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Patent Filing & Litigation

Get Your Patent Application Right the First Time

By July 18, 2022August 30th, 2022No Comments

While the quality of your invention no doubt contributes to writing a successful patent, so does the quality of your application. But like any legal document, this means checking off boxes like being accurate, concise, and thorough. Bringing these three elements together can take finesse and creativity.

IP.com recommends hiring a legal professional and editing service to assist in patent authorship. But many companies still strive to complete the initial drafts of patent applications on their own. Use this guide to better understand how IP.com’s suite of end-to-end innovation products supports writing a great patent application.

1. The Title

As an inventor, you probably have a name or title for the technology you developed. But patent offices like the USTPO have guidelines for how they expect titles to be written. It should be clear, meaningful, and concise. It should also be specific, helping the reader understand what the invention is and what it does, even if they haven’t read past the title. Keep in mind that titles are primarily used for record and search purposes, so patent offices like something that can be easily searched for.

Additionally, the use of certain words should be avoided. Words like “new” and “improved” could be cause for rejection. Indefinite articles like “a” and “an” will be deleted by the patent office.

2. Priority Dates

After the title comes the listing of relevant prior art to establish your priority claim. Priority claims under the USPTO’s recent switch to a “first to file” system can be an effective way to link the patent at hand to an earlier iteration to give your patent the earliest possible filing date.

This section can be important if you have filed multiple patents for the same or similar invention and want the original patent’s date to become the official filing date (and therefore, the official start of your patent) while maintaining the later patent’s claims and technical specifications.

3. Sponsorship Statement

If a governmental organization or agency has a stake in an invention, you will want to make a statement to that effect next. This section is generally for inventors who are contactors or receive government funding for their inventions. This requirement was first delineated by the Bayh-Dole Act and is important because it establishes an inventor’s ownership or partial ownership of a government-funded patent. Excluding or presenting this data inaccurately can lead to application rejection and imperil future government funding awards.

Inventions that fit this criterion are called subject inventions, which means they are subject to the terms and conditions of that funding and broader federal regulation. It is important to note that inventions can be generated with help from government funding and not be subject to inventions if key characteristics of it were conceived prior to funding awards.

4. Invention Background

The term “background” suggests more depth than is usually needed in this section. Inventors have had applications rejected for sharing too much detail including listing and even comparing their invention with existing prior art. But less is more here.

Your background should be very brief and simply provide a short synopsis of your invention. IP.com can assist in writing and editing disclosures in addition to their research tools vital to nearly all aspects of the application process.

5a. Brief Drawing

This is where you will provide an overview of your invention’s specifications. In most cases, this needs to be no more than a caption-esque description of the drawing and more or less a summary of the section that follows.

5b. Detailed Drawing

This begins the meat-and-potatoes of your patent application and is known as the patent’s embodiment. This is where you will define your invention and illustrate it with supporting information including technical terminology. This section starts the process of defining where your patent would begin and where related prior art ends.

This section requires that authors describe an invention in a way that it can be duplicated by another inventor in the same field. This is also a dictionary for the claims and should provide clear support for all terms used.

6. Invention Claims

A patent claim outlines patent specifications and explains the invention in detail. It is usually expressed as a statement of technical facts and legal terms.

It outlines the scope of the patent, which can be stated as the inventor’s right to exclude. Right to exclude is a vital tenant of property rights and essentially defines what the patent covers. Where your invention begins and how it can be differentiated from others should be outlined here.

This section should emphasize claims that are broad enough to provide protection for your invention but be specific enough to allow the patent examiner a basis for evaluation.

7. Patent Abstract

Applications require an abstract of 150 words or less. While the full title of this section is Abstract of the Disclosure, it is independent of the invention disclosure establishing your invention as prior art. It should be comprised of the technical essence of your invention, the nature of its discovery, and its potential applications. As with the description sections and background, it should not include any review of prior art. (It is not a literature review or journal abstract.)

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