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How To Draft A Patent
          brought to you by
        Ogilvy Renault LLP


1
Introduction to Patenting


Joan M. Van Zant
   Joan M. Van Zant
   Patent and Trade-mark Agent
   Toronto
August 7, 2009
   May 1, 2005
Forms of IP Protection

• Patents
• Trade-marks
• Industrial Designs
• Copyrights
• Plant Breeders’ Rights
• Integrated Circuit Topographies
• Trade Secrets



3
Trade-marks

• Common law or registered
• Word, Design, Numerals, Symbols or any
  combination
• Distinguishes wares and/or services
• 15 Year Renewable Term
    • KLEENEX, COCA COLA, etc.




4
Copyrights
• Registration not necessary, allows owner to prevent
  others from copying work
• Literary, artistic, musical & dramatic works,
  performances, communication signals & sound
  recordings
• Work must be original
• Either the author must have a certain nationality OR the
  work must be first or simultaneously published in a treaty
  country, regardless of the nationality of the author.
• Term is life of author and 50 years beyond


5
Industrial Designs

• Require Registration
• 5 year term, renewable for 5 years
• Substantially original features of shape,
  configuration, pattern, or ornament or any
  combination thereof
• Features must be applied to a finished article made
  by hand, machine or tool
    • chair, spoon, wall paper pattern



6
Plant Breeders’ Rights

• Registration required
• Protects Reproductive Materials: seeds, cuttings;
  bulbs or roots
• Prevents repeat use of material to produce other
  varieties by others
• Prevents use of ornamental plants or parts thereof as
  propagating material by others
• Vehicle to license others to perform such acts



7
Integrated Circuit Topographies

• 3D configurations of electronic circuits embodied in
  products or layout designs
• Registration requires:
    • Original Design, 2 year grace period
    • Applicant must be Canadian or national of eligible
      country or topography first commercialized in
      Canada




8
Trade Secrets

• Information not readily discernible from public
  assessment of a product, e.g. chemical process
• Can last forever
• Cannot preclude others from using it, if acquired
  independently
• Prior secret use does not prevent others from
  patenting
• May be hard to keep secret



9
Patents

• Must be obtained
• Protects ideas reduced to practical form
• Term is 20 years from filing application
• Examination process not a registration process
• Most expensive IP right to obtain




10
What is a Patent?
• Monopoly
     • Territorial
     • Granted by government authority
     • Limited exclusive privilege that the law allows a
       patentee in his own invention
• Ownership
     • Natural right arises from production
• Term
     • Limited period of time, usually 20 years from filing


11
Nature Of Patent Right

• Bargain with the state
• Inventor gives full disclosure of invention in exchange
  for limited period of monopoly
• Upon expiration of monopoly, the invention can be
  exploited by anyone
• Before expiration others have access to information




12
Purpose Of Patents

• Patents provide library of organized technical
  information that others may learn from and
  improve upon
• Patent system encourages publication of new
  scientific and engineering work which can be
  used to inspire, educate, or inform others to
  make improvements or new developments




13
Purpose Of Patents Cont’d

• Patent excludes others from making , using or selling
  your invention
• Your patent may not allow you to practice the
  invention defined therein
     • No guarantee of Freedom to Operate




14
Form of Patent Application

A patent application comprises
• An Abstract;
• A description comprising the following elements
      • Title for identification purposes
      • Field of the Invention which describes the
        area(s) to which the invention relates




15
Form of Patent Application Cont’d

A description comprising the following elements (cont’d)
      • Background of the Invention which describes the
        related prior art and the problem that is solved with
        the present invention
      • Summary of the Invention which comprises one or
        more general statements of the invention and
        usually provides the precise language for the claims
      • Detailed Description of the Invention
          • Specific Embodiments, Examples, and the like



16
Form of Patent Application Cont’d

• Claims which distinctly claim the part, improvement
  or combination of the invention which the applicant
  regards to be patentable.
• Drawings are included where the description lends
  itself to them.
• A Sequence Listing is required where the invention
  relates to genes or fragments thereof
• Deposit of Biological Material may be required to
  satisfy description requirements


17
Filing Application

• Must be filed in timely manner
     • Before publication or disclosure to the public, or
       within grace periods or in keeping with
       International Treaty Requirements
• Government Fees to be paid
• Application to conform to required format and content




18
Patentable Invention

• New, useful, unobvious
• First to invent / first to file
• Patentable subject matter




19
Patentability Search and Assessment

 •    Invaluable to avoid re-patenting the wheel
 •    To establish scope of invention
 •    Language of the patent art
 •    Reveal the patent landscape in a particular area
 •    Reveal activities of competitors
 •    Useful information to consider when choosing
      countries or regions where protection should be
      sought if at all


 20
Statutory Definition of Invention

• Any new and useful art, process, machine,
  manufacture or composition of matter or any new
  and useful improvement in any art, process,
  machine, manufacture or composition of matter.




21
Patentability - New

• Not disclosed in writing or in any other form
  anywhere in the world prior to filing of application by
  anyone else
• Grace period of one year in Canada for disclosures
  by applicant or by someone who obtains information
  directly or indirectly from the applicant




22
Disclosure of Invention
Before Filing Impact on Patentability
•    U.S. one-year grace period for written disclosures
     published anywhere and for prior sale, offer for sale,
     prior public use or disclosure
•    EP prior public disclosure that makes invention
     available to the public is deadly and precludes the
     grant of valid patent rights
•    Confidential disclosures are not damaging, usually




23
Disclosure of Invention
After Filing Impact on Patentability
•    Disclosures that take place after filing can cause
     problems where an improper priority patent
     application is filed and claims lose entitlement to the
     priority date
•    The subsequent publication can be a bar to valid
     patent rights when the date is lost
•    EPO Board of Appeals and US Courts have made
     rulings to this effect



24
Patentability
 Unobvious
• Invention cannot be apparent to a person skilled in the art
  who has, not only the benefit of the common general
  knowledge in the art, but also public documents and
  disclosures in that art
• Most inventions are improvements
      • May not be a huge advance in the art
      • May be pioneer invention
      • May need to prove value or significance of advance or
        unexpected result
      • Scientific evidence, commercial success
      • Challenge of the problem,
         only solution available
 25
Patentability
Patentable Subject Matter
• Patenting Possibilities vary from jurisdiction to
  jurisdiction
• USA is most open as to subject matter
• “Anything new under the sun that is made by man”
• Excluded are:
     • Abstract ideas, physical phenomena and laws of
       nature
     • mental steps, abstract ideas and many business
       methods


26
Excluded Subject Matter in Canada

     • Does not include professional arts
     • Surgery, division of land
     • Methods of medical treatment
     • Use claims can be obtained
     • Higher life forms
     • No animals or plant materials




27
United States
Examples of Patentable Subject Matter
• New chemical entities, including new intermediates
  and in appropriate cases new salts, enantiomers and
  polymorphs
• Methods of making new compounds
• New methods of making old compounds




28
United States
Examples of Patentable Subject Matter
• New compositions, possibly containing known
  compounds but in different dosage amounts or forms
• New methods of treatment, diagnosis etc. using old
  or new compounds
• New methods of modulating biochemical processes
  which are carried out in a human, animal or plant




29
United States
Examples of Patentable Subject Matter
• New kits for example containing a new combination
  of materials or of materials and equipment used for
  diagnosis or treatment
• Newly identified DNA claimed in purified or isolated
  form. Newly created DNA is treated as a new
  chemical compound
• New organisms and parts of organisms such as
  seeds, for example those containing modified DNA




30
United States
Examples of Patentable Subject Matter
• New vaccines
• New vectors, such as plasmids, new hybridomas and
  new antibodies
• New research techniques and in some cases at least
  the products obtained from using these techniques.




