It is strongly advised that the applicant respond to the attorney's queries well in-time, keeping the HEC in the CC. The inventor should share his/her contact details with both parties for any communication. If the inventor fails to reply within two months' time, the HEC will have the right to withdraw the claims.
Guidelines for Patent Filing
Methods to be followed
It is important to know the difference between a publishable research and an invention to be patentable. An invention must meet the following three tests:
1. Novelty: The invention - in its invented form - has never been reported before.
Reporting means patents, patent applications, scientific literature, lay pubic literature, brochures, thesis - in any form of communication, whether it is available to the inventor or not. The patent examiners have access to a much larger information databases than the inventors. Due to this many inventors are surprised to find out that their invention has already been reported before.
A good source of information to test the novelty of the invention is the patent databases themselves. Scientists are highly encouraged to consult these databases prior to concluding that they have a novel invention. Ideally this should be made even before any research project is started.
A guide for all inventors on what web resources to consult prior to submitting their inventions:
2. Non-obviousness. A large number of patents are rejected on the basis that the proposed research would have been obvious to someone in the same field of invention. If there is a combination of any kind these are subject to proof that the final result was unpredictable.
For example, in many invention reports scientists have emphasised that their invention is the first such application in Pakistan or in any way it proves more useful in Pakistan. But the scientist has to realise that the patents are universal and thus inventions cannot be localised.
3. Usefulness. Inventors fail to recognise the usefulness of their invention. An invention can be anything - a machine, a method, a process - and it must fall into a useful category. Therefore, the first step is to write a single sentence that tells us what the inventor considers the invention to be - describing its usefulness. It does not matter how the invention is made, this must be unequivocally be useful.
The HEC examines all inventions reported for patenting and applies the above tests prior to recommending whether a formal application is justified. Scientists can improve their chances of getting an invention patented if they apply these tests to their own research before applying. An inventor requires to have a creative approach to resolving a problem that has not been resolved before. It is important to know most inventions are innovative applications and do not represent breakthroughs.
Guidelines for Patent Reporting
Provide information as outlined below to prepare your application for filing.
Background of the Invention
The first thing to do is include a statement of the field of endeavour to which the invention pertains. This should contain a description of information known to you, including references to specific documents, which are related to your invention. It should contain, if applicable, references to specific problems involved in the prior art (or state of technology) which the invention is drawn toward.
Brief Summary of the Invention
This section should present a summarised form of the substance or general idea of the claimed invention. This can include the advantages of the invention and how it solves previously existing problems. It would be better if the problems are identified in the Background of the Invention section. A statement of the object of the invention may also be included.
Brief Description of the Drawing
If there are drawings these must be included in a listing of all figures by number (e.g., Figure 1A) and with corresponding statements explaining what each figure depicts.
A patent application is required to contain drawings, especially if drawings are necessary to understand the subject matter to be patented. A majority of patent applications contain drawings. These should show every feature of the invention as specified in the claims. Omission of drawings may cause an application to be considered incomplete and no application filing date will be granted by the USPTO. In addition, please provide the names, addresses and county of nationality for each inventor.
Detailed Description of the Invention
In this section the invention must be explained in detailed elaborating the process of making and using the invention in full, clear, concise, and exact terms. Here the invention should be distinguished from other inventions. Also describe the process, machine, manufacture, composition of matter, or improvement invented in detail.
In the case of an improvement, the description should be confined to the specific improvement and to the parts that necessarily cooperate with it or which are necessary to completely understand the invention.
Claim or Claims
The claim or claims must particularly point out and distinctly claim the subject matter which the inventor or inventors regard as the invention. The claims define the scope of the protection of the patent. Whether a patent will be granted is determined by the scope of the claims.
A non-provisional application for a utility patent must contain at least one claim. If there are several claims, they must be numbered consecutively.
Sample Claim taken from an actual patent:
- A method for data storage deduplication across multiple users in a data centre environment, the method comprises: determining data storage flagged as available for deduplication; generating deduplication signatures from the flagged data storage; removing sections of the flagged data storage; replacing the removed sections with deduplication pointers.
- The method according to claim I comprises: generating billing records based on the removed sections; and providing discounts to owners of the flagged data storage based on the billing records.
Abstract of the Disclosure
The purpose of the abstract is to enable the USPTO and the public to determine quickly the nature of the technical disclosures of your invention. The abstract points out what is new in the art to which your invention pertains. It should be in narrative form and not longer than 150 words written on a separate page.
In addition, please provide the names, addresses and country of nationality for each inventor.