For many start-up companies, the prospect of filing a patent application can be daunting. Even when a company has a potentially patentable invention, the company may be unsure about what materials it should compile before seeking out patent counsel. However, one way to make something less daunting is to divide it into smaller parts. For potential applicants preparing to file a patent application, the process can be broken up into three aspects:
First, potential applicants will want to have a preliminary conversation with patent counsel to ascertain whether the invention meets the basic legal requirements for patentability, including novelty, non-obviousness, utility, and eligibility in the relevant jurisdiction(s).
Second, potential applicants will want to collect materials describing their invention, including technical details, descriptions, figures, and exemplary uses, that will help guide patent counsel in drafting the application.
Third, potential applicants will need to provide information to assist patent counsel in preparing the necessary paperwork for the application, including the names, citizenship, and address of the inventors, the owner of the patent application, and information regarding where the invention was developed.
- Ascertaining Patentability
An early, preliminary conversation with patent counsel about whether a potential applicant’s invention meets the basic legal requirements for patentability, including novelty, non-obviousness, utility, and eligibility in the relevant jurisdiction(s) (e.g., in the US and/or other jurisdictions) can be invaluable. Essentially, an invention is novel when it not known to the public—e.g., it has not previously been patented, described in a printed publication, or put into public use or made available for sale before the filing date of the patent application. Additionally, an invention is non-obvious if the invention and what came before the invention differ enough such that the invention would not have been obvious to a skilled practitioner (whom is often referred to as “a person having ordinary skill in the art”). Utility requires that the invention must have a useful purpose (e.g., does a new chemical compound have a practical or specific utility?). Lastly, inventions are eligible for patenting if they constitute a process, machine, article of manufacture, or composition of matter, and does not fall into an exception, namely, an abstract idea, law of nature, or natural phenomenon. On the issue of novelty and non-obviousness, some potential applicants may wish to conduct a search to see if anyone has already patented, published, made publicly available, or sold something identical to or similar to their invention. Consulting with patent counsel early in the application process can help potential applicants explore the viability and utility of such searches.
A preliminary disclosure should also discuss any prior disclosures the potential applicant may have made. In the United States, a patent application must be filed within one year of any sales, offers for sale, or public disclosures of the invention by the inventor. In other jurisdictions, the application must be filed before any disclosure, with no one-year grace period given. Failure to make these disclosures can jeopardize a potential applicant’s ability to obtain and/or enforce a patent. Therefore, before filing a patent application, potential applicants should disclose to their patent counsel any actual or potential disclosures regarding the invention outside the company, such as sales, proposals, publication, or product launches relating to the invention, include anticipated disclosures that will soon be given to persons outside the company. Potential applicants should also preliminarily disclose any commercial use, production, or products or services offered for sale that relate to the invention.
- Preparing the Application
If the invention meets the basic requirements for patentability, the next step is to provide a detailed disclosure to assist patent counsel in preparing the application. The detailed disclosure may also help inform a discussion as to whether to file a provisional application or a non-provisional application. A provisional application establishes an early priority date for an invention, and holds the place for the invention up until one year until the inventor is ready to file for the non-provisional application.
Ideally, a detailed disclosure describes the specific structures, procedures, and/or materials used to accomplish the benefits or results of the invention. After reading a detailed disclosure, it should be clear how the invention differs (either structurally or operationally) from what has been done before. If a potential applicant has already prepared any documentation (e.g., engineering drawings, design review documents, user or installation manuals, circuit diagrams, etc.) then attaching those materials to a detailed disclosure can be invaluable.
Dividing the detailed disclosure into the following sections may aid in this process:
- Technical Area and Any Keywords
This section should explain the context of the invention and the technical area to which the invention relates. It may also help to explain any keywords or technical jargon at the beginning of the disclosure.
In the Background section, the potential applicant should describe the state of the art and existing technology and products, as understood by the potential applicant. The potential applicant should also explain various problems with the existing technology. This helps to tee up the invention’s proposed solution. It also assists in telling the invention’s “story,” which can greatly improve a reader’s understanding. Note that your patent counsel may instruct you to only provide background information that is already in your possession, rather than perform an independent search for other disclosures and products that may be related to your invention.
- Brief Summary of the Proposed Solution
This is where the potential applicant briefly states how and why their invention is a solution to the problems outlined in the Background section. The Brief Summary should not delve too deeply into the invention’s technical details, which will come later in the disclosure.
- Advantages of the Proposed Solution
This section gives the potential applicant a chance to show why their invention is superior to the state of the art outlined in the Background section. Again, as with the Brief Summary, the Advantages section does not require the potential applicant to go into great detail on every advantage and how that advantage is achieved.
- Detailed Description and Examples of the Proposed Solution, Including Figures and Flow Diagrams
In this section, the potential applicant should be as detailed as possible in explaining their invention. The Detailed Description should provide patent counsel with a robust understanding of the invention. The more clearly a potential applicant explains their invention to patent counsel, the more effectively patent counsel can draft an application. Examples of the invention are often crucial for explaining the invention, both to patent counsel and, eventually, to the Patent Office.
Figures and/or flow diagrams are crucial for explaining the invention. Often, a Detailed Description section can effectively explain the invention by walking a reader through these figures and/or flow diagrams. It should be noted that not all potential applicants have fully-featured figures depicting their invention, but this should not discourage a potential applicant. In these instances, photographs and/or videos of the invention can be useful to help explain the invention to patent counsel, who can later work with a draftsman in preparing professional patent drawings.
- Any Abbreviations
Here, the potential applicant should explain the meaning of any abbreviations that they may have used throughout the disclosure.
- Any References
A potential applicant can use this section to disclose any relied-upon references. References may include articles from academic journals and publications, or technical papers.
- Application Formalities
Failure to follow the appropriate formalities when filing a patent application may jeopardize a patent application or create issues down the road if the patent is enforced. Potential applicants need to provide names, citizenship, and addresses of the inventors, along with the owner of the patent application and any information regarding where the invention was developed. The citizenship of the inventors and information regarding where the invention was developed will assist patent counsel in ascertaining whether a foreign filing license is required before seeking patent protection in one or more jurisdictions. Additionally, patent counsel will be able to prepare the paperwork to ensure that any necessary rights in the patent are transferred to the appropriate owners, such as from the employees named as inventors to the company. It is critical to provide accurate information because inaccurate information may jeopardize the patent application during prosecution or enforcement of the patent once it issues.
Although the USPTO provides a detailed and comprehensive guide that outlines all of the requirements for filing a patent application, potential applicants may nevertheless be deterred by the sheer amount of information required. However, as this article hopefully demonstrates, many inventors already have many of the materials necessary for a patent professional to prepare an application, and most of the work is converting those raw materials into a viable patent application.