How to Draft Patent Legal Opinions
- 1). Hire a registered patent agent to draft the opinion on the patentability of your invention. Find an agent by using the registry kept by the United States Patent and Trademark Office.
- 2). Submit an invention disclosure to your patent agent. Include a full and accurate description, and references on the art existing prior to the invention date. Also provide the results from a novelty search. Describe the chronology for the invention, with the exact dates on discoveries and putting the discoveries to use. Support the invention description by handing over any samples, drawings, pictures and other descriptive materials.
- 3). If the agent finds any information missing or any inaccuracies when reviewing the submitted materials, the agent should request the needed accurate information. Respond by providing the information the agent requests.
- 4). The agent organizes and plans the legal opinion. The draftsman separates the facts relevant to patentability from those not relevant for describing an original work that meets the legal criteria. A legal framework sets out in order the patentability criteria in 35 U. S. C. Chapter 10: new, useful and satisfies conditions. To satisfy conditions, the invention must be novel in the field and the idea should be a non-obvious idea for invention to persons skilled in the art. An assessment on the state of the art decides whether the inventor lost the patent because another person invented first.
- 5). The agent writes an opinion letter entitled Patentability Opinion, with the invention name in the heading. The letter states the main conclusions and likelihood the USTPO Examiner approves the patent, supported by the opinion on patentability. A description of the facts shows the originality in the inventor's work. The legal section analyzes how the facts prove the invention meets the statutory criteria and the relevant case law. A chronology analysis settles questions on whether the inventor discovered an invention which other citizens skilled in the art could not have invented at the time of invention and before any other citizen patented the invention or described the invention in printed material or put the invention in public use.
- 6). The registered patent agent delivers the opinion.
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