UTILITY PATENT APPLICATION

What is a Utility Patent Application Comprised Of?

A utility patent application is typically comprised of a few main parts, including:

• • Invention Title – The title of the invention can be useful for allowing the public to quickly identify the subject matter of the invention.
  • Background – The background discusses the prior art and particularly identifies the problems with the prior art.  While every case varies, many times it is encouraged to discuss the prior inventions (also known as “prior art”) without conceding a particular point.  It is best practice to describe what the prior art is lacking, instead of describing what the prior art does.
  • Specification – The specification is the written description of the invention.  The specification must describe the invention in enough detail to allow some imaginary person of ordinary skill in the art to make and use the invention without undue experimentation.  The specification must be drafted in clear, full, concise, and exact terms.  Additionally, it is required that the inventor describe the best mode contemplated by the inventor at the time the invention is filed.
  • Claims – Claims provide the legal protection that will be interpreted to determine whether the patent is being infringed.  The claims must particularly point out and distinctly claim the subject matter which the inventor regards as his or her invention.  Claims may be independent or dependent.  Dependent claims rely upon independent claims.  That means that the dependent claim should be read as including both the dependent claim and the claims for which the dependent claims relies upon.
  • Abstract – Similar to the title, the abstract is another tool that allows the public to quickly discern the nature of the invention quickly.
  • Drawings – Patent drawings are almost always required to demonstrate that the invention is more than just an idea.  The drawings include reference designators that refer back to the patent specification.  This allows a person of ordinary skill in the art to understand what is being described.  A patent is describing something new that has never existed.  In many cases, it is necessary to provide pictures for visual purposes.

Provisional Patent

A provisional patent application is an application that acts as a one year placeholder.  Provisional applications do not include all of the formal requirements of a nonprovisional patent application. However, many lay persons commonly misunderstand what is required.  Provisional patents that are not properly described may not provide any viable protection.  But worse, it is possible that the inventor could lose all rights to important features of the invention.  For this reason, it is essential to  hire a skilled patent attorney to draft your provisional patent application.

At the conclusion of the one year anniversary of the provisional filing date, a nonprovisional patent application must be filed.  If a nonprovisional patent application is not filed, the provisional patent goes abandoned.  In some cases, this will preclude re-filing based on the information found in the abandoned patent application.

Nonprovisional Patent

When most individuals think of nonprovisional patents and applications, they think of a single patent or application.  However, many inventors file a plurality of patents over time.  As the inventor improves upon the patent, new patents are filed to build a “picket fence” of patents.  New patents can be filed as continuations and continuation-in-parts.  Which means that the earlier patent application is filed with the same specification and new patent claims, or additional information is added to the specification and again a new set of patent claims.  When a continuation-in-part is filed, the application may include multiple filing dates.  This may later effect whether the claims will stand up to prior art during litigation.  While this process can be complicated, it is important to keep in mind that it is common practice to file for multiple patents that stem from one another.