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Patent Engineering by Donald S. Rimai

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Chapter 4

Implementing Patent Strategies and the Application Process through Patent Engineering

In the previous chapter we discussed the elements that go into formulating a patent strategy and the consequences of not doing so. In this chapter we will describe in more detail how to execute that strategy and how to determine which inventions are worth patenting and which ones are not. We will also discuss alternative avenues that can be pursued if material does not warrant the expense of obtaining patent coverage, but for which it is still important to keep competitors from obtaining patents that prevent your company from commercializing your technology or undermine the value of your patent portfolio.

Patent Application Process

In order to receive a patent, the inventors—assisted by legal counsel—file a patent application in a patent office. U.S. inventors generally file in the U.S. Patent and Trademark Office (USPTO). As discussed in Chapters 2 and 3, the application describes the problem solved by the invention and how the invention solves the problem, and it must clearly describe those aspects of the invention for which the inventor is seeking exclusive rights. These descriptions, known as “claims”, define the exact property the patent holder will own. While the application contents are vitally important—what you can claim is limited to what you have described or shown in the application—the title, the abstract, the background and the descriptions and everything else other than ...

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