31
Value of Patent

• Commercial Tool
     • To develop or insure market position
     • To find an investment partner
     • To license
       • To gain access to other technologies
       • To gain access to other applications
       • To negotiate exclusive supply arrangements



32
Thank You
The Patent Application Process


   Jung-Kay Chiu
   Lawyer and Patent Agent
   Toronto
Toronto6, 2009
   May
24-Jan-04
Patent Application Process

Overview
1.   Application Process in Context
2.   Deciding whether to file an application
3.   Process by Practical Example
4.   Costs
5.   Strategies




35
Patent Application Process in Context

Cycle of Development
                   4. Exploit
                                1. Develop
                       IP
                                   Idea




                   3. Protect   2. Develop
                       IP       Technology




   36
Patent Application Process in Context

• Patent application process fits within a larger
  cycle of events in a plan for commercializing
  technology
     • Intellectual assets created but how do we take
       advantage of these assets?
     • Formulate an IP strategy




37
Whether/How to File…

• There are many factors that may play a role


• Why? Because the costs associated with patent
  protection and enforcement are significant and
  patents are territorial.




38
Whether/How to File…

Factors to consider when deciding whether to file
     • Potential commercial life of invention
        • Time to patent may exceed commercial life of invention
        • Filing only preserves your place in line
        • Right to enforce only on issue of a patent which can take
          many years

     • Scope of likely patent protection
        • What is the prior art?



39
Whether/How to File…
     • Simple or complex technology – market lead time
        • Simple inventions may not give innovator much market
          lead time before a competitor can develop the same
          technology. Patent may issue years after product
          launch. Will that patent be of value?

     • Ability to keep secret – free flow of technical information
        • Technical personnel move among competitors, “share”
          ideas
        • Private vs. public exploitation (e.g. secret process)




40
Whether/How to File…

     • Capability to police patent
        • Litigation may be prohibitively expensive

     • State of development of technology
        • Patent application may be premature – for business and
          legal reasons
           • “sound prediction” - Apotex Inc. v. Wellcome Foundation Ltd.,
             [2002] 4 S.C.R. 153, 21 C.P.R. (4th) 499.
           • Further research may show initial thoughts were incorrect




41
Whether/How to File…

• Competitive posture of innovator
     • How does proposed patent fit in a portfolio and strategy


• Invention modest improvement or pioneering breakthrough
     • Importance of invention


• Financing/Licensing?
     • A patent may be necessary to attract $


• Defensive reasons


42
Patent Application Process

Practical example
You think you have an invention…what’s next?

     1. Identify invention
        Discuss invention with your patent counsel
        May conduct patentability search


     2. Canvas factors to determine whether to file




43
Patent Application Process

Practical example
     3. Prepare Application
           Parts: Background; Summary; Brief Description of the
           Drawing; Detailed Description; Claims; Abstract; Figures


           What do these parts entail? – stay tuned!




44
Patent Application Process

Practical example
     4. Identify inventor or inventors

        Test for inventorship: Who made a contribution to the
        inventive concept? Apotex Inc. v. Wellcome Foundation
        Ltd., supra



     5. Prepare papers and file application




45
Typical Timeline




                       Months
0




    46
Typical Timeline




Priority
Application
    (5k-20k)




                       Months
0




    47
Patent Application Process

Practical example
     7. Foreign Filing and the Paris Convention:
        Paris Convention gives an Applicant 1 year to file one or more
          corresponding applications and claim a “priority” back to the
          filing date of the previous application


       This relieves the applicant of filing in every country of interest in
           the first instance




48
Typical Timeline




Priority
Application
    (5k-20k)




                       Months
0




    49
Typical Timeline


                 PARIS
               CONVENTION

               National Filings (2k-5k per)
Priority       and
Application    PCT Filing (10k)
    (5k-20k)




                                              Months
0              12




    50
Patent Application Process

Practical example
     7. Foreign Filing and the Patent Cooperation Treaty (PCT)
           PCT, the International Application
           Administered by the International Bureau at WIPO
           Deemed filing in almost every country in the world
                 BUT: each filing is not crystallized until national phase
                 entry is requested within 30 months.
           à really only a 30 month delay in exchange for $


       Why delay? Evaluate market and patentability



51
Typical Timeline


                 PARIS
               CONVENTION

               National Filings (2k-5k per)
Priority       and
Application    PCT Filing (10k)
    (5k-20k)




                                              Months
0              12




    52
Typical Timeline


                 PARIS
               CONVENTION

               National Filings (2k-5k per)
Priority       and                            National Entries
Application    PCT Filing (10k)               of PCT Filing (2k-5k per)
    (5k-20k)




                                                                          Months
0              12                             30




    53
Typical Timeline


                 PARIS
               CONVENTION

               National Filings (2k-5k per)
Priority       and                             National Entries
Application    PCT Filing (10k)                of PCT Filing (2k-5k per)
    (5k-20k)




                                                                                                   Months
0              12                             30




                                          Note: Maintenance fees may be due depending on country




    54
Patent Application Process

Practical example
     8. Publication
       Applications are laid-open for public inspection after 18 months
          from the priority date


     9. Request Examination?
        Requests for examination may be deferred up to 5 years from
          filing
        Currently a delay of between 2-4 years to start examination




55
Typical Timeline


                 PARIS
               CONVENTION

               National Filings (2k-5k per)
Priority       and                             National Entries
Application    PCT Filing (10k)                of PCT Filing (2k-5k per)
    (5k-20k)




                                                                                                   Months
0              12                              30




                                          Note: Maintenance fees may be due depending on country




    56
Typical Timeline


                 PARIS
               CONVENTION

               National Filings (2k-5k per)
Priority       and                             National Entries
Application    PCT Filing (10k)                of PCT Filing (2k-5k per)
    (5k-20k)




                                                                                                   Months
0              12         18                   30




                                          Note: Maintenance fees may be due depending on country

                     Publication




    57
Typical Timeline


                 PARIS
               CONVENTION

               National Filings (2k-5k per)
Priority       and                             National Entries                                             Deadline to Request
Application    PCT Filing (10k)                of PCT Filing (2k-5k per)                                    Examination in Canada (1k)
    (5k-20k)




                                                                                                                      Months
0              12         18                   30                                                          72

                                                                                                   (5 Years from Filing)

                                          Note: Maintenance fees may be due depending on country

                     Publication




    58
Patent Application Process

Practical example
     10. Prosecution
         Examiner reviews application and requisitions compliance
         with the Patent Act and Patent Rules

        Requisition alleging application is not allowable (e.g. not
        new, not inventive, claims are unclear…etc.)

