The Patent Application

There are three (3) types of patents. The most common and most valuable is a utility patent. There are also design patents and plant patents. This article discusses utility patents.

Unlike Trademark and Copyright applications, a utility patent application contains a large quantity of written text, often supplemented with drawings, that are specific to the particular invention. In contrast, trademark and copyright applications consist primarily of multi-page forms.

The written and detailed text of the patent application is called the patent specification. The text of the final patent, which is a grant of rights from the Federal Government, is printed verbatim from the text of specification contained in the approved patent application (as amended and revised through the “give and take” of patent prosecution process).

There are, of course, numerous statutorily mandated forms that must be submitted as part of the patent application. However, the real substance of the application is contained in the specification, including the drawings, and the claims.

The patent application requires the following:

Oath or Declaration of Inventors;

Information Disclosure Statement;

Specification;

Claims;

Application Filing Fee (currently $435 for an application filed by a small entity containing no more than 20 claims and 3 independent claims).

The specification describing the invention should contain the following elements:
Background of invention, i.e., description or explanation of the state of prior existing technology (but be careful about making admissions of prior art).

Summary of inventory, i.e., description of the purpose or accomplishment of the invention (preferred).

The specification must contain the following elements:

Drawings if required to illustrate the invention.

Detailed description of invention, i.e., how the invention works, what is it made from, and what does the invention accomplish.

At least one claim “defining” the invention.

Abstract of the invention, i.e., a one or two paragraph summary of invention that is placed on the first page of the final issued patent.

As discussed elsewhere in this web site, the patent (and hence the application submitted on behalf of the owner of the invention) must contain enough detail to allow a person knowledgeable in the technology to duplicate or reproduce the invention. The patent must also disclose the best or preferred method or mode of practicing the invention.

In addition to the Inventor’s Declaration, the Information Disclosure Statement, and Specification, the patent application must contain at least one claim. Patent claims are written text, utilizing certain prescribed rules of punctuation and style, that precisely define the invention. Although multiple claims are not required, utility patents usually and preferably contain multiple claims, separately describing the invention in broad or narrow scope. Most applications contain 20 total claims and no more than 3 independent claims. The USPTO fee structure discourages filing more claims.

The Oath or Declaration of Inventors is a written statement made by inventor under the penalty of perjury. In the Declaration, the inventor(s) affirm that the listed inventor(s) are the first and true inventor(s), the inventor(s) have disclosed in the application all relevant information needed to examine the application, and that the attached specification and claims accurately describe the invention. Similarly, the Invention Disclosure Statement should be filed with the application (or within 3 months) listing all known prior art references to the invention and providing a copy of the written references. It is not necessary to provide copies, however, of US patents or published patent applications.

October 2, 2008