What Goes Into a Patent Application?
Many people are under the impression that drafting a patent application is just a matter of filling out forms, like any type of government application, and perhaps submitting a picture, as you do when you’re applying for a passport.
Nothing could be further from the truth. In fact, preparing a patent application is a complex legal process. The United States Supreme Court has even said that drafting a patent application is the most complicated legal writing in the profession.
A patent application has three main parts: the written specification, the drawings, and the claims. This is true of any type of patent applications, whether it’s for a utility application, a design application, or even (in those rare instances) a plant patent application.
The Written Specification
The written specification contains five sections. First is the background, which usually is a brief description of the problem that the invention seeks to solve. Second is a brief summary of different aspects of the application—sort of the introduction to what’s going to be elaborated on. Third is a brief description of the drawings, since the drawings do not have any words on them, only numbers. Fourth is the abstract, which summarizes the invention in 150 words or less. Finally, the most substantive and lengthy section is the detailed written description. That section goes into great detail about the structure of the invention, how it works, all the different ways that it can be structured, and all the different ways it can work. Generally speaking, this section is anywhere from 10 to 100 typewritten pages.
The drawings must be in black and white. They have to show all the important aspects of the invention, and in the case of a utility patent, they must have reference numbers that are used in the description to point out each of the different important elements of the invention. Because the rules for patent drawings are very specific, patent drawings are generally done by specialists whose main job is to prepare patent application drawings.
The specification and the drawings contain all the information that is needed for the claims. The claims section is the most important section of a patent application and the hardest for lay people and non-patent attorneys to understand. The claims are so important, because they define the boundaries of your invention. The legal term is the “metes and bounds” (the same term that’s used in documents for the transfer of real property). These describe what the inventor is claiming as his invention. The trick is that everything that’s in the claims has to be described in detail in the written description and shown in the drawings. If you don’t have anything in those two sections and you claim it, you’ll be rejected, because you lack what’s called an antecedent basis. These three sections have to be carefully crafted together so that the claims have something to stand on when the examiner is looking at them.
The Oath (or Declaration) and the Information Data Sheet
Two other documents must be submitted, either along with the rest of the application or within two months, in order for the patent office to consider the application complete. The first is an oath or declaration by all the inventors stating that they are the true inventors. The oath or declaration is equivalent to raising your right hand and putting your hand on the Bible when you’re sworn in in court. Often, people say, “Oh, I want to put my spouse on as a co-inventor, because I want them to own part of it.” You can’t do that: only the person who came up with all the ideas that are expressed in the claim can be listed as an inventor.
The second is the information data sheet. In this document, the attorney and the applicant must report all of their findings from their research on other patents and other products that are similar to their invention. All relevant patents or products must be listed for the patent examiner. Deliberately leaving anything out could be a basis for invalidating your patent down the line on the ground that the application was fraudulent. The burden is not just on the inventor, but on the attorney and anybody who worked on the application (such as a paralegal).
There are many forms that have to be filled out that the patent attorney generally takes care of that the applicant never sees until the application is ready to be filed, such as the Application Data Sheet that provides information about the inventor and the owner of the application, such as an employer and whether the application claims to be a child of an older application. The power of attorney allows the attorney to speak directly to the patent office. There are forms for inventors with special statuses, such as micro-entities or inventors over 65 years old. Any foreign patents or literature that’s not in patents (such as a relevant website) has to be submitted as well. These are just a few of the many additional documents that may be required. It’s not unusual for a filing to consist of 20 to 30 documents.
If you have any questions or comments about what goes into a patent application, please contact me today.
Patricia P. Werschulz
Werschulz Patent Law, LLC
23 North Avenue East
Cranford, NJ 07016