        Applicant responds with arguments and/or amendments




59
Patent Application Process

Practical example
     10. Prosecution
         Amendment is limited: cannot introduce new subject
         matter

        Amendment may broaden or narrow scope of claims




60
Patent Application Process

Practical example
     10. Prosecution
         Patent to issue to a single invention
         May be required to restrict application to single invention
         and file one or more divisional applications to additional
         inventions




61
Patent Application Process

Practical example

     11. Allowance and Issuance
        Pay the final fee and get the patent




62
Strategies

• Picking where to file:
     • Your market
     • Your competitor’s market
     • Your competitor’s manufacturing facilities
     • Enforcement potential
     • Prosecution charges (Budget)
• Deciding how to first file:
     • Desire for speedy issuance or indication of patentability or
       just getting on file to reserve place in line



63
Thank You




64
Application Drafting Considerations




 Christopher Hunter
 Lawyer, Patent & Trade-mark Agent
 Toronto
 May 6, 2009
Section 27(3) of Patent Act Canada

The specification of an invention must
     (a) correctly and fully describe the invention and its
     operation or use as contemplated by the inventor;

     (b) set out clearly the various steps in a process, or
     the method of constructing, making, compounding or
     using a machine, manufacture or composition of
     matter, in such full, clear, concise and exact terms as
     to enable any person skilled in the art or science to
     which it pertains, or with which it is most closely
     connected, to make, construct, compound or use it;

66
Section 27(3) of Patent Act Canada
Cont’d
(c) in the case of a machine, explain the principle of the
   machine and the best mode in which the inventor has
   contemplated the application of that principle; and

(d) in the case of a process, explain the necessary
  sequence, if any, of the various steps, so as to
  distinguish the invention from other inventions.




67
The Real Challenges to Obtaining Patents
Meeting the Specification Requirements


• Written Description
• Enablement
• Utility




68
United States
Written Description Requirements

• Is there an actual reduction to practice, i.e. a working
  example?
• Are there drawings or structural chemical formulae in
  sufficient detail to show possession (knowledge) of
  the claimed invention as a whole?
• Are there other identifying characteristics described
  that show possession (knowledge) of the claimed
  invention in sufficient detail?



69
United States
Written Description Requirements


     • Complete structure of a species or embodiment
     • Other relevant identifying characteristics
     • Level of skill and knowledge in the art
        • Determines what is required
     • Partial structure




70
United States
Written Description Requirements


     • Physical and/or chemical properties
     • Functional characteristics alone
       • Usually not acceptable
     • Functional characteristics coupled with known or
       disclosed correlation between structure and function
       and the method of making the claimed invention
       should suffice



71
United States
Written Description Requirements

• Genus – Species
     • Genus claims may be supported with sufficient
       description of a representative number of species
     • Representative number of species means that
       species described must be representative of the
       entire species
     • The greater the variation within the genus, then
      the species description should adequately reflect
      the variation in the genus


72
United States
Written Description Requirements

• Mature technologies vs. Emerging Technologies,
  an inverse relationship to description requirements
   • If knowledge and skill are high, method of making
     invention and function may be enough
   • If knowledge and skill are less established and
     therefore unpredictable, more evidence is required




73
Enablement

• Ensures that public receives its “quid pro quo” for
  patent grant
• Description must enable person skilled in the art to
  practice the invention without undue experimentation




74
Enablement


• Factors to consider
     • Quantity of experimentation necessary
     • Amount of direction and guidance provided
     • Presence of working examples
     • Nature of invention
     • State of prior art
     • Relative skill of those in art
     • Predictability of art
     • Breadth of claims
75
Enablement


• Chemical cases historically have never been
  subjected to requirement of working examples
• Generally genetic engineering cases cannot succeed
  without working examples
• Prophetic examples have been sanctioned by the
  courts but must not be written in past tense (Ground
  for invalidation in the USA)




76
Enablement

• How much disclosure is necessary to support broad
  claims?
• Fact dependent
• Unpredictable factors which are often associated with
  chemical reactions and physiological activity raise the
  threshold compared with other arts such as electronics
  and mechanics




77
Enablement


• Genentech Inc. v. Novo Nordisk A/S
     • Chemical patent invalid for lack of enabling
       description for starting materials and conditions to
       be used
• National Recovery Technologies v. Magnetic
  Separation Systems
     • Invalid claim 1 included step for selecting process signals as
       pass through irregularities in the bodies of said material
       items
     • Description did not state how to perform step


78
Utility


     •   Credible
          • Assertion must have unflawed logic and
            consistent facts
     •   Specific
          • Polynucleotide as gene probe without disclosure
            of specific DNA target not acceptable
     •   Substantial
          • Defines real world use


79
Utility


• Used to reject applications and to narrow claims
• Claim to piece of DNA may be narrowed to
  “consisting of” language from “comprising”
• Claims to receptors will be granted only if there is
  disclosure of disease or condition associated with the
  receptor
     • Cannot just say receptor binds compounds or
       makes monoclonal antibodies, actual examples or
       reference to common general knowledge with
       general description

80
Utility


For Claims to methods of treating disease
• Where disease is unspecified, claims are rejected as
  too much research is required to determine diseases
  to be treated
• Where disease is defined by reference to underlying
  mechanism, must show by literature or evidence that
  mechanism is associated with disease




81
Thank You
Functional Approach to Claim Drafting




Paul Field
Lawyer, Engineer
Patent & TM Agent
Toronto
February 23, 2008
Functional Approach

• Applicable to mechanical devices
• Complex mechanisms break down into a large
  number of simple components working together
• Each component performs an identifiable function
• Each component is connected or engages at least
  one other component
• Capture the essence of that function in the least
  possible number of words
• Try “means for function” thought process to open up
  alternatives


84
Breaking Writer’s Block

• Have a Method
• Accumulate Information with an Open Mind
• Organize Thoughts Loosely on Scrap Paper
• Accept Trial & Error as a Legitimate Process
• Commit to Paper using Commonly Accepted Claim
  Formats
• Test Your Assumptions – Edit on Paper – Redraft
  Test – Edit – Redraft ………then stop



85
Have a Method

• Copy from others shamelessly
• Organize thought process on paper
• Use rough lists, bubble diagrams, flow charts
• Move from general concept to detailed features




86
Accumulate Information with an Open Mind

• Interview the inventors
• Become familiar with the Prior Art
• Beware of locking onto concepts too early
• Visualize the mechanism exploded, floating in space,
  then examine interactions
• Review from the perspective of an infringer or a
  judge




87
Organize Thoughts Loosely on Scrap Paper

• List components
• List advantages over prior art
• Bubble diagrams – Flow Chart
• Sketch draft drawings
• Decide if parts are “essential” or “optional”
• Visualize the invention with a part missing to see if it
  is essential or optional




88
Accept Trial & Error as a Legitimate Thought
Process
• Misconception of inefficiency
• Process accounts for multiple priorities, conflicting
  issues, opposing viewpoints, satisfies multiple
  conditions and concludes with a less than perfect
  solution




89
Conditions to be Satisfied By Patent Claims

•    Claims supported by description
•    Consistent terms used throughout
•    Logical sequence (antecedents)
•    All essential elements included (operative)
•    Claims are not greater than the invention made and
     described




90
Conditions to be Satisfied By Patent Claims

• Includes all known equivalents
• Includes all embodiments with broad language
• Not too limiting (less than the invention)
• Not overly verbose (less is more)
• Addressed to one skilled in the art
• Addressed to a judge (not technical)




91
Use Commonly Accepted Patent Claim Format
1. A (name), for (optional preamble describing background),
   comprising:
   element A, where A has sub-elements and/or limitations;

     element B, connected to A, where B has sub-elements
     and/or limitations; and

     element C, connected to A and/or B, where C has sub-
     elements and/or limitations.

