Course: A Step-by-Step Patent Preparation Course

Course Instructor: Dr. Xueyuan Zhao

Course Introduction

Filing the strong patent application is one of the critical steps for founders, engineers and researchers. USPTO allows inventors living in US to file the patent by themself without the attorney, while the attorney is required for inventors outside of US. To draft a strong patent, inventors need a systematic process to ensure high-quality patent drafting, including highly consistent figures, descriptions, invention summaries, and strong claims following patent guildelines. USPTO has introductory materials on how to draft patents. For example, this is one USPTO guide on drafting the patent:

USPTO website document -- Learn how to draft a patent application 

Compared with USPTO's public guidelines, this course addresses several critical issues researchers, engineers and founders are facing: 

1) How to organize and do the documentation of the technical contents according to USPTO patent requirements

2) How to improve the innovation merit of the invention, if the proposal's novelty is insufficient compared with existing patents and publication after prior art survey study

3) What is the systematic methodology to work out high-quality patent applications that meet USPTO requirements on all parts of the patent specification document

4) How to further the patent invention document along with the technical documents and prototype materials for industrial R&D, IP licensing, investors, and government grants

This course is a practical, step-by-step guide to drafting a complete, USPTO-compliant patent application without an attorney.  This course is developed for researchers, engineers and founders. The technical fields covered by this patent training course are broadly all engineering and science fields, including electrical, mechanical, aerospace, computer science, materials science, bioengineering, health sciences, and other related engineering and science technical fields. 

Course Syllabus

Lecture 1: USPTO Patent Requirements and the Preparation Process

Course contents cover:

1) The three core USPTO requirements: novelty, non-obviousness and utility

2) Provisional vs. non-provisional of utility patents 

3) The preparation of lab book, literature survey, novelty, and validation

4) Document preparation of figures, detailed description, invention summary and claims

5) Literature survey technique, patent claim types and structure

Lecture 2: Preparing Materials and Perform Prior Art Survey

Course contents cover:

1) Organizing the technical proposal before developing patent figures and their descriptions

2) Documenting the original invention record, computer/simulation validation, dataset generation, and results

3) Performing a literature survey on Google Patents, the USPTO database, and Google Scholar

4) Reviewing the existing patents and non-patent literature to enhance the novelty and non-obviousness of the patent application

5) Working through a filed patent application as an example on how to prepare the patent filing materials

Lecture 3: Elevate the Innovation Merit of Your Invention

Course contents cover:

1) Identify the technical challenges that all existing patents and nonpatent literature do not address; 

2) Align the technical challenges with the next-generation engineering system under industrial standardization and R&D investigation in your industry

3) Think out of the box by relating the concepts, ideas and methods of other technical fields to the problem you are studying in your technical field

4) Investigate research publications and brainstorm in related technical fields to find common elements in your technical problems and root your invention method from cross-field study

5) Document, validate and verify multiple proposals' feasibilities, performance advantages, and compare with the existing methods addressing the technical issue, to ensure your method is sufficiently new, and has performance advantages in resolving the problem

Lecture 4: Aligning Figures, Invention Summary, and Claims

Course contents cover:

1) Structuring the application materials by three levels, the broad-coverage level, the system-block level, and the specific technique level

2) Developing broad-coverage level content describing the general inventive structure

3) Developing system-block level content describing the invention in the specific system with block level details

4) Developing specific-technique level content covering detailed technical contributions that establish novelty and non-obviousness

5) Maintaining consistency across figures, descriptions, the summary, and claims by walking through with the example patent

Lecture 5: Completing the Patent Drawings and Detailed Description of Drawings

Course contents cover:

1) USPTO drawing standards of nonprovisional patents and the numbering conventions

2) Creating the drawing according to the three levels, the broad-coverage level, the system-block level and the specific-technique level

3) Arranging the drawings to match with the invention summary and claims

4) Writing the detailed descriptions of drawings to match each drawing elements

5) Common drawing issues and USPTO drawing format requirements

Lecture 6: Completing the Background Part and the Invention Summary

Course contents cover:

1) Drafting a background part that describes the problem and limitations of existing solutions

2) Summarizing the prior art survey, including patents and nonpatent literature in the background parts

3) Writing an invention summary that outlines the strength of the patent according to three levels, aligned with drawings and claims, 

4) Aligning the summary with the drawings and descriptions from Lectures 4 and prepare the claims

Lecture 7: Completing the Patent Claims for Best Legal Coverage

Course contents cover:

1) Developing the claim tree of independent claims as the root, with dependent claims citing and narrowing them

2) Structuring claims for broad coverage, system-level protection, and specific technical protection in the claim tree

3) Developing claims with strong coverage for maximized legal protection in the broad-coverage level and the system-block level

4) Developing strong claims that meet the novelty and non-obviousness requirements in the specific-technique level

5) Developing the specific claims for software claims and media-type claims

Lecture 8: Finalizing the Patent Specification and Patent Submission 

Course contents cover:

1) Drafting the abstract and quality review of all document components

2) Preparing the Application Data Sheet (ADS)

3) Preparing the Information Disclosure Statement (IDS)

4) Final consistency review across all document elements of figures, description, summary, and claims

5) Track One Prioritized Examination

Lecture 9: The Patent Review, Patent Assignment and PCT Filings

Course contents cover:

1) USPTO examiner review and office actions of nonprovisional filings

2) The patent assignment and USPTO Patent Assignment Center

3) Overview of the Patent Cooperation Treaty (PCT) process for international protection

4) Overview of 371 National Stage and the timing and requirements

Lecture 10: Aligning Your Patent with Industrial R&D and Government R&D 

Course contents cover:

1) Combining the patent protection with detailed technical documentation for maximum credibility

2) Supporting the patent with validation results and validation report documentation

3) Supporting the patent with prototype development and technical documentation

4) Positioning the patent as the legal and technical basis for industrial R&D collaborations and government R&D projects