Lambert Intellectual Property Law (mountain panorama)

How to Instruct a Patent Lawyer

Collecting this information in advance can make the application process more efficient. The important part is how to describe the invention.

PART 1: Basic Information

Inventor names, addresses and citizenship: an inventor is a person who made a contribution to the conception of the invention.

How, when, where and to whom any disclosures or offers for sale of the invention have taken place, particularly if made to a person not in a relationship of confidence with you.

If no public disclosure has occurred, then identify when the first public disclosure is expected to occur.

Identify anyone who might have an interest in the invention by assignment or license.

PART 2: How to describe the invention

There are four parts that are important. We follow the problem-solution approach.

Rationale: The state gives exclusivity in return for disclosure of the invention. Therefore, to provide a broad scope of protection, there must be a comprehensive description.

Donít attempt to follow a format of any patent you have seen before.

Provide just these parts:

  1. Problem: Describe the problem solved or need met by the invention.
  2. Solution: Use your own words to summarize what thing or method solves the problem or meets the need. State the solution as a set of elements or method steps that would be in any embodiment of the invention, but the combination of the elements or method steps must not have existed before. The elements or method steps should either be things or steps that are manipulation of things, and should not be results.
  3. Drawings: provide a set of drawings that illustrate as many embodiments of the invention that you can conceive.
  4. Detailed description: describe in detail at least one way of carrying out the invention in sufficient detail and with reference to the drawings so that a person of average skill in the art could make and use the invention from your description. Describe all embodiments you can think of. Describe alternative features of any features shown in the drawings. Use references characters to identify the elements in the drawings. Start with the numeral 10 and use even numerals only. State everything you can think of that might be useful to a person trying to follow the patent to make the invention.


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