2. A (name) according to claim 1 wherein:
   element C has more sub-elements or limitations


92
Functional Terms

• Function is often inherent in the words chosen ( a
  blade, a valve, a fastener, a conveyor, a frame)
• Function may be specifically recited to cover many
  equivalent elements (biasing means, extending from
  the jam to the door, for urging the door to a closed
  position)




93
Clarity

• Format, punctuation, commas divide the claim into
  digestible pieces
• Say one thing at a time, fully complete
• Repeat for clarity (ex: therein vs. in the A;
  therebetween vs. between A and B)
• Use “the” not “said”




94
Zamboni™ Ice Resurfacing Machine
     Claim Drafting Example


                          www.zamboni.com
96
97
VEHICLE

               ICE
               SCRAPER



           ICE CHIP
           COLLECTOR


                         WASH +
                         VACUUM

          WIPE /
          FINISH

98
BEVEL               ANGLE
 VEHICLE
                                    WIDTH

STORAGE
                  ICE                 HEIGHT
 + DUMP           SCRAPER

                                            VACUUM
VERTICAL                                     DIRTY
              ICE CHIP        SPRAY
              COLLECTOR       CLEAN                  STORE
     HORZ.                                           DIRTY

                            WASH +
                            VACUUM            STORE
                                              CLEAN
             WIPE /                   SPRAY
             FINISH
SQUEEGEE                     HOT
99
                            TOWEL
ELEMENT                 FEATURES

Vehicle

Ice Scraper / Shaver

Horizontal Conveyor

Vertical Conveyor

Wash and Vacuum Water


Wiper or Squeegee




100
ELEMENT   FEATURES


Vehicle   üself propelled
          ü4 wheel drive
          üSteer from back
          üDriver and controls at the back
          üHolds ice chip container
          üWater containers
          üCould sell without vehicle




101
ELEMENT                FEATURES



Ice Scraper / Shaver   üFull width of vehicle
                       üHeight and angle adjustable
                       üBevelled cutting edge
                       üLeading edge vs, trailing edge
                       üIce chips collect at leading
                       edge




102
ELEMENT               FEATURES



Horizontal Conveyor   üCollect ice chips from blade
                      üForward of scraper
                      üHelical screw
                      üFeeds from edges to center
                      outlet




103
ELEMENT             FEATURES



Vertical Conveyor   üInlet from horizontal conveyor
                    üOutlet to ice chip container
                    üHelical screw or auger in
                    modern version
                    üChain with paddles in old
                    version




104
ELEMENT                 FEATURES



Wash and Vacuum Water   üWater source storage
                        üPump
                        üWashes ice surface after
                        scraper
                        üVolume + height adjust
                        üVacuums dirty water
                        üStorage recycle filter




105
ELEMENT             FEATURES



Wiper or Squeegee   üTrailing towel with hot water
                    üTrailing squeegee
                    üContains water pool
                    üWipes away excess




106
1.    An ice surface conditioning device comprising:
      a scraper blade; and an ice shaving collector.




107
1.    An ice surface conditioning device comprising:
      a scraper blade, having a cutting edge for
      engagement with an ice surface; and
      an ice shaving collector in communication with an
      ice shaving container.




108
1.    An ice surface conditioning device comprising:
      a scraper blade, disposed transverse to a machine
      direction, having a cutting edge for engagement
      with an ice surface; and
      an ice shaving collector having an inlet adjacent
      the blade and an outlet in communication with an
      ice shaving container.




109
2.    An ice surface conditioning device according to
      claim 1 wherein the ice shaving collector
      comprises a horizontal conveyor.
3.    An ice surface conditioning device according to
      claim 2 wherein the horizontal conveyor is a helical
      screw.
4.    An ice surface conditioning device according to
      claim 3 wherein the horizontal conveyor has two
      opposing helical screws and a central outlet.




110
5.    An ice surface conditioning device according to
      claim wherein the ice shaving collector comprises
      a vertical conveyor with an inlet in communication
      with an outlet of the horizontal conveyor.
6.    An ice surface conditioning device according to
      claim 5 wherein the vertical conveyor is a helical
      screw.
7.    An ice surface conditioning device according to
      claim 6 wherein the vertical conveyor is a band
      with a plurality of paddles.




111
8.    An ice surface conditioning device according to
      claim 1 comprising:
      a water coating distributor rearward of the blade.


9.    An ice surface conditioning device according to
      claim 8 wherein the water coating distributor
      comprises a water sprayer in communication with
      a clean water supply tank.




112
10. An ice surface conditioning device according to
    claim 8 comprising:
    an excess water removal device.


11. An ice surface conditioning device according to
    claim 10 wherein the excess water removal device
    comprises a water vacuum inlet in communication
    with a dirty water tank.




113
12. An ice surface conditioning device according to
    claim 1 comprising: an ice surface wiping device.

13. An ice surface conditioning device according to
    claim 12 wherein the ice surface wiping device is
    selected from the group consisting of: a squeegee;
    and a towel.

14. An ice surface conditioning device according to
    claim 13 wherein the towel communicates with a
    hot water supply.




114
Thank You




115
Drafting Exercise




116
The Answer is…
Claim 1
A waste receptacle comprising:

a. a sweeping ramp including a
lower ramp end and an upper
ramp end, the sweeping ramp
bearing teeth protruding
therefrom at a non-zero angle
between the lower and upper
ramp ends;

b. a waste bin having a bin
floor defined beneath the upper
ramp end.
   118
Claim 2
The waste receptacle of
claim 1 wherein the
teeth protrude from the
sweeping ramp to extend
generally toward the upper
ramp end.




   119
Claim 3
The waste receptacle of claim 1:
wherein the sweeping ramp
includes opposing ramp sides
extending between the lower and
upper ramp ends,
further comprising upwardly-
extending walls surrounding
at least a portion of the upper
ramp end and the ramp sides,
wherein the waste bin is defined
between the upper ramp end and
the upwardly-extending walls.


   120
Claim 4

The waste receptacle of
claim 3 further comprising
a tubular chute having a
chute passage defined
therein, the chute
passage being directed
onto the waste bin.




  121
Claim 5

The waste receptacle of
claim 4 further comprising
a broom handle notch
defined upon the tubular
chute at an area of the
tubular chute situated
generally above the
sweeping ramp.




   122
Claim 6

The waste receptacle of
claim 4 further comprising
a flap hingedly affixed
within the chute passage
of the tubular chute.




   123
Claim 7

The waste receptacle
of claim 6 wherein the
flap is foraminated.




  124
Claim 8

The waste
receptacle of claim
6 wherein the flap
is rotatable into
the chute passage
to engage the
tubular chute.




   125
Claim 9

The waste receptacle
of claim 8 wherein
the flap, when
engaging the tubular
chute, slopes
downwardly in a
direction away from
the sweeping ramp.




   126
Claim 10

The waste receptacle
of claim 3, further
comprising a bin
ramp descending
from the upper ramp
end into the waste
bin.




   127
Claim 11

The waste receptacle of claim 1:
Wherein the sweeping ramp
includes opposing ramp sides
extending between the lower
and upper ramp ends,
further comprising sidewalls
extending upwardly from the
ramp sides, and an upwardly
extending end wall between
the sidewalls.




   128
Claim 12

The waste receptacle of claim
11 wherein the waste bin is
defined between the upper
ramp end and the end wall,
the waste receptacle further
comprising a tubular chute
having a chute passage
defined therein, the chute
passage being directed onto
the waste bin.




   129
Claim 13

The waste receptacle of claim
12 further comprising a broom
handle notch defined upon
the tubular chute at an area of
the tubular chute situated
generally above the sweeping
ramp.




   130
Claim 14

The waste receptacle of
claim 12 further comprising
a flap hingedly affixed
within the chute passage of
the tubular chute.




  131
Claim 15

The waste receptacle of
claim 11 further comprising
a bin ramp descending
from the upper ramp end,
wherein the waste bin is
depressed between the
upper ramp end and the
end wall.




