An AlaCarte Invention Report
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Edited Reports
Ghost Written Reports
I. Overview
An Invention report conveys key information from the inventor
to the patent attorney or agent who prepares the patent application.
I have 35 patents and in most every case the patent department of
the large company where I worked required that I prepare an invention
report which would be used by the patent department along with my
personal comments to prepare the application. Most attorneys and
agents work this way today.
Some attorneys will draft an application while you dictate information
to them but this substitution for an Invention report, while quicker,
allows for important information to be missed which can have important
consequences later.
Also most often an Invention Report is written before a patent
search is done, and that is like drafting it in the dark as very
important information which should be supplied to distinguish the
invention from what went before (The Prior Art) is often omitted.
At BML we help you prepare a high quality invention report that
reflects what has been found in the search we did for you. If done
properly it will save the attorney time, save you money in responding
to patent office actions and avoid other mistakes that will delay
the granting of your patent or worse put you at risk for not getting
it.
We have some sample invention reports we can send you to show you
what they look like. Just ask.
A. Edited Reports
BML will make suggestions and edit the text of each of the sections
of the Invention Report. Those sections described in Section II.
B. Ghostwritten
Reports
Should you choose Ghostwriting, BML will ghostwrite the Background
and Description of the Invention sections of the report. It is
important that the phantom claims be done as a co-operative venture
so this section will not be ghostwritten.
II. Sections of the Report
1. Abstract:- This section is too short to merit
a line item on the estimate. It will be done last after all other
sections are written and its cost included in the other sections.
2. Background of the Invention:- This section
consists of a description of the situation before the invention
was made. and will include a listing of the prior art that bears
upon the invention.
The patented prior art will be compiled from the key patents identified
in the patent search report we prepared for you, titled: Client
Company Search Report (**date**).
3. Description of the Invention:- The basic
responsibility for preparing the description of the inventions
lies with the inventor and will be reviewed by BML. A sample invention
report has been provided to indicate what items should be addressed
by the inventor in the Description. One effective method of writing
this section is to start with the phantom claims and provide supporting
information for each of them. At the same time the inventor should
be mindful of the prior art and endeavor to show how the invention
is superior to, or at least different from, the nearest prior
art relating to a specific phantom claim.
BML will edit the inventor’s description to make sure it
aligns with standard patent application practice and in particular
that key legal issues are addressed, for example the requirement
that each claim is covered by supporting material in this section.
We will also check to be sure the textual description of the
figures aligns with the figures.
4. Figures:-
Patent figures are drafted according to a specific set of rules.
Elements of the figures are numbered so that they can be referred
to in the "Description of the Invention" section. For
the invention report it will be sufficient to make sketches of
the important elements of the patent to illustrate Description
section and number them in any kind of consistent fashion. Figures
are often extracted from prior art references and may be done
so here with proper referencing.
BML provides drafting services included as line item 6, that
will turn these sketches into drawings that will meet patent office
requirements. Else this operation will probably be outsourced
by the patent attorney to his drafting staff.
BML will check figures to against the text to make sure they
are properly referenced and will also review them for clarity.
5. Phantom Claims will be drafted by the inventor
in cooperation with and reviewed by BML. It is understood that
the patent attorney will probably change the language of these
phantom claims when writing the actual claims for the Patent Application.
It is reasonable to start with the set of patent claims from the
Search Report and your revisions to them and then amend them in
the initial meeting where we will discuss the implications of the
prior art for the proposed claims. In this section we will emphasis
the differences between your invention and the prior art .
Included in the editing process are all conversations by email
and telephone relating to the drafting of each section The notes
and information consolidated by BML will be stored on your folder
at www.businessmetamorphosis.com.
As this file matures, new versions will be issued and a version
history included as the final item of the outline.
*AlaCarte is a division of BML.
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