Prepare for these legal hurdles when filing a patent application

On Behalf of | Oct 15, 2024 | Patents |

Filing a patent application is a complex process that requires a clear understanding of both the invention and the patent law. No less than the U.S. Supreme Court has observed that a patent application is the most complex legal document to draft.

The process is laden with land mines. For example, you have only one year from the date you first publish, publicly use, or offer your invention for sale to apply for a patent. If you miss that deadline, your patent rights are forever lost.

Meeting patent eligibility requirements

Not all inventions qualify for patent protection. To be eligible, an invention must be novel, useful and have been nonobvious to a person having ordinary skill in the art. Novelty and usefulness are relatively straightforward, but obviousness is one of the most difficult issues in all of law to assess.

And, it is not easy to invent something that is novel and nonobvious. There are more than 250 million prior art patents in the database the Examiner in the Patent Office will search to assess patentability of your invention.

Drafting clear and detailed claims

Patent claims define the scope of protection for an invention. Drafting claims requires precision, as vague or overly broad claims may lead to rejection. In the opinion of Professor Simpson, who taught patent law at SUNY at Buffalo Law School for fifteen years, drafting patent claims is the single most difficult thing to do in patent law. It is a task best left to an experienced registered patent attorney. It is almost impossible for an inventor or an amateur to draft proper patent claims.

The patent application must also include a complete description of the invention. How complete? So complete that a person with skill in the art can both make and use the invention. You can’t have your cake and eat it too. You can’t hide the details of how to make your invention and expect the Patent Office to grant the patent. When your patent expires after twenty years, others with skill in the art should be able to read your patent and make and use the patented invention.

Overcoming prior art

“Prior art” is any previous publication or public disclosure that anticipates or renders your claimed invention obvious. It is always a good idea to ask your patent attorney to hire a professional searcher to search the huge database of prior art before filing a patent application. There are three reasons to do a search first. The first reason is obviously to assess patentability – to find out if your invention is novel and was nonobvious. The second reason is to make sure no one else already has an active patent that you might be infringing if you make, use or sell your invention. And the third reason is that a thorough search will almost always help your patent attorney to draft a better patent application. Always hire a professional searcher to conduct the search. Searching the internet on your own to assess patentability is almost always a bad idea.

Responding to patent office actions

Even with thorough preparation, the Patent Office Examiner will almost certainly reject your claims. This is because your patent attorney will draft claims that are as broad in scope as possible, and will amend them “just enough” to define an invention that is both novel and was nonobvious in view of the prior art. An experienced patent attorney will claim the “universe” and settle for the “solar system”. In other words, a good patent attorney will claim a little more protection than the inventor is entitled to and then throttle back the claims and narrow the claims through amendment to obtain the protection the inventor is entitled to.

Professor Simpson advises that, “it takes three to four years to ‘make’ a patent attorney!” Trust your important patent needs to an experienced professional. Our law firm files more than 1000 patent applications a year, and we treat each one as if it were our own.