Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 104

The act of conception followed by diligently reducing the invention to practice are the two components that equal the act of invention, which was more important in the interference proceedings that have been eliminated by the enactment of the AIA. However, for derivation proceedings, reduction to practice may still be important. Remember, however, that the reduction to practice need not culminate in a working embodiment or model of the invention. Illustrations, drawings, screen shots, CAD files, and sketches of a workable concept also constitute a constructive and acceptable reduction to practice. Thus, you need not have a working model to file a patent application, or to prove derivation. In many instances, the filing of the patent application itself constitutes the constructive reduction to practice of the invention. Even though you do not have a working model of your invention, drawings and/or sketches that show how your invention will work and is constructed are enough to start the patenting process on its way.

The reduction to practice, however, must be of the complete invention that you ultimately are going to be claiming as the invention to be covered by your patent. The subject of claiming your invention will be covered in detail in Chapter 10. Thus, it is important to conclude from your conception, diligent efforts, and reduction to practice that the invention will work for its intended purposes, and will work the way you will ultimately describe the invention in your patent application.

Using drawings corresponding to your invention, and a written description of the structure and operation of your invention, a patent application will be prepared and filed with the U.S. Patent and Trademark Office. Therefore, it is important that, prior to meeting with a patent attorney or agent, you have a complete invention to submit for patenting, which includes the complete reduction to practice of the invention, either on paper or on a computer screen, or with the help of a working model. Again, it is not necessary or recommended to have a working model of the invention before you proceed to discuss the patenting process with your patent professional. An “actual reduction to practice” consists of the production and operation of a working model of your invention. A “constructive reduction to practice,” which is more common, consists of an expression of the invention in a written or electronic medium, such that one skilled in the art could read that expression of your invention and understand its structure and operation. Again, the constructive reduction to practice must be a description of a complete and operable invention.