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 and the patent application requirements.
Utility Patent Application Requirements
The patent application requirements for a utility patent are discussed herein. 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. A design patent consists primarily of a series of drawings.
Specification and Drawings
A patent specification is the written and detailed text describing the invention. Drawings are frequently part of the specification. A “Brief Summary of Drawings” is one discrete section of the typical specification. The specification contains the major quantity of text of the application. The specification may contain over 100 paragraphs.
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).
- Detailed description of invention, i.e., how the invention works, what is it made from, and what does the invention accomplish. The description must be sufficient to enable a person skilled in the technology to use or make the invention “without undue experimentation.
- Identify each element listed in the claims.
The specification, drawings and abstract cannot be supplemented with new or additional matter after the application is filed.
The application must also include an Abstract. An abstract is to be limited to 150 words but also describe the disclosure sufficiently that a reader will be able to make a judgment whether to review the entire application. Some practitioners utilize the text of at least one independent claim as an outline for the abstract.
The claims of the application are perhaps the most important part of the application. Simply stated, the claims describe the scope of the invention. The claims are sometimes characterized as the “property lines” of the invention. The claims define the invention for determining whether a third party is infringing the allowed and issued patent.
Each element of the claims must be contained or explained in the specification. For an invention pertaining to an apparatus or tool, each structural element referenced in the claim must be illustrated in a drawing incorporated into the specification text.
Each claim is written as a single sentence ending with a period (.). The claim elements are separated by semicolons (;). Each claim begins with language such as “a method comprising” or “an apparatus comprising”. Longer preambles describing the method or apparatus may be employed.
Claims should utilize “comprising” or “including” rather than “consisting”. Consisting is exclusive, meaning the claim only defines the specific named elements or steps of the invention. Comprising is inclusive, meaning the claim includes the named elements or steps, plus additional other unspecified elements/method steps.
The claims are the subject of most of the interaction between the patent examiner and the applicant. An applicant has the right to amend the claims at any time prior to the examiner’s first office action on the merits of the application. A Restriction Requirement issued by the examiner is not an action on the merits, thus the applicant can amend or add additional claims to the elected group of claims. (See my article on Restriction Requirements.)
After the first office action, the claims may only be amended with the concurrence of the examiner. However the examiner will typically concur with the amendment if the amendment is moving the claim closer to an allowable status.
Elements of the Application
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;
- Application Data Sheet identifying the inventor, applicant and relationship of the application to any other pending application and issued patents.
- Specification, including any drawings;
- Application Filing Fee (currently $750.00 for an application filed by a small entity containing no more than 20 claims including 3 independent claims).
There are DIY manuals encouraging an inventor to file and prosecute his/her own application for patent pertaining to his/her invention. I do not, however, encourage this. The importance and drafting complexity of the claims are the major reasons that a knowledgeable patent attorney should be utilized. That said, I do encourage filing your own provisional application in contrast to doing nothing. I have provided a copy of my recent presentation outlining DIY filing of provisional applications for patent. Click here.
The text of the final patent, which is a grant of rights from the Federal Government, is printed verbatim from the text of specification, drawings and claims contained in the approved patent application (as amended and revised through the “give and take” of patent prosecution process).
© David McEwing, 2019