FAQ's - Patent Applications
 
 

 

Please note that this firm does not file patent applications. We can refer you to Patent counsel for the filing of patents in the United States and in foreign countries.

 
  What are the requirements of a valid patent application?  
   
  • Disclosure - The patent application must be sufficiently complete, thorough and precise as to enable those skilled in the art to practice the invention based upon what is disclosed in the application itself, without undue experimentation. The claims must be sufficiently definite and precise to give public notice as to what constitutes infringement. The application must also identify the best mode of practicing the invention known to the inventor when the application is filed. Finally, the disclosure must be complete in detail.
  • Candor - Patent applicants are required to provide information about the field of art, possible anticipating patents, prior public disclosure (by both the applicant and third parties), and generally to provide information to the patent office that would be relevant in consideration of the application. In addition to fraud upon the patent office, merely not disclosing relevant information to the patent office can result in invalidity of the patent under the "inequitable conduct doctrine."
  • Technical Requirements - These include prohibitions against double patenting, and that only the inventor can file an application. For specifics on the forms and requirements, visit the United States Patent Office.
 
  What is the patent application process?  
   
  • Once information is collected, it is then analyzed and written into the correct format including the drafting of claims.
  • This is then reviewed by you and verified for accuracy and inclusiveness.
  • Once complete, the application is signed and then filed along with appropriate fees.
  • The application is examined by the Patent Office. Office actions are then issued which require responses ranging from one month to six months, depending upon the nature of what is raised. Assuming that the application is placed into a condition for grant, the patent is granted.
 
  Before filing, what should be done?  
    Documentation is vital to the invention process. Legally it is required for two reasons, and they are: 1) proving that you are the inventor; and, 2) that you created the invention first. Moreover, it is generally beneficial to record your findings throughout the invention process since it will enable you to better engineer the invention over time. It is through the proper use of "Lab Notebook" that an inventor documents his or her discoveries. The following procedures are recommended:  
   

1) Lab Notebooks - Anyone who may be creating inventions should have a Lab Notebook to record their inventions. These are bound books, with pre-numbered consecutive pages, where the pages can not be removed.

2) Entering technical information - Written text, sketches and diagrams should be done in ink to prevent erasure or alteration. Complete the entire page and if you must leave blank space for starting a new page, cross the remaining section of the page out to identify that it ends as it does. If you make a mistake in entering information, cross it out and correct it. Do not erase it. All entries are to be made directly into the book. All entries are to be dated the date they were entered.

3) Table of Contents - The first page of the Lab Notebook should have a Table of Contents listing the titles of each of the inventions and their page numbers in the notebook.

4) Initial Entry - When initially recording an invention, the following items are to be included and explained as indicated:"

  • Title - What the invention is to be called
  • Date - Date of entering information
  • Purpose - State the purpose of the invention and what it is intended to serve
  • Description - A functional and structural description of the invention
  • Sketch - An informal sketch of the Invention identifying the important parts of the discovery
  • Ramifications - Identify all of the ramifications of the invention that you have conceptualized and the possible means and uses of the invention
  • New Features - Identify the novel features of the invention
  • Explanation of Prior Art - Explain related or preexisting prior art related to the invention
  • Advantages - Explain the advantages of the invention over the prior art
  • Additional Information - Any additional information that can help identify, quantify, explain or other wise assist in the documenting of the invention
  • Signature and Witness Block (Explanation is below)

5) Subsequent Entry - The invention process is a cumulative one. The invention and all of its components are not ordinarily figured out at the outset. Therefore, it is likely that during the development of the invention into a product, that further discoveries will be made, and these must be recorded. The following items are to be included and explained as indicated:

  • Title - What the invention is to be called as identified earlier along with a reference to the page number of the earlier entry
  • Date - Date of entering information
  • Description - Usually a more elaborate technical description than originally conceived
  • Sketches - Updated sketches identifying the salient parts of the invention
  • Samples - Samples or photographs of the invention prototype
  • Additional Ramifications
  • Test Description - Descriptions of any tests undertaken to reduce the invention to practice including problems associated with the development of the prototype
  • Test Results - Detailed description of the results of any test to develop the product
  • Additional Information - Any additional information that can help identify, quantify, explain or other wise assist in the documenting of the invention
  • Conclusion
  • Signature and Witness Block (Explanation is below)

6) Be complete! - More is better than less. The greater the detail of the explanation the better the documentation. The idea here is to put enough down on paper so that any one familiar in the "art" of making the type of product could re-create the invention without having to ask you any questions as to what you meant. Sometimes this will require very basic or detailed explanations, and other times it will simply require identifying the use of a particular piece of equipment and the setting of specific options or parameters in order to accomplish the designated task.

7) Other documentation - As you develop the invention, often additional documentation is created such as correspondence, purchase orders, product specification brochures, and the like. This documentation should be saved and identified in conjunction with the development of the invention and retained for possible later reference or use.

8) Signing and Witnessing - It is very important that the Lab Notebook be signed and witnessed. The proper form for doing so is as follows:

  INVENTOR: DATED:  
         
  ___________________________________________   ___________________________________  
       
  WITNESSED, READ AND UNDERSTOOD BY: DATED:  
         
  ___________________________________________   ___________________________________  
       
  ___________________________________________   ___________________________________  

The people that witness the Lab Notebook must read the entry, and understand what they have read prior to signing it that they have witnessed it. It is very important that this procedure be strictly adhered to.

9) Storing the Lab Notebook - The Lab Notebook should be stored in a safe location.

 
    We note that often people create their product and then think about whether or not it is patentable. As soon as possible, it is necessary to write up the information requested above and have each page witnessed in order to substantiate the invention process. Also, please note that if the invention is either i) disclosed to third parties without the benefit of a confidentiality and nondisclosure agreement; or ii) the product embodying the invention is displayed, shown or sold, that the one (1) year period commences where you must file the patent application. Applications filed after the one year "grace period" are voidable in any patent challenge. Finally, for most foreign countries, it is necessary to file the patent application prior to any disclosure to third parties, there being no one year "grace" period to file the patent application.  
Attorney Protection of Your Patents - FAQ's - Patent Applications 8