing a complete patent application,
    sometimes with disastrous consequences.

    To benefit from the earlier date, the claims in the complete application
    should be fairly based on the disclosure in the preliminary application.
    In the present invention, the above steps are performed as soon as
    possible, to earn as early a filing date for the extensive, complete patent
    application. A new document structure as detailed in Patentics may be used.

    g. Accelerated search and examination. This step is optional and involves
    additional expenses. This procedure may require the approval of the Patent
    Office authorities, according to relevant patent laws.

    Granting of a patent is conditional upon the result of an examination of
    the application, and possibly allowing for opposition by the public prior
    to final grant of the patent.

    h. Additional patent searches. Various types of searches may be performed,
    according to applicant's protection strategy. Possible strategies and
    possible searches are further detailed in the present disclosure.
    Preferably, the amount of time and money spent on searches should be
    commensurate with the planned effort in filing applications worldwide [48].
    Other considerations may apply, for example planned expenses in R&D,
    marketing, etc.

    i. Filing patent applications worldwide or an International patent
    application PCT. This step should be completed before the end of one year
    from the priority date.

    j. If another invention is discovered, for instance during product
    development, then repeat steps a - i above.

    Notes:

    1. Steps a to h should be performed within one year, so the
    overseas or international applications (step i) should benefit from the
    priority date of the initial application. Similar deadlines
    relating to other IP protection instruments should be observed as well.

    2. The above steps are optional; which steps to perform may depend on
    customer's filing strategy. Or, after performing the preliminary search, the
    applicant decides no further action should be taken.

    3. Two or more stages may be performed concurrently, according to
    circumstances and as directed by relevant law.

    4. Sometimes it may be preferable to file the initial patent application
    without reviewing the prior art. The reasons may include, among others:
    * The application can be filed earlier, to gain an advantage in filing date;
    * the inventor may be discouraged or intimidated by the prior art, this
    interfering with his capability to fully express his invention;
    * exposure to prior art may later rise questions of copyright infringement;
    * exposure to a solution to a problem may prevent the inventor from
    developing an original solution of which he may be capable - the known
    solution will pop up whenever he thinks on the subject.

    Such considerations may be still more important in computer-related
    inventions or those relating to the Internet.
    The system may present the various options (file first or search first)
    to the user, who may decide on his/her preferred strategy.

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Patent4U Limited
P.O. Box 2162
87 Jabotinski St.
Petah Tikva 49120
Israel

ph: +972-3-9226767
fax: +972-3-9192287