Understanding Patent Applications

From the Nolo eCommerce Center

What’s involved in drafting and filing a patent application? Here’s an introduction to the steps you need to take.

You’re confident that your invention has commercial potential. You’ve done a thorough patent search, and you can show that your invention is significantly different from earlier developments in its field. Now you have to convince the Patent & Trademark Office to grant you a patent.

Each patent application filed with the U.S. Patent and Trademark Office (PTO) goes through a rigorous examination process. The application is assigned to a “patent examiner” who inspects it to make sure that:

  • the invention meets the requirements for patentability, and
  • the application itself follows the required PTO format and language.

You and the examiner will exchange letters or phone calls until you reach an agreement about which parts of your invention the patent will cover, if any. This process typically takes between one and three years.

Don’t be discouraged by the examiner’s rigorous scrutiny of your application. Virtually no patent application, even if filed by a top-notch patent attorney, gets approved on the first go round. To reduce the number of problems, however, you need to carefully prepare your application, dotting your i’s and crossing those t’s.

The Parts of a Patent Application

There are two major parts to a patent application: the specification and the drawings. The specification describes the invention in writing. It must be clear and precise enough to allow any person skilled in the field to make and use the invention. Your specification must include:

Title of the invention. Your title should be brief, but also technically accurate and descriptive.

Background of the invention. You must include the field or subject matter of the invention and a description of all relevant prior inventions. Here’s where thorough research pays off. When you refer to earlier inventions, point out specific problems that your invention solves.

Brief summary of the invention. This is an overview of what you claim your invention can do. Summarize its advantages. Show just how your invention solves the problems you described in the background section.

Detailed description of the invention. Provide a thorough description of the structure and operation of the invention. It must be complete enough that person of ordinary skill in the field could follow it to make and use the invention.

Patent claim or claims. These are detailed statements of exactly what your invention covers. Because the scope of your patent rights are based on what you declare in the claims, they are the most important section of the application.

You will also need to include drawings with your application, if they are necessary for showing how the invention works. Your drawings must illustrate every aspect of the invention specified in the claims. The PTO has strict requirements for both claims and drawings, so be sure to study other patents in your field to become familiar with the format of these sections.

Don’t Forget Your Receipt!

As you can see, filing a patent application means attending to many details. After you’ve done all that work, you want to make sure that your documents arrive safely at the PTO. Be sure to make one or two copies of every single page you send.

To obtain a receipt, attach a stamped self-addressed postcard to the first page of the documents. The postcard should identify in detail every document you submit. List how many pages and how many items each document type includes – just saying “drawings” or “claims” won’t help if an item is missing later on. Include the application filing date, the title of the invention and the inventor’s name.

The PTO will stamp the postcard with a receipt date and an application number. Carefully check the returned card to make sure the PTO received all the documents you sent.

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