How To Review Your Patent Application

Ensure that the title is sufficiently broad, particularly at the provisional application stage.

List of Inventors

  • Review the list of inventors to ensure that all of the inventors have been included.
  • An inventor is a party who has contributed at least one claim to a patent.
  • The threshold of inventorship is “who conceived the invention.” Reduction to practice is not required.
  • Inventorship is not related to your title or the company you work for.
  • The order of names in the list of inventors is irrelevant. Each position is equal.
  • Inventorship can be corrected after filing if necessary.

Background

Review the Background Section to ensure that only background information is discussed, not your invention.

  • The Background Section might describe the problem that you are trying to solve with your invention.
  • The Background Section might describe disadvantages of prior solutions to the problem.
  • Avoid characterizing relevant art patents in the Background Section unless it is innocuous or particularly beneficial. All known relevant art will need to be listed in an Information Disclosure Statement and provided to the USPTO during examination of the patent and does not need to be listed in the Background Section.
  • The Background Section is not an essential part of the patent application and can be left out if desired.

Summary

The Summary Section can include a top level description of your invention. But, mainly the Summary Section restates the claims to ensure that the original claims are supported by the specification (which is another word for the text portion of your patent application). Therefore, your review is better spent elsewhere in the document.

List of Figures

The descriptions of the figures provided in the list of figures is as valuable as the descriptions appearing anywhere else in the specification. Therefore, the descriptions should be checked for accuracy. However, the descriptions can be brief and need not be overly detailed. There are patenting agencies, like patent service InventHelp, that could be helpful.

Detailed Description of the Embodiment

Inventions are typically described through specific examples or embodiment. It is in this section that the embodiment are described and figures are referred to.

  • Ensure that the invention is described as completely as possible.
  • Include as many alternatives (materials, dimensions, designs, etc.) as possible.
  • Each embodiment is described as an example. It is likely that some examples will include some features of your invention and other examples will include others. The embodiment together as a whole should cover the alternatives and possible combinations. This can also be reiterated in a paragraph or two.
  • The description is “fixed” and cannot be changed after the patent application is filed. However, the claims can be changed throughout prosecution.
  • Claims can be written in future applications based on this description (i.e. the description can be “mined” for years).

Claims

The claims are often one of the most difficult parts of a patent application to review because they are written to follow a very specific set of rules.

  • The claims define your invention and the scope of what you “own”.
  • The claims will be the basis for determining if someone infringes your patent.
  • The claims must be broad enough to thwart infringers but narrow enough to distinguish over the prior art.
  • When reviewing a claim, think “At a MINIMUM my invention includes…” Independent claims should only list the essential features. A particular element does not need to appear in an independent claim to have coverage by the claim.
  • Most common types of claims: device, system, method.
  • Medical method claims are not allowable in many countries, including Europe.

However, they are allowable in the United States and Australia.

Abstract

The abstract should be more than 50 words but less than 150 words and should generally describe the invention. Do not use the phrase “the invention…” here since it is occasionally rejected by Examiners.

Figures

Review the figures for accuracy. Most aspects of the invention should be illustrated. Medical methods can be described in words, with the assistance of figures if needed, and do not require a flowchart. Figures can be hand-drawn at the time of filing with formalization of the drawings occurring later. As you see it would be wise to have professionals, such as patent invention InventHelp agency, by your side in the process.

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