   132
Claim 16
The waste receptacle of claim 1:
wherein the sweeping ramp
includes opposing ramp sides
extending between the lower
and upper ramp ends,
the waste receptacle further
comprising a waste bin situated
beneath the upper ramp end,
and a tubular chute having a
chute passage defined therein,
the chute passage being
directed onto the waste bin.



   133
Claim 17

The waste receptacle of claim
16 wherein the tubular chute
includes an end wall situated
generally opposite the upper
ramp end and extending
upwardly from the waste bin,
and wherein the end wall is
tilted inwardly so as to rest
generally over the waste bin.




   134
Claim 18
A waste receptacle comprising:

a. a sweeping ramp including a
lower ramp end, an upper ramp
end, and opposing ramp sides
extending there between, wherein
teeth extend from the sweeping
ramp between its lower and upper
ramp ends,

b. a waste bin situated beneath the
upper ramp end, and

c. a tubular chute having a chute
passage defined therein, the chute
passage being directed onto the
waste bin.
    135
Claim 19
The waste receptacle of
claim 18 wherein the teeth
are inclined toward the
upper ramp end.




   136
Claim 20
A waste receptacle comprising:

a. a sweeping ramp including a
lower ramp end, an upper ramp
end, and opposing ramp sides
extending therebetween, with teeth
extending from the sweeping ramp
between the upper and lower ramp
ends at a non-zero angle,

b. a waste bin situated beneath the
upper ramp end, and

c. a tubular chute having a chute
passage defined therein, the chute
passage being directed onto the
waste bin.
    137
Thank You




