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What are the key factors to consider when communicating research findings in a patent application?

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If you are involved in research management, you may have to deal with patent applications at some point. Patents are legal documents that protect your intellectual property rights and prevent others from copying or exploiting your inventions. However, writing a patent application is not a simple task. You need to communicate your research findings clearly, accurately, and persuasively, while following the rules and standards of the patent office. In this article, we will discuss some of the key factors to consider when communicating research findings in a patent application.

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Bindu Sharma

Founder & CEO, Origiin IP Solutions || Patent, Trademark, Contract law || IP monetization || M&A || Helped companies to…
William B Spillman Jr

R&D Consulting Professional

1 Know your audience

One of the first factors to consider is who will read your patent application. Your audience may include patent examiners, lawyers, judges, competitors, and potential licensees or partners. Each of these groups has different expectations, interests, and backgrounds. You need to tailor your language, style, and format to suit your audience and purpose. For example, you should use technical terms and jargon only when necessary and define them clearly. You should also avoid vague or ambiguous expressions and provide enough details and examples to support your claims.

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Bindu Sharma

Founder & CEO, Origiin IP Solutions || Patent, Trademark, Contract law || IP monetization || M&A || Helped companies to optimize innovation & safeguard IP in 40 plus countries across the globe || Registered Patent Agent
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To convert research findings into a patent, following 2 points are important according to me: 1. Understand the requirements to get a patent and focus only on them. 2. Identify the parts of research which have business and commercial value and write patent claims around them.

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2 Follow the structure

Another factor to consider is the structure of your patent application. A patent application typically consists of four main parts: the title, the abstract, the specification, and the claims. Each part has a specific function and requirements. The title should be concise and descriptive of your invention. The abstract should summarize the main features and advantages of your invention in one paragraph. The specification should describe your invention in detail, including the background, the problem, the solution, the drawings, and the embodiments. The claims should define the scope and boundaries of your invention and its novelty, usefulness, and non-obviousness.

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William B Spillman Jr

R&D Consulting Professional
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This is a business question. When IP has been developed, you can (1) keep it secret, (2) patent it or (3) publish and put it in the public domain. If you keep the IP secret, then you will have full use of it until someone figures it out, but you will have the benefit of the use of the IP until that happens. If you patent it, then others will infringe and the lawyers will make a lot of money that your organization could use for other things and during the process you might even be prohibited from using the IP. If you publish, then since the IP is in the public domain, no one can prohibit you from using it and if you have a big enough technical lead, your competitors will always lag behind you. Which you choose depends on the situation.

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3 Highlight your novelty

A third factor to consider is how to highlight your novelty. Novelty is one of the key criteria for obtaining a patent. It means that your invention is new and not anticipated by any prior art. Prior art refers to any public disclosure of information that is relevant to your invention, such as publications, patents, or presentations. You need to show how your invention differs from and improves upon the prior art. You can do this by using comparative language, emphasizing the benefits and advantages, and providing evidence and data.

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4 Avoid disclosure pitfalls

A fourth factor to consider is how to avoid disclosure pitfalls. Disclosure pitfalls are mistakes or omissions that can jeopardize your patent rights or expose you to legal risks. Some of the common disclosure pitfalls are disclosing too much or too little, disclosing too early or too late, disclosing inconsistently or inaccurately, and disclosing confidentially or publicly. You need to be careful and strategic about what, when, how, and to whom you disclose your research findings. You should consult with a patent attorney or a patent expert before filing or publishing your patent application.

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5 Use clear and precise language

A fifth factor to consider is how to use clear and precise language. Language is the main tool for communicating your research findings in a patent application. You need to use language that is clear, precise, consistent, and unambiguous. You should avoid grammatical errors, spelling mistakes, punctuation errors, and formatting issues. You should also avoid colloquialisms, metaphors, idioms, and rhetorical questions. You should use active voice, simple sentences, and logical transitions. You should also use proper terms, definitions, and references.

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6 Seek feedback and review

A sixth factor to consider is how to seek feedback and review. Feedback and review are essential for improving your patent application and increasing your chances of success. You should seek feedback and review from different sources, such as your research team, your collaborators, your mentors, your peers, your patent attorney, or your patent expert. You should ask for constructive and specific feedback and review on your content, structure, language, and format. You should also be open-minded and receptive to feedback and review and make necessary changes and revisions.

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7 Here’s what else to consider

This is a space to share examples, stories, or insights that don’t fit into any of the previous sections. What else would you like to add?

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What are the key factors to consider when communicating research findings in a patent application?

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1 Know your audience

2 Follow the structure

3 Highlight your novelty

4 Avoid disclosure pitfalls

5 Use clear and precise language

6 Seek feedback and review

7 Here’s what else to consider

Research Management

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