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Filing for a patent application is a process inventors must go through to obtain licensing that protects their inventions. But filing a patent is not as straightforward as it sounds. Many criteria need to be met, and certain documents need to be accounted for before you can file for a patent with the United States Patent and Trademark Organization (USPTO).
For instance, the success of your patent application with the USPTO can depend on your patent draft. It’s expected that before you proceed to file a patent application, you’ll have already searched and ruled out the existence of a prior invention. That guarantees your patent will be approved.
The thorough attention to detail required to draft a patent that’s free of loopholes is usually a daunting task for the layperson. In states like California, many enlist the help of a professional patent law firm San Diego has to offer to do the heavy lifting of drafting a patent.
This is necessary since there are a lot of requirements in applying for a patent. Some of these requirements include the following.
Specification
The specification segment of a patent contains the technical details of an invention. It should include enough detail so that any person in the same industry is able to make or use the invention.
The specifications of a patent should contain the following.
Title
The title is usually positioned at the top of the first page and must be brief but technically descriptive. It should describe exactly what the invention is about.
For instance, if your invention is a drug that freezes and regenerates dying cells, your title should state that rather than just being “Regenerative drug”. Also, articles like “the” and “an” should not start a title, and descriptive adjectives such as ‘improved’ should not be used at all.
Description
The description comes after the title. This is where expansive details of your invention should be included. All specific and non-specific information that you want known about your invention should be included in this section.
The descriptions should contain enough detail for a skilled person in the same industry to make or use the invention, should they follow the methods you used and an outline.
The description should also include background information and details of the invention itself, including the field of the invention and a description of relevant art.
When describing the field of invention, remember that this is supposed to be a brief statement under which the invention can be categorized. While this statement should not specifically state the invention’s classification (whether it falls under a utility, design, or plant patent), it should be paraphrased as an invention that fits into one of these groups.
The background section of your patent application should also explain why your invention is needed and the problem that it solves.
Additionally, an abridged introduction to prior art relevant to your invention should be included in your background. But this should be included with caution, as it can serve as the basis for your patent application to be rejected if it were established that prior art exists.
Claims
The claims are the most important part of the specification, coming after the description. This is where your claim to exclusive rights is emphasized. It captures the scope and legal boundaries of your invention.
A good patent lawyer states clearly and concisely what the invention involves and what legal rights should be enforceable when the patent is granted. However, in drafting the claims of an invention, you must be both broad and specific in the details of the legal protection you seek. This is important, because it will be referenced when other patent holders or disgruntled parties try to sue you for patent infringement.
In drafting claims, you define the technical features of your invention. It should define your invention specifically as novel, creating enough room to cover the protection needed when you commercialize your approved patent.
These concepts are captured in the two types of claims available: independent and dependent claims. The independent claim addresses the essential features of your invention, while the dependent claim is focused on non-essential features. While the former can stand alone, the latter cannot, as it is narrower.
When there is more than one claim (which is usually the case), they should be numbered. There is a 12-month grace period in which claims can be added to an application if they were not included at the time of filing.
Drawings
Patent drawings are another part of your patent application. Not all inventions require drawings. But if they were added, it might go a long way to clarify the purpose of your invention.
They serve to highlight elements of your invention. Also, drawings are a good addition if you want to solidify your claim to being the first originator of an invention when it is in dispute.
When the drawings you make yourself are not clear or are too ambiguous, you may want to consider getting an illustrator to define your drawings. It helps to include a few explanatory notes explaining the process that the drawings are meant to describe.
Abstract
Abstracts do not provide any extra meaning to the scope of an invention. They are summaries of the invention and are necessary for archives. They begin with a title, which is not necessarily expected to be detailed. The abstract doesn’t need to delve into details, as that should be covered in the general body of the application.
Third parties (reviewers who are not the principal examiners) who wish to learn if an application is worth considering usually go to the abstract first. This is where they can read concise technical summaries of every other element of a patent application.
Bottom line
The bulk of a patent application lies in its specification. It should do the work of “pitching” your invention as new and necessary to examiners.
Even though amendments can be made to a patent application, they will not be amendments to the technical details of your application. Hence, you must draft your application critically and include all essential details.
You may also like: Does It Make Sense to Hire a Patent Attorney?
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