The patent process may appear to be a dark hole through which time and money disappear. I am attempting to demystify patent applications. I write frequent posts urging that that IP be protected through the filing of provisional applications for patent. But what is an application for patent? What does it consist of? I will try to answer some of these basic questions today.
There is no form to be filled out to apply for a patent. The application process starts from a blank page. The application requires drafting a specification, which describes in detail what comprises the invention. The specification must contain sufficient detail to enable a person skilled in the technology to understand the invention allow the skilled person to replicate it “without undue experimentation”. Stated differently, you must disclose the secret sauce. You can’t hold back on disclosing a key component.
Again, the specification is written in the applicant’s own words. It often should be supplemented with drawings showing the key components of the device or the key step in the process or method. For computer software, the drawings may consist of logic steps explaining what functions the software is performing. (You do not include actual computer code in the application. As you probably know, software accomplishing the same task can be written in various languages. Therefore, the specific computer code is not the invention subject of the application.)
The text of the specification should reference the drawings and integrate an understanding in text form of what is being illustrated in each drawing. For example the text of the specification will explain how the illustrated components interact to perform the invention.
As a basic matter, the specification begins with a title. The title is NOT the trade name you intend to market the product or service/method performed by your in invention. The title should be a reasonable statement of the what the is the invention. For example “an apparatus for removing the peel of an apple”. Similarly, “method for removing apple peels”.
The USPTO prefers that the application next contain a brief statement of the field of use of the invention. In other words, state the use or purpose of the invention. Also you should provide a BRIEF description of the related art. What currently exists, if anything, that performs what your invention is accomplishing? Note you do not need to perform a search of what currently exists, the patent examiner will perform his/her own search of the prior art. I would keep this brief to avoid making unintended admissions of the prior art making your invention obvious.
Next, the USPTO preferred format contains a brief summary of the invention. This expands on the brief statement of the field of use. Next is a brief summary of the drawings (if any). Again, this can be accomplished by a simple sentence describing the subject matter of each drawing. For example, “Figure 1 illustrates a top view of the apple peeler showing the rotating blades.”
Next is the “detailed description of the invention”. This is the heart of the application. In this section the applicant must provide the enabling detail. You do not want to be brief but rather provide detail, including all variations or “embodiments” of the invention of which you can think. Do not limit the description to the most preferred variation. It can be very valuable later on during prosecution of the application with the examiner to have stated and described alternate methods or configurations.
Within the detailed description of invention, the text should integrate and explain the drawings. Different components illustrated in the drawing can be numbered. These numbers should be repeated in the text of the description and named. The purpose or function of each component should be explained and how the various components interrelate also be explained. For example, “Figure 1 shows a rotating blade 5 that is attached to a shaft 6 that rotates in response to a hand crank 7 and handle 8 assembly.”
In addition to the specification and drawings, the application must have an abstract (or summary) of the invention. This is a simple paragraph not exceeding 150 words.
In addition to the abstract, the application must have at least one claim. The claim is the most important part of the application. Each claim defines the boundary line of the invention. The wording of the claim determines whether your patent is infringed. The claim wording is at the heart of the “pushing and shoving” with the USPTO examiner. You really need a trained patent attorney to prepare the claims of your application. Note that a claim is NOT required for a provisional application for patent.
A simplified example of a patent claim could be:
“An apple peeler comprising:
a handle attached to a rotating shaft;
the rotating shaft containing one or more blades adjustably dimensioned to conform with and engage an outer diameter of an apple; and
gears to transform rotation of the handle to rotate the rotating shaft.”
The application should be accompanied by an Application Data Sheet. This simply requires disclosing the name and address of the inventor, the name of the applicant if different than the inventor, any assignee of the invention, and miscellaneous information. Also a simple one page form entitled “Oath or Declaration of Inventor” must be filed with the application. The application and accompanying papers, along with the required filing fee, can be mailed to the USPTO at the address listed at www.uspto.gov.
The drafting of a patent application is not an insurmountable task. I have previously suggested that an individual inventor may want to file his/her own provisional application. This should be the default position in lieu of hiring a trained patent attorney. (If you have a development, I urge filing a provisional application, even DIY, in contrast to doing nothing. See my previous posts “Provisional Applications” and “DIY Provisional Applications” ) If filing a non-provisional application, then I do strongly recommend engaging a patent professional.
The above is not intended to be a “how to” guide, but rather merely a demonstration of the contents of a patent application. Hopefully it removes some of the mystery.
© David McEwing, 2021