Who are patent engineers?
Patent engineers are law professionals who assist in the preparation of patent filings. Patent attorneys often have a group of Patent Engineers on staff. Many Patent Engineers have technical degrees.
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How to patent an idea, and profit from your invention
Patent an invention
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    Topic  
    Index  
   
01 Profiting from your inventions 101 (How to file a patent)
the patent process
02 What is an invention?
novelty, patentable subject matter
03 How do patents protect your rights to an invention?
rights, enforcement
04 Why use an Inventor's Logbook
why it is important to keep one
05 How to keep an Inventor's Logbook
guidelines and tips
06 Copyrights, trademarks and patents.
is one better than the other
07 What does a patent look like?
embodiments, claims etc.
08 Which countries should I file my patent in?
usually in more than one country
09 How much time and money to file in?
legal fees, time taken
10 How do I collect royalties off my patents?
enforcement
11 Search for prior art
resources and databases
12 Your responsibilities
and your attorney's responsibilities
A Case study: a patent (part 1)
a patent dissected
B Case study: a patent (part 2)
a patent dissected
C 10 Simple Inventions
used all over the world!
D Tips for Inventors
pitfalls and hints
E How to Invent
(Anyone can be an inventor!)

how to start inventing
F The patent process
the formal patent process
   
       
 
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An Example of a Patent (Part 2 of 2)

This section follows from Part 1. It refers to patent US 7,240,214 B2 which you can see by clicking here to open the patent in another window (this will launch the Google Patents page for this patent)

US 7,240,214 B2
Jul 3, 2007
Centrally Controllable Instant Messaging System
Inventors: Marco Gazzetta, Los Altos, CA (US)
Warren Wan, Sunnyvale, CA (US)
Assignee: Yahoo!, Inc., Sunnyvale, CA (US)

Columns 3-16

Detailed Description of the Invention. This is where the inventors go all out to describe their invention and idea. They do this by presenting various ways which their idea can be implemented. That’s why you see the phrase “An embodiment of the present invention is an instant messaging system tailored…”. Notice the phrasing. What they are saying is that their idea is not an instant messaging system. Rather their idea is something that can be implemented as an instant messaging system. The distinction is subtle, but important. You’ll see the actual idea behind their invention later on near the end of this section, where they make their patent claims.

The bulk of the text is a blow-by-blow description of how their idea can be implemented. They make a lot of references to their diagrams to show how their invention works. Notice the numbers like 510, 512 and 520. These are numbers used to identify various items shown in the diagrams. If you look at the diagrams, you’ll see that each item there is labeled with a number. This convention makes it very easy to follow the description and ensures that there is misunderstanding. I personally use this numbering system when I prepare software architecture diagrams nowadays. It makes it much easier to discuss ideas with people over the phone or through instant messengers.

You’ll see that the inventors explain the advantages of their invention, and also describe many variations (different embodiments) of their invention. The whole objective is to make very clear to all readers what their idea is about. Explaining a lot different variations also serves to establish that their idea has broad applicability, and that they are not just claiming protection for one narrow way of implementing their idea. For example, if I use the gist of their idea in a Voice over IP system, even though it’s not an instant messaging system, I might be infringing on their patent rights. In general, you’ll want to make your claims as broad as possible, so that competitors can’t design their way around your invention, or use some variation of your idea without paying you for it. If you’ve put a lot of effort into coming up with your invention, you owe it to yourself to make sure that other people can’t freeload off you by learning about your idea from your patent and then varying it a little to escape their obligation to pay you royalties for your effort.

Column 13

Claims (part of the Detailed Description of the Invention). This is probably the most important part of your patent. It is here that you state what the core ideas or concepts in your invention are. In other words, it is these ideas that you want to protect and claim rights to. I cannot stress how important this section is, and how important it is for you to get professional advice on how to state your claims. A good patent engineer can help you identify the core ideas in your invention. Inventors have a tendency to see their invention as an implementation, and may fail to identify the core ideas behind their invention. It is these core ideas or concepts which are very valuable.

This patent has 25 claims which you’ll see in columns 13, 14, 15 and 16. You’ll see the term “apparatus” appear very often, which might seem strange considering this is a software patent. The term apparatus is a legacy of patent language from many years ago, when the bulk of patents were for physical devices. Nonetheless, the term is still used and in this context, refers to a “piece of software of a certain concept”. You’ll see that the first claim states that the invention is actually the idea of using a software apparatus to provide real-time communication, where the apparatus is made up of a messaging service application associated with a client application and … wherein establishing the communication among the users includes:…. What this means is that inventors are claiming the idea of using a piece of software that has a messaging service components that associates itself with a client application, and uses the protocol (gist of it anyway) described in claim 1 to establish communications among users.

You’ll see that claim 2 refers to claim 1 (“the apparatus of claim 1, wherein….”). What this means is that they are also claming the variation or special case of the idea in claim 1, with the variation being that the first authentication application and the client applications are on a private network that is linked to a public network.

This method of making a claim against an earlier claim is commonly used, and allows you to “build” on an earlier claim without restating everything in each claim. You’ll also notice that the first claim is the most general, with later claims becoming more and more specific as the inventors claims specific versions of their basic idea.

One important point is that all the claims are usually treated with severability. This means that even if one of the claims is later found to be unenforceable, the rest of the claims still stand. Why might a claim be unenforceable later? There could be a number of reasons. For example, one of the ideas may already be in prior art, except that no one detected it during the initial prior art search.

As you might have surmised, the claims are the most important part of your patent. The rest of the sections, including the detailed description, are there to illustrate the ideas behind your invention. It doesn’t mean that those sections are superfluous, because in the event of uncertainty, a court of law may refer to earlier descriptions to clarify what an inventor meant.



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Copyright © 2008 Wei-lung Wang All rights reserved.
Email: wang@patentengineers.com.