Anatomy of a patent

By Anton Blijlevens
Getting a patent Patents provide protection for inventions to stop others copying
• Protection for a concept typically in a product, methods & processes
(including software), formulations.

How do you get a patent?

• File a patent application at a patent office.
• Application form plus patent specification.
• Wait for it to be examined by the patent office.
• If approved, then a patent is granted.

Optional Application
Grant
prior art date
search Examination

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Preparing to Aim is to get the broad concept of an invention protected by the patent.
patent

The scope of patent protection you can get is dependent on

• How unique the invention is, and
• How good your patent attorney is.

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 Product

Prior art

Invention
and scope
of the patent

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 Product

Prior art

Scope is
too narrow

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 Product
Prior art

Scope misses
product

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Preparing to file • You need to work with a patent attorney so that they get to understand
a good patent the invention and its commercially important novel features.
application
• Should not be done in isolation of the business strategy,
• This will help form an IP strategy.

The scope of a patent is limited by the prior art to the novel (and inventive)
features of your invention.

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Preparing to file Step 1. Pick an experienced patent attorney that is familiar with
a good patent the area of technology. This is vital.
application
Step 2. Understand the ballpark costs for the patent process.

Step 3. Invention disclosure by the inventor to the patent attorney. To

understand what should be patented.

Step 4. Prior art searching to see what can be patented.

Step 5. Prepare the specification to file at a patent office.

• A patent specification is a legal document, but it will have
a lot of technical information in it about your invention. More on
this shortly.

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 Inventor is the technical expert and the attorney is the legal
expert with technical knowledge.
Invention • Inventor has invented a product. Attorney needs to know a lot
disclosures about the product to then conceptualise it. With the help of the
inventor.
• Its an iterative process to identify the desired scope of protection.

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 They should look at each feature
and ask about why it is like it is:
The patent • How did you come up with the
attorney must be
curious about idea?
your invention • Is a feature essential or optional?
• What are the advantages of each
essential feature?
• Interaction with other features.
• What are alternative features that
might achieve the same purpose?
• Explain past failures and why it
failed and what you did to improve
the invention.
• Are materials, shape, manufacturing
steps critical?.

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 How will the new idea be
commercialized?

Questions • Where
the attorney
should ask • By who and who is the
competition
• IP strategy should be 1st
discussion before going down
the patent drafting path
• Other types of IP
• Patents and trade secrets are
usually mutually exclusive
IP Ownership

FTO (freedom to operate)

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 Is there any publication or
public/commercial use of the
idea?
• Where, when, what, who?
Questions the
attorney should
ask Have you told anyone about
the idea?
• Where, when, what, who?
• Grace Periods in case of
self publication

Were non-disclosure
agreements used?

When does the application

need to be filed?

Do prior art searching !

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Prior art Research prior art. You may
discover:

• Your invention is old and can’t

get a patent.
• That you need to focus the
scope of the patent on
detailed features of your
invention.
• That other forms of IP may
start to take on a more
significant role in the business
strategy

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 How is the scope of protection
of a patent defined ?
Scope of the
patent
In the Claims section of the
patent specification

All sections of the patent

specification
1. Background
2. Brief description
3. Detailed description
4. Claims
5. Drawings (if any)

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The Claims
A patent is infringed if a competing product has at least the same
features as defined in the patent claims.

A patent claim cannot be so broad in scope so that it covers the prior

art.

A patent claim must define the invention as a unique combination of

features.

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 A patent is infringed if a competing product has at least the same
The Claims features as defined in the patent claims

1. A vehicle comprising;
(a) a fame,
(b) a front wheel attached to the frame,
(c) a back wheel attached to the frame behind the front wheel,
(d) handlebars attached to the front wheel to control the rotation of the
front wheel, and
(e) a seat attached to the frame intermediate of the front wheel and
back wheel.

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 Invention features

A A frame

B A front wheel attached to the

frame

C a back wheel attached to

the frame behind the
front wheel

D handlebars attached to
the front wheel to
control the rotation of
the front wheel
E a seat attached to the
frame intermediate of
the front wheel and back
wheel

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 Invention features Copy Product 1 Copy Product 2 Copy Product 3

A A frame
Y Y Y
B A front wheel attached to the
frame
Y Y Y

C a back wheel attached to

the frame behind the
Y Y N
front wheel

D handlebars attached to
the front wheel to
N Y N
control the rotation of
the front wheel
E a seat attached to the
frame intermediate of
Y N N
the front wheel and back
wheel

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 Invention features Prior Art 1 Prior Art 2

A A frame
Y Y
B A front wheel attached to the
frame
Y Y

C a back wheel attached to

the frame behind the
N N
front wheel

D handlebars attached to
the front wheel to
N N
control the rotation of
the front wheel
E a seat attached to the
frame intermediate of
Y N
the front wheel and back
wheel

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 1. A vehicle comprising;
The Claims (a) a fame,
(b) a front wheel attached to the frame,
(c) a back wheel attached to the frame behind the front wheel,
(d) handlebars attached to the front wheel to control the rotation of the
front wheel, and
(e) a seat attached to the frame intermediate of the front wheel and
back wheel.

Contrast with

1. A vehicle comprising;
(a) a fame,
(b) a front wheel attached to the frame,
(c) a back wheel attached to the frame behind the front wheel.
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.
 Invention features Prior Art 1 Prior Art 2 Copy Product 1 Copy Product 2 Copy Product 3

A A frame
Y Y Y Y Y
B A front wheel attached to the
frame
Y Y Y Y Y

C a back wheel attached to

the frame behind the
N N Y Y N
front wheel

D handlebars attached to
the front wheel to
control the rotation of
the front wheel
E a seat attached to the
frame intermediate of
the front wheel and back
wheel

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New Zealand New Zealand
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