138

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How to Draft a Patent

  • 1. How To Draft A Patent brought to you by Ogilvy Renault LLP 1
  • 2. Introduction to Patenting Joan M. Van Zant Joan M. Van Zant Patent and Trade-mark Agent Toronto August 7, 2009 May 1, 2005
  • 3. Forms of IP Protection • Patents • Trade-marks • Industrial Designs • Copyrights • Plant Breeders’ Rights • Integrated Circuit Topographies • Trade Secrets 3
  • 4. Trade-marks • Common law or registered • Word, Design, Numerals, Symbols or any combination • Distinguishes wares and/or services • 15 Year Renewable Term • KLEENEX, COCA COLA, etc. 4
  • 5. Copyrights • Registration not necessary, allows owner to prevent others from copying work • Literary, artistic, musical & dramatic works, performances, communication signals & sound recordings • Work must be original • Either the author must have a certain nationality OR the work must be first or simultaneously published in a treaty country, regardless of the nationality of the author. • Term is life of author and 50 years beyond 5
  • 6. Industrial Designs • Require Registration • 5 year term, renewable for 5 years • Substantially original features of shape, configuration, pattern, or ornament or any combination thereof • Features must be applied to a finished article made by hand, machine or tool • chair, spoon, wall paper pattern 6
  • 7. Plant Breeders’ Rights • Registration required • Protects Reproductive Materials: seeds, cuttings; bulbs or roots • Prevents repeat use of material to produce other varieties by others • Prevents use of ornamental plants or parts thereof as propagating material by others • Vehicle to license others to perform such acts 7
  • 8. Integrated Circuit Topographies • 3D configurations of electronic circuits embodied in products or layout designs • Registration requires: • Original Design, 2 year grace period • Applicant must be Canadian or national of eligible country or topography first commercialized in Canada 8
  • 9. Trade Secrets • Information not readily discernible from public assessment of a product, e.g. chemical process • Can last forever • Cannot preclude others from using it, if acquired independently • Prior secret use does not prevent others from patenting • May be hard to keep secret 9
  • 10. Patents • Must be obtained • Protects ideas reduced to practical form • Term is 20 years from filing application • Examination process not a registration process • Most expensive IP right to obtain 10
  • 11. What is a Patent? • Monopoly • Territorial • Granted by government authority • Limited exclusive privilege that the law allows a patentee in his own invention • Ownership • Natural right arises from production • Term • Limited period of time, usually 20 years from filing 11
  • 12. Nature Of Patent Right • Bargain with the state • Inventor gives full disclosure of invention in exchange for limited period of monopoly • Upon expiration of monopoly, the invention can be exploited by anyone • Before expiration others have access to information 12
  • 13. Purpose Of Patents • Patents provide library of organized technical information that others may learn from and improve upon • Patent system encourages publication of new scientific and engineering work which can be used to inspire, educate, or inform others to make improvements or new developments 13
  • 14. Purpose Of Patents Cont’d • Patent excludes others from making , using or selling your invention • Your patent may not allow you to practice the invention defined therein • No guarantee of Freedom to Operate 14
  • 15. Form of Patent Application A patent application comprises • An Abstract; • A description comprising the following elements • Title for identification purposes • Field of the Invention which describes the area(s) to which the invention relates 15
  • 16. Form of Patent Application Cont’d A description comprising the following elements (cont’d) • Background of the Invention which describes the related prior art and the problem that is solved with the present invention • Summary of the Invention which comprises one or more general statements of the invention and usually provides the precise language for the claims • Detailed Description of the Invention • Specific Embodiments, Examples, and the like 16
  • 17. Form of Patent Application Cont’d • Claims which distinctly claim the part, improvement or combination of the invention which the applicant regards to be patentable. • Drawings are included where the description lends itself to them. • A Sequence Listing is required where the invention relates to genes or fragments thereof • Deposit of Biological Material may be required to satisfy description requirements 17
  • 18. Filing Application • Must be filed in timely manner • Before publication or disclosure to the public, or within grace periods or in keeping with International Treaty Requirements • Government Fees to be paid • Application to conform to required format and content 18
  • 19. Patentable Invention • New, useful, unobvious • First to invent / first to file • Patentable subject matter 19
  • 20. Patentability Search and Assessment • Invaluable to avoid re-patenting the wheel • To establish scope of invention • Language of the patent art • Reveal the patent landscape in a particular area • Reveal activities of competitors • Useful information to consider when choosing countries or regions where protection should be sought if at all 20
  • 21. Statutory Definition of Invention • Any new and useful art, process, machine, manufacture or composition of matter or any new and useful improvement in any art, process, machine, manufacture or composition of matter. 21
  • 22. Patentability - New • Not disclosed in writing or in any other form anywhere in the world prior to filing of application by anyone else • Grace period of one year in Canada for disclosures by applicant or by someone who obtains information directly or indirectly from the applicant 22
  • 23. Disclosure of Invention Before Filing Impact on Patentability • U.S. one-year grace period for written disclosures published anywhere and for prior sale, offer for sale, prior public use or disclosure • EP prior public disclosure that makes invention available to the public is deadly and precludes the grant of valid patent rights • Confidential disclosures are not damaging, usually 23
  • 24. Disclosure of Invention After Filing Impact on Patentability • Disclosures that take place after filing can cause problems where an improper priority patent application is filed and claims lose entitlement to the priority date • The subsequent publication can be a bar to valid patent rights when the date is lost • EPO Board of Appeals and US Courts have made rulings to this effect 24
  • 25. Patentability Unobvious • Invention cannot be apparent to a person skilled in the art who has, not only the benefit of the common general knowledge in the art, but also public documents and disclosures in that art • Most inventions are improvements • May not be a huge advance in the art • May be pioneer invention • May need to prove value or significance of advance or unexpected result • Scientific evidence, commercial success • Challenge of the problem, only solution available 25
  • 26. Patentability Patentable Subject Matter • Patenting Possibilities vary from jurisdiction to jurisdiction • USA is most open as to subject matter • “Anything new under the sun that is made by man” • Excluded are: • Abstract ideas, physical phenomena and laws of nature • mental steps, abstract ideas and many business methods 26
  • 27. Excluded Subject Matter in Canada • Does not include professional arts • Surgery, division of land • Methods of medical treatment • Use claims can be obtained • Higher life forms • No animals or plant materials 27
  • 28. United States Examples of Patentable Subject Matter • New chemical entities, including new intermediates and in appropriate cases new salts, enantiomers and polymorphs • Methods of making new compounds • New methods of making old compounds 28
  • 29. United States Examples of Patentable Subject Matter • New compositions, possibly containing known compounds but in different dosage amounts or forms • New methods of treatment, diagnosis etc. using old or new compounds • New methods of modulating biochemical processes which are carried out in a human, animal or plant 29
  • 30. United States Examples of Patentable Subject Matter • New kits for example containing a new combination of materials or of materials and equipment used for diagnosis or treatment • Newly identified DNA claimed in purified or isolated form. Newly created DNA is treated as a new chemical compound • New organisms and parts of organisms such as seeds, for example those containing modified DNA 30
  • 31. United States Examples of Patentable Subject Matter • New vaccines • New vectors, such as plasmids, new hybridomas and new antibodies • New research techniques and in some cases at least the products obtained from using these techniques. 31
  • 32. Value of Patent • Commercial Tool • To develop or insure market position • To find an investment partner • To license • To gain access to other technologies • To gain access to other applications • To negotiate exclusive supply arrangements 32
  • 34. The Patent Application Process Jung-Kay Chiu Lawyer and Patent Agent Toronto Toronto6, 2009 May 24-Jan-04
  • 35. Patent Application Process Overview 1. Application Process in Context 2. Deciding whether to file an application 3. Process by Practical Example 4. Costs 5. Strategies 35
  • 36. Patent Application Process in Context Cycle of Development 4. Exploit 1. Develop IP Idea 3. Protect 2. Develop IP Technology 36
  • 37. Patent Application Process in Context • Patent application process fits within a larger cycle of events in a plan for commercializing technology • Intellectual assets created but how do we take advantage of these assets? • Formulate an IP strategy 37
  • 38. Whether/How to File… • There are many factors that may play a role • Why? Because the costs associated with patent protection and enforcement are significant and patents are territorial. 38
  • 39. Whether/How to File… Factors to consider when deciding whether to file • Potential commercial life of invention • Time to patent may exceed commercial life of invention • Filing only preserves your place in line • Right to enforce only on issue of a patent which can take many years • Scope of likely patent protection • What is the prior art? 39
  • 40. Whether/How to File… • Simple or complex technology – market lead time • Simple inventions may not give innovator much market lead time before a competitor can develop the same technology. Patent may issue years after product launch. Will that patent be of value? • Ability to keep secret – free flow of technical information • Technical personnel move among competitors, “share” ideas • Private vs. public exploitation (e.g. secret process) 40
