Lawyers and Settlements
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Intellectual Property: Patents

STEP 3: Draft and File the Patent Application

USE A PATENT ATTORNEY, as this is the critical step in your process and is not the place to cut corners.

A patent application is the document filed in the Patent and Trademark Office for the purpose of obtaining a patent. It is sometimes said to be the single most difficult legal instrument to write, since it requires both technical expertise and extremely specialized legal knowledge to write a top-notch patent application, and often a single word in the application can be the difference between a valid and invalid patent and between broad coverage and narrow coverage. Just as one telling example, if a do-it-yourself applicant uses the word “consisting” instead of the word “comprising” the scope of the patent coverage will be much less, but the difference in those two words is one that even a novice patent attorney will understand. Likewise, knowing the difference between the use of “in the invention” and “in an exemplary embodiment” in the description and the significance of the terms and when to use them is extremely important to obtaining broad scope. Knowing the legal significance of the words “means for”, which have been heavily litigated is often critical to obtaining the broadest protection. Knowing the holdings of recent Federal Circuit and Supreme Courts on claim terminology and claim interpretations is very important. Knowing how patent drawings need to appear and what needs to be in them and what should not be in them is very important. Knowing the significance of the “written description” requirements, the difference between “elements” and “limitations”, the difference between “abstract” and “summary”, and many similar nuances that are critical to success is something that few inventors know. Since there are significant limitations on making changes in the application after it is filed in the Patent and Trademark Office-a strict rule against "new matter"-it should be prepared with utmost care. Both the inventor and attorney have legal obligations to insure that the various parts of the application are correct and, to the best of their knowledge, are not misleading.

It is not necessary to construct a working model.
Since the application must describe the invention in such a complete way that one of ordinary skill in the relevant technical field would be able to make and use the invention, models are no longer required or even desired by the United States Patent and Trademark Office.

The description must be "enabling."
Because of this, effective preparation of that document is a demanding project requiring full knowledge of a completely conceived invention. It is not enough to describe a problem, since that does not describe the solution. The solution must be described and will be what the patent, if properly written, seeks to cover.

The patent application must disclose the best mode contemplated by the inventor for practicing the invention.
Concealing the best mode may invalidate the claims of the patent, and yet is something inventors sometimes foolishly attempt to do.

There is a duty to disclose all knowledge of pertinent prior art.
Concealing known prior art relevant to the claimed invention may be considered fraud on the United States Patent and Trademark Office and if proven will invalidate the affected patent claims. That is because, as part of the application, the inventor must sign an oath or declaration stating he has revealed all known pertinent information.

NOTE: The patent application provides the foundation for defining the proper scope of patent protection that is to be granted. If it is not written well, the patent coverage may be of narrow scope and little value.

The main parts of an application are:

A background and prior art discussion
In the background and prior art discussion, problems or shortcomings that have been experienced in practices or products known in the prior art are described. This section seeks to convince the Patent Examiner (and later any Judge called upon to uphold the patent) that the invention is an important one and advances the progress of the useful arts and sciences.

Drawings
If an invention is susceptible of being drawn, the patent application normally must include a drawing as part of the invention description. The drawing should illustrate the best embodiment of the invention in order to meet the best mode and enablement requirements noted above. Patent applications on chemical compositions are a common exception to that practice. Instead of a drawing, chemical patent applications give "examples", which are actual or hypothetical tests and results showing the chemical reactions occur as described and claimed. The drawings of a patent application must conform to established standards and are usually made by professional draftsmen. Modern patent drawings are now done primarily with CAD software and an experienced patent draftsman can be extremely helpful in preparing drawings that best show the unique aspects of the invention. The style and technique for patent drawings are quite different from the formats used in industry. Sloppy drawings make extra work for the Patent Examiner and irritate the Patent Examiner. The patent drawings need to be clear and neat because they will be printed for all to see as the most visible and prominent part of the patent application. As a consequence, patent drawings should generally be made by specialists who work under the direction of the lawyer and are familiar with the requirements of the Office. It is possible to file informal drawings, if properly done, and then "formalize" them (without adding anything new) after the prior art examination is complete and the claims allowed. However, sloppy incomplete work on the drawings risks failure to disclose some key aspect with resultant damage to the coverage of the patent that issues and with increased probability that a Judge will hold the patent invalid.

