Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 140

As you probably have discerned by now, a patent application is a series of documents filed with the USPTO with the objective of ensuring that the application proceeds successfully through an examination process and ultimately is issued as a patent. The most important thing to keep in mind when reviewing your application prior to filing, and in furnishing your patent attorney with information about your invention, is that once the application is filed with the USPTO, amendments can be made to the application during the examination process only within the framework of the material in the application as originally filed. There is a very strict rule that prohibits the introduction of “new matter” into any pending patent application. New matter is defined as any subject matter that is not described, shown‚ or suggested in the four corners of the patent application as first filed. Thus, by way of example, if the inventor develops a new embodiment or an additional improvement to the invention covered by the filed patent application, that new material covering the new embodiment or additional improvement cannot be placed in the pending patent application. A new patent application, designated a “continuation‐in‐part application,” which will be described in Chapter 11, can be filed to cover the new material related to the invention. As such, the inventor will ultimately end up with two or possibly more patents. Therefore, it is important when assisting the patent attorney preparing your patent application, that all of the subject matter relating to your invention, including all new material, improvements‚ and new advantages, be disclosed to him or her for inclusion in the originally filed application, to the extent possible.

It is also important that you provide the patent attorney with full knowledge of a completely conceived invention, the best mode contemplated for practicing the invention, and sufficient information to enable one skilled in the art to practice the invention without undue experimentation upon expiration of the patent. As stated previously, it is also important to provide your patent attorney with all prior art of which you are aware. The attorney may introduce some of the prior art in the body of the patent application itself in describing prior attempts at solutions to the same problem which your invention is directed toward solving.