  • 41. Whether/How to File… • Capability to police patent • Litigation may be prohibitively expensive • State of development of technology • Patent application may be premature – for business and legal reasons • “sound prediction” - Apotex Inc. v. Wellcome Foundation Ltd., [2002] 4 S.C.R. 153, 21 C.P.R. (4th) 499. • Further research may show initial thoughts were incorrect 41
  • 42. Whether/How to File… • Competitive posture of innovator • How does proposed patent fit in a portfolio and strategy • Invention modest improvement or pioneering breakthrough • Importance of invention • Financing/Licensing? • A patent may be necessary to attract $ • Defensive reasons 42
  • 43. Patent Application Process Practical example You think you have an invention…what’s next? 1. Identify invention Discuss invention with your patent counsel May conduct patentability search 2. Canvas factors to determine whether to file 43
  • 44. Patent Application Process Practical example 3. Prepare Application Parts: Background; Summary; Brief Description of the Drawing; Detailed Description; Claims; Abstract; Figures What do these parts entail? – stay tuned! 44
  • 45. Patent Application Process Practical example 4. Identify inventor or inventors Test for inventorship: Who made a contribution to the inventive concept? Apotex Inc. v. Wellcome Foundation Ltd., supra 5. Prepare papers and file application 45
  • 46. Typical Timeline Months 0 46
  • 48. Patent Application Process Practical example 7. Foreign Filing and the Paris Convention: Paris Convention gives an Applicant 1 year to file one or more corresponding applications and claim a “priority” back to the filing date of the previous application This relieves the applicant of filing in every country of interest in the first instance 48
  • 50. Typical Timeline PARIS CONVENTION National Filings (2k-5k per) Priority and Application PCT Filing (10k) (5k-20k) Months 0 12 50
  • 51. Patent Application Process Practical example 7. Foreign Filing and the Patent Cooperation Treaty (PCT) PCT, the International Application Administered by the International Bureau at WIPO Deemed filing in almost every country in the world BUT: each filing is not crystallized until national phase entry is requested within 30 months. à really only a 30 month delay in exchange for $ Why delay? Evaluate market and patentability 51
  • 52. Typical Timeline PARIS CONVENTION National Filings (2k-5k per) Priority and Application PCT Filing (10k) (5k-20k) Months 0 12 52
  • 53. Typical Timeline PARIS CONVENTION National Filings (2k-5k per) Priority and National Entries Application PCT Filing (10k) of PCT Filing (2k-5k per) (5k-20k) Months 0 12 30 53
  • 54. Typical Timeline PARIS CONVENTION National Filings (2k-5k per) Priority and National Entries Application PCT Filing (10k) of PCT Filing (2k-5k per) (5k-20k) Months 0 12 30 Note: Maintenance fees may be due depending on country 54
  • 55. Patent Application Process Practical example 8. Publication Applications are laid-open for public inspection after 18 months from the priority date 9. Request Examination? Requests for examination may be deferred up to 5 years from filing Currently a delay of between 2-4 years to start examination 55
  • 56. Typical Timeline PARIS CONVENTION National Filings (2k-5k per) Priority and National Entries Application PCT Filing (10k) of PCT Filing (2k-5k per) (5k-20k) Months 0 12 30 Note: Maintenance fees may be due depending on country 56
  • 57. Typical Timeline PARIS CONVENTION National Filings (2k-5k per) Priority and National Entries Application PCT Filing (10k) of PCT Filing (2k-5k per) (5k-20k) Months 0 12 18 30 Note: Maintenance fees may be due depending on country Publication 57
  • 58. Typical Timeline PARIS CONVENTION National Filings (2k-5k per) Priority and National Entries Deadline to Request Application PCT Filing (10k) of PCT Filing (2k-5k per) Examination in Canada (1k) (5k-20k) Months 0 12 18 30 72 (5 Years from Filing) Note: Maintenance fees may be due depending on country Publication 58
  • 59. Patent Application Process Practical example 10. Prosecution Examiner reviews application and requisitions compliance with the Patent Act and Patent Rules Requisition alleging application is not allowable (e.g. not new, not inventive, claims are unclear…etc.) Applicant responds with arguments and/or amendments 59
  • 60. Patent Application Process Practical example 10. Prosecution Amendment is limited: cannot introduce new subject matter Amendment may broaden or narrow scope of claims 60
  • 61. Patent Application Process Practical example 10. Prosecution Patent to issue to a single invention May be required to restrict application to single invention and file one or more divisional applications to additional inventions 61
  • 62. Patent Application Process Practical example 11. Allowance and Issuance Pay the final fee and get the patent 62
  • 63. Strategies • Picking where to file: • Your market • Your competitor’s market • Your competitor’s manufacturing facilities • Enforcement potential • Prosecution charges (Budget) • Deciding how to first file: • Desire for speedy issuance or indication of patentability or just getting on file to reserve place in line 63
  • 65. Application Drafting Considerations Christopher Hunter Lawyer, Patent & Trade-mark Agent Toronto May 6, 2009
  • 66. Section 27(3) of Patent Act Canada The specification of an invention must (a) correctly and fully describe the invention and its operation or use as contemplated by the inventor; (b) set out clearly the various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter, in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it pertains, or with which it is most closely connected, to make, construct, compound or use it; 66
  • 67. Section 27(3) of Patent Act Canada Cont’d (c) in the case of a machine, explain the principle of the machine and the best mode in which the inventor has contemplated the application of that principle; and (d) in the case of a process, explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions. 67
  • 68. The Real Challenges to Obtaining Patents Meeting the Specification Requirements • Written Description • Enablement • Utility 68
  • 69. United States Written Description Requirements • Is there an actual reduction to practice, i.e. a working example? • Are there drawings or structural chemical formulae in sufficient detail to show possession (knowledge) of the claimed invention as a whole? • Are there other identifying characteristics described that show possession (knowledge) of the claimed invention in sufficient detail? 69
  • 70. United States Written Description Requirements • Complete structure of a species or embodiment • Other relevant identifying characteristics • Level of skill and knowledge in the art • Determines what is required • Partial structure 70
  • 71. United States Written Description Requirements • Physical and/or chemical properties • Functional characteristics alone • Usually not acceptable • Functional characteristics coupled with known or disclosed correlation between structure and function and the method of making the claimed invention should suffice 71
  • 72. United States Written Description Requirements • Genus – Species • Genus claims may be supported with sufficient description of a representative number of species • Representative number of species means that species described must be representative of the entire species • The greater the variation within the genus, then the species description should adequately reflect the variation in the genus 72
  • 73. United States Written Description Requirements • Mature technologies vs. Emerging Technologies, an inverse relationship to description requirements • If knowledge and skill are high, method of making invention and function may be enough • If knowledge and skill are less established and therefore unpredictable, more evidence is required 73
  • 74. Enablement • Ensures that public receives its “quid pro quo” for patent grant • Description must enable person skilled in the art to practice the invention without undue experimentation 74
  • 75. Enablement • Factors to consider • Quantity of experimentation necessary • Amount of direction and guidance provided • Presence of working examples • Nature of invention • State of prior art • Relative skill of those in art • Predictability of art • Breadth of claims 75
  • 76. Enablement • Chemical cases historically have never been subjected to requirement of working examples • Generally genetic engineering cases cannot succeed without working examples • Prophetic examples have been sanctioned by the courts but must not be written in past tense (Ground for invalidation in the USA) 76
  • 77. Enablement • How much disclosure is necessary to support broad claims? • Fact dependent • Unpredictable factors which are often associated with chemical reactions and physiological activity raise the threshold compared with other arts such as electronics and mechanics 77
  • 78. Enablement • Genentech Inc. v. Novo Nordisk A/S • Chemical patent invalid for lack of enabling description for starting materials and conditions to be used • National Recovery Technologies v. Magnetic Separation Systems • Invalid claim 1 included step for selecting process signals as pass through irregularities in the bodies of said material items • Description did not state how to perform step 78
  • 79. Utility • Credible • Assertion must have unflawed logic and consistent facts • Specific • Polynucleotide as gene probe without disclosure of specific DNA target not acceptable • Substantial • Defines real world use 79
  • 80. Utility • Used to reject applications and to narrow claims • Claim to piece of DNA may be narrowed to “consisting of” language from “comprising” • Claims to receptors will be granted only if there is disclosure of disease or condition associated with the receptor • Cannot just say receptor binds compounds or makes monoclonal antibodies, actual examples or reference to common general knowledge with general description 80
  • 81. Utility For Claims to methods of treating disease • Where disease is unspecified, claims are rejected as too much research is required to determine diseases to be treated • Where disease is defined by reference to underlying mechanism, must show by literature or evidence that mechanism is associated with disease 81
  • 83. Functional Approach to Claim Drafting Paul Field Lawyer, Engineer Patent & TM Agent Toronto February 23, 2008
  • 84. Functional Approach • Applicable to mechanical devices • Complex mechanisms break down into a large number of simple components working together • Each component performs an identifiable function • Each component is connected or engages at least one other component • Capture the essence of that function in the least possible number of words • Try “means for function” thought process to open up alternatives 84
  • 85. Breaking Writer’s Block • Have a Method • Accumulate Information with an Open Mind • Organize Thoughts Loosely on Scrap Paper • Accept Trial & Error as a Legitimate Process • Commit to Paper using Commonly Accepted Claim Formats • Test Your Assumptions – Edit on Paper – Redraft Test – Edit – Redraft ………then stop 85