A detailed description of the invention
The detailed written description of the invention, also called the "specification", must by law include adequate technical information, taken with the drawings, to enable one having ordinary skill in the art to carry out the invention. The specification must also include a written description of the best mode of practicing the invention known to the inventor at the time the application is filed. These two requirements, “enablement” and “best mode” are common avenues of attack in patent infringement defenses, so the patent needs to be written with a view toward the likely day when the description will be attacked in Court by a defendant claiming there was a failure to make an enabling disclosure or a failure to disclose the best mode. Details about every part of the invention may not be required as long as any undisclosed details are well known or consist of standard, commercially available parts. The written description should disclose any alternatives and equivalent structures known by the inventor that would also work in the invention. The claims
While claims are placed last in the printed patent application, they appear first in the on-line version of the patent and their importance is first, since perfection in the rest of the application is of little value if the claims do not properly cover the invention. This is not to say that there may not be remedies for imperfect claims under the right circumstances, but it is important that properly written claims of appropriate scope be present in the application. Most of the prosecution is devoted to having the claims written in acceptable form, since the claims are required to be specific enough to tell others what they will be excluded from doing.

Usually, the most effective patent application results from a joint effort between an inventor and his patent lawyer.

It is possible for a person to prepare and file a patent application on his own without a lawyer, just as it is possible for an accused murderer to try to defend himself in a capital murder case. Both are extremely foolish to do. When a lawyer working with the inventor prepares an application, there should be total communication. Specifically, it is important that the inventor give the lawyer all the relevant information for the job. The preparation of a patent application compares to making a cake. Considerable assistance can be given to a cook by premeasuring the ingredients, laying out the tools, and preparing the oven; but usually it is best for the cook to mix the ingredients, check the oven and place the proper decorations. Somewhat similarly, in the preparation of a patent application, the inventor should provide the information but allow the lawyer to compose and draft the complex document. Drawings, photographs, written material, and oral discussions all may be helpful to educate the lawyer, depending on individual circumstances. Patent applications on complex subject matter normally should include at least one meeting between inventor and lawyer. After a draft of the application is prepared, the lawyer requests the inventor to review it carefully to determine if there are corrections or changes to be made before it is placed in its final form for execution and filing in the Patent and Trademark Office.

The formal papers (petition, oath or declaration, power of attorney) are prepared for the inventor's signature, or execution.

The complete application signed by the inventor is then sent or delivered to the Patent and Trademark Office along with the appropriate filing fee. Once the application is on file, the invention, if marketed, may be marked with the notice "patent pending, " although the right to prohibit use of the invention by others does not mature until the patent is granted. Use of that notice before filing is illegal.

Provisional Patent Applications
In 1995, the patent laws were changed to provide for the filing of a special simpler, lower cost, form of patent application called a "provisional patent application." Provisional patent applications must have a specification but do not have to have claims and are not examined for obviousness over the prior art.

A provisional patent application (PPA) lasts only one year, is not published, is not examined, does not count as part of the 20 year term of a patent and cannot be infringed. A PPA allows use of the designation “patent pending” in association with the invention disclosed in the PPA. A PPA can be, but never is, converted into a regular patent application. Instead, a PPA provides a patent disclosure having a filing date upon which a formal patent application (a “regular” or “utility” patent application) can be based. The PPA preserves an applicant’s filing date for purposes of priority but do not begin the 20 year term of life. This form of patent application was intended to offset an advantage foreign inventors previously enjoyed due to the simpler forms of patent application required in foreign countries, the absolute novelty requirements in most foreign countries and the rule in most foreign countries that the first inventor to file a patent application is, as a matter of law, the “first” inventor. In view of the high level of the written description required in US patent applications, foreign applicants had what was perceived to be an unfair advantage, and the PPA was enacted to give a shorter, easier, quicker way to file a patent application and obtain a filing date. There are advantages and risks in using provisional patent applications, particularly in regard to foreign rights and adequacy of disclosure. If one does not fully understand both provisional patent applications and utility patent applications (since the PPA will be the basis for a UPA), it is best to consult a patent attorney before filing a PPA.

Disclosure Document
A patent application or provisional patent application is not to be confused with the mere filing of disclosure documents in the Patent and Trademark Office, a practice instituted several years ago which has led to some confusion. Under that practice, the Office merely acts as a record keeper with respect to a “Disclosure Document”, taking no further action. Such documents are an extremely poor choice for an inventor under nearly all conceivable circumstances when the alternative of a Provisional Patent Application is available for the same disclosure.

Information on this page was supplied with permission of Bruce E. Burdick.


Patents | Step 4