first-to-file and the role of provisional patent applications
DESCRIPTION
Skillshare presentation at RockHealth on 23-JAN-2013 On March 16, 2013, the U.S. patent system will undergo a dramatic shift from a first-to-invent to a first-to-file. Under the new system, startups that swiftly file a provisional application on their invention will have a huge advantage over everyone else. In this presentation, we will cover the following topics: How will the change from first-to-invent to first-to-file affect startups? Why filing provisional applications should be an essential aspect of your strategy? How you can file a provisional application without a patent attorney? What the top mistakes that inventors make when they file their own provisional application?TRANSCRIPT
JEFFREY SCHOX, ESQ.SCHOX PATENT GROUP
LINKEDIN.COM/IN/JSCHOXTWITTER.COM/JSCHOX
FIRST-TO-FILE AND THE ROLE OF THE PROVISIONAL APPLICATION
Who am I?
Angel Investor
Professor
EntrepreneurPatent
Attorney
about.me/jschox
Representative Digital Health Clients:Massive HealthLarkGaussSano IntelligenceOmada HealthEmotiv Lifesciences
First-to-file
• Starts 16-MAR-2013
• First inventor to file
• Provisional applications are key
Only one requirement for a provisional application: Enablement.
Teach someone in your field how to make and use the invention.
The sections of a patent application:TitleField of the InventionBackgroundSummaryBrief Description of the DrawingsDetailed Description of the InventionClaimsAbstractDrawings
The sections of a provisional application:TitleField of the InventionBackgroundSummaryBrief Description of the DrawingsDetailed Description of the InventionClaimsAbstractDrawings
Two Documents:
Detailed Description of the Invention
Drawings
Working independently to tell story of:
What and How (not Why)
Detailed Description of the InventionPatent Application (legalese)Ph.D. Thesis (references)Journal Article (background)Marketing Material (advantages)High School Essay
Detailed Description of the InventionPatent Application (legalese)Ph.D. Thesis (references)Journal Article (background)Marketing Material (advantages)High School Essay
DrawingsCAD filesNapkin drawings
DrawingsCAD filesNapkin drawings
What is patentable?
General
Specific Not Valuable
Not Patentable
What is patentable?
Invention
Invention can be:
Device/System (with components),
Method/Process (with steps), or
Both.
Recommended Approach:Technical ProblemMVP SolutionComponents/StepsOutlineHigh School Essay
High School Essay:Intro paragraph:•essential components/steps•use of the inventionParagraphs for each essential component/step•function of the component/step•specific details•variations•synergy with other components/stepsParagraphs for each optional component/step•same as above
Thanks
JEFFREY SCHOX, ESQ.SCHOX PATENT GROUP
LINKEDIN.COM/IN/JSCHOXTWITTER.COM/JSCHOX