  • 86. Have a Method • Copy from others shamelessly • Organize thought process on paper • Use rough lists, bubble diagrams, flow charts • Move from general concept to detailed features 86
  • 87. Accumulate Information with an Open Mind • Interview the inventors • Become familiar with the Prior Art • Beware of locking onto concepts too early • Visualize the mechanism exploded, floating in space, then examine interactions • Review from the perspective of an infringer or a judge 87
  • 88. Organize Thoughts Loosely on Scrap Paper • List components • List advantages over prior art • Bubble diagrams – Flow Chart • Sketch draft drawings • Decide if parts are “essential” or “optional” • Visualize the invention with a part missing to see if it is essential or optional 88
  • 89. Accept Trial & Error as a Legitimate Thought Process • Misconception of inefficiency • Process accounts for multiple priorities, conflicting issues, opposing viewpoints, satisfies multiple conditions and concludes with a less than perfect solution 89
  • 90. Conditions to be Satisfied By Patent Claims • Claims supported by description • Consistent terms used throughout • Logical sequence (antecedents) • All essential elements included (operative) • Claims are not greater than the invention made and described 90
  • 91. Conditions to be Satisfied By Patent Claims • Includes all known equivalents • Includes all embodiments with broad language • Not too limiting (less than the invention) • Not overly verbose (less is more) • Addressed to one skilled in the art • Addressed to a judge (not technical) 91
  • 92. Use Commonly Accepted Patent Claim Format 1. A (name), for (optional preamble describing background), comprising: element A, where A has sub-elements and/or limitations; element B, connected to A, where B has sub-elements and/or limitations; and element C, connected to A and/or B, where C has sub- elements and/or limitations. 2. A (name) according to claim 1 wherein: element C has more sub-elements or limitations 92
  • 93. Functional Terms • Function is often inherent in the words chosen ( a blade, a valve, a fastener, a conveyor, a frame) • Function may be specifically recited to cover many equivalent elements (biasing means, extending from the jam to the door, for urging the door to a closed position) 93
  • 94. Clarity • Format, punctuation, commas divide the claim into digestible pieces • Say one thing at a time, fully complete • Repeat for clarity (ex: therein vs. in the A; therebetween vs. between A and B) • Use “the” not “said” 94
  • 95. Zamboni™ Ice Resurfacing Machine Claim Drafting Example www.zamboni.com
  • 96. 96
  • 97. 97
  • 98. VEHICLE ICE SCRAPER ICE CHIP COLLECTOR WASH + VACUUM WIPE / FINISH 98
  • 99. BEVEL ANGLE VEHICLE WIDTH STORAGE ICE HEIGHT + DUMP SCRAPER VACUUM VERTICAL DIRTY ICE CHIP SPRAY COLLECTOR CLEAN STORE HORZ. DIRTY WASH + VACUUM STORE CLEAN WIPE / SPRAY FINISH SQUEEGEE HOT 99 TOWEL
  • 100. ELEMENT FEATURES Vehicle Ice Scraper / Shaver Horizontal Conveyor Vertical Conveyor Wash and Vacuum Water Wiper or Squeegee 100
  • 101. ELEMENT FEATURES Vehicle üself propelled ü4 wheel drive üSteer from back üDriver and controls at the back üHolds ice chip container üWater containers üCould sell without vehicle 101
  • 102. ELEMENT FEATURES Ice Scraper / Shaver üFull width of vehicle üHeight and angle adjustable üBevelled cutting edge üLeading edge vs, trailing edge üIce chips collect at leading edge 102
  • 103. ELEMENT FEATURES Horizontal Conveyor üCollect ice chips from blade üForward of scraper üHelical screw üFeeds from edges to center outlet 103
  • 104. ELEMENT FEATURES Vertical Conveyor üInlet from horizontal conveyor üOutlet to ice chip container üHelical screw or auger in modern version üChain with paddles in old version 104
  • 105. ELEMENT FEATURES Wash and Vacuum Water üWater source storage üPump üWashes ice surface after scraper üVolume + height adjust üVacuums dirty water üStorage recycle filter 105
  • 106. ELEMENT FEATURES Wiper or Squeegee üTrailing towel with hot water üTrailing squeegee üContains water pool üWipes away excess 106
  • 107. 1. An ice surface conditioning device comprising: a scraper blade; and an ice shaving collector. 107
  • 108. 1. An ice surface conditioning device comprising: a scraper blade, having a cutting edge for engagement with an ice surface; and an ice shaving collector in communication with an ice shaving container. 108
  • 109. 1. An ice surface conditioning device comprising: a scraper blade, disposed transverse to a machine direction, having a cutting edge for engagement with an ice surface; and an ice shaving collector having an inlet adjacent the blade and an outlet in communication with an ice shaving container. 109
  • 110. 2. An ice surface conditioning device according to claim 1 wherein the ice shaving collector comprises a horizontal conveyor. 3. An ice surface conditioning device according to claim 2 wherein the horizontal conveyor is a helical screw. 4. An ice surface conditioning device according to claim 3 wherein the horizontal conveyor has two opposing helical screws and a central outlet. 110
  • 111. 5. An ice surface conditioning device according to claim wherein the ice shaving collector comprises a vertical conveyor with an inlet in communication with an outlet of the horizontal conveyor. 6. An ice surface conditioning device according to claim 5 wherein the vertical conveyor is a helical screw. 7. An ice surface conditioning device according to claim 6 wherein the vertical conveyor is a band with a plurality of paddles. 111
  • 112. 8. An ice surface conditioning device according to claim 1 comprising: a water coating distributor rearward of the blade. 9. An ice surface conditioning device according to claim 8 wherein the water coating distributor comprises a water sprayer in communication with a clean water supply tank. 112
  • 113. 10. An ice surface conditioning device according to claim 8 comprising: an excess water removal device. 11. An ice surface conditioning device according to claim 10 wherein the excess water removal device comprises a water vacuum inlet in communication with a dirty water tank. 113
  • 114. 12. An ice surface conditioning device according to claim 1 comprising: an ice surface wiping device. 13. An ice surface conditioning device according to claim 12 wherein the ice surface wiping device is selected from the group consisting of: a squeegee; and a towel. 14. An ice surface conditioning device according to claim 13 wherein the towel communicates with a hot water supply. 114
  • 118. Claim 1 A waste receptacle comprising: a. a sweeping ramp including a lower ramp end and an upper ramp end, the sweeping ramp bearing teeth protruding therefrom at a non-zero angle between the lower and upper ramp ends; b. a waste bin having a bin floor defined beneath the upper ramp end. 118
  • 119. Claim 2 The waste receptacle of claim 1 wherein the teeth protrude from the sweeping ramp to extend generally toward the upper ramp end. 119
  • 120. Claim 3 The waste receptacle of claim 1: wherein the sweeping ramp includes opposing ramp sides extending between the lower and upper ramp ends, further comprising upwardly- extending walls surrounding at least a portion of the upper ramp end and the ramp sides, wherein the waste bin is defined between the upper ramp end and the upwardly-extending walls. 120
  • 121. Claim 4 The waste receptacle of claim 3 further comprising a tubular chute having a chute passage defined therein, the chute passage being directed onto the waste bin. 121
  • 122. Claim 5 The waste receptacle of claim 4 further comprising a broom handle notch defined upon the tubular chute at an area of the tubular chute situated generally above the sweeping ramp. 122
  • 123. Claim 6 The waste receptacle of claim 4 further comprising a flap hingedly affixed within the chute passage of the tubular chute. 123
  • 124. Claim 7 The waste receptacle of claim 6 wherein the flap is foraminated. 124
  • 125. Claim 8 The waste receptacle of claim 6 wherein the flap is rotatable into the chute passage to engage the tubular chute. 125
  • 126. Claim 9 The waste receptacle of claim 8 wherein the flap, when engaging the tubular chute, slopes downwardly in a direction away from the sweeping ramp. 126
  • 127. Claim 10 The waste receptacle of claim 3, further comprising a bin ramp descending from the upper ramp end into the waste bin. 127
  • 128. Claim 11 The waste receptacle of claim 1: Wherein the sweeping ramp includes opposing ramp sides extending between the lower and upper ramp ends, further comprising sidewalls extending upwardly from the ramp sides, and an upwardly extending end wall between the sidewalls. 128
  • 129. Claim 12 The waste receptacle of claim 11 wherein the waste bin is defined between the upper ramp end and the end wall, the waste receptacle further comprising a tubular chute having a chute passage defined therein, the chute passage being directed onto the waste bin. 129
  • 130. Claim 13 The waste receptacle of claim 12 further comprising a broom handle notch defined upon the tubular chute at an area of the tubular chute situated generally above the sweeping ramp. 130
  • 131. Claim 14 The waste receptacle of claim 12 further comprising a flap hingedly affixed within the chute passage of the tubular chute. 131
  • 132. Claim 15 The waste receptacle of claim 11 further comprising a bin ramp descending from the upper ramp end, wherein the waste bin is depressed between the upper ramp end and the end wall. 132
  • 133. Claim 16 The waste receptacle of claim 1: wherein the sweeping ramp includes opposing ramp sides extending between the lower and upper ramp ends, the waste receptacle further comprising a waste bin situated beneath the upper ramp end, and a tubular chute having a chute passage defined therein, the chute passage being directed onto the waste bin. 133
  • 134. Claim 17 The waste receptacle of claim 16 wherein the tubular chute includes an end wall situated generally opposite the upper ramp end and extending upwardly from the waste bin, and wherein the end wall is tilted inwardly so as to rest generally over the waste bin. 134
  • 135. Claim 18 A waste receptacle comprising: a. a sweeping ramp including a lower ramp end, an upper ramp end, and opposing ramp sides extending there between, wherein teeth extend from the sweeping ramp between its lower and upper ramp ends, b. a waste bin situated beneath the upper ramp end, and c. a tubular chute having a chute passage defined therein, the chute passage being directed onto the waste bin. 135
  • 136. Claim 19 The waste receptacle of claim 18 wherein the teeth are inclined toward the upper ramp end. 136
  • 137. Claim 20 A waste receptacle comprising: a. a sweeping ramp including a lower ramp end, an upper ramp end, and opposing ramp sides extending therebetween, with teeth extending from the sweeping ramp between the upper and lower ramp ends at a non-zero angle, b. a waste bin situated beneath the upper ramp end, and c. a tubular chute having a chute passage defined therein, the chute passage being directed onto the waste bin. 137