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7.3.4 Advantages of the Invention Over Known Devices/Processes

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After disclosing to the patent professional your information about the structure, operation/function, and results achieved by your invention, it is important to disclose to the patent professional the advantages of your invention, and how those advantages are realized from the structure of the invention, the operation or function of that structure, and the results achieved by the operation and/or function of that structure. In other words, what structure and/or function of the invention produces the advantages over the prior art. The advantages should be expressed both in broad terms and in more limited terms. These advantages provide the “selling points” for persuading the Patent Examiner that the invention is indeed a step forward in the useful arts. Such advantages also may assist in defining the “contribution” to the advance in the art that this particular invention offers to the public. More importantly, I have personally noticed that the courts tend to rely upon the advantages of the invention and the contribution of the inventor to an advance in the art to support their decisions upholding patentability. If the patent attorney at the initial meeting does not ask you what advantages are provided by the invention, tell him or her anyway. In my view, this is most important.

Intellectual Property Law for Engineers, Scientists, and Entrepreneurs

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