Preparing and filing a patent application
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Preparing and filing a patent application
We file your patent application with a patent specification that describes your invention. The specification describes your invention in broad conceptual terms and also provides a detailed implementation of your invention. The specification also contains a set of claims in which we define the scope of the monopoly we are seeking with the patent, i.e. the product or process we wish to prevent others from copying.
There are a set of requirements for the specification we must meet, including clarity, sufficiency, support and unity of invention.
What is a patent application?
To obtain a patent for your invention, we have to file a patent application with the appropriate patent office. The patent application provides all the information the patent office requires to determine whether you should be granted a patent for your invention, and also the scope of monopoly your invention deserves.
The patent application is filed with forms that provide essential details such as the applicant’s name and address, as well as an indication of the inventors and how the applicant is entitled to own the rights to the invention. Some of these details are provided when we first file the patent application, other details can be filed later.
We have to pay official fees when filing a patent application, to cover the patent office’s work processing the application.
The patent application includes a patent specification we have prepared to describe your invention. The patent office uses this patent specification to determine whether your invention qualifies for patent protection and the scope of monopoly you can be awarded.
The patent application process frequently takes years from filing to the eventual grant of a patent. This process requires us to correspond with the patent office to agree upon a fair scope of monopoly, i.e. a definition of the invention that is as broad as possible, yet still novel and inventive over what was known to the public previously.
What is a patent specification?
A patent provides a monopoly to stop others from working your invention in exchange for telling the public about your invention and adding to our collective knowledge. The patent specification is the legal document we prepare to fulfil your obligation to disclose your invention publicly and also to set out the scope of the legal monopoly we are claiming.
In order to fulfil these purposes, the patent specification must cover several key criteria. We prepare a written description, usually accompanied by drawings, to provide the required disclosure of how your invention may be put into practice. We also prepare a set of “claims” that are used to define the scope of your monopoly.
The description
In the description, we describe your invention in sufficient detail to allow someone with knowledge of the field (including patent examiners) to understand your invention and what you have contributed to what was known to the public previously (the “state of the art” as exemplified by “prior art” documents). To that extent, the description of the patent specification typically includes a background section, a summary of the invention, and a detailed description.
In the background section, we describe what we know to be the closest prior art, and problems identified in the prior art.
In the summary of the invention section, we describe your invention in broad terms, so the content is usually very similar to the claims. The claims include what we believe to be the novel and inventive features of your invention. In the summary of the invention section we can describe advantages of these novel and inventive features over the prior art, such as how the invention addresses the problems identified in the prior art. The summary section is also where we can use our expertise to sell your invention and persuade the patent examiners that your invention is worthy of a patent.
The detailed description provides a narrower description of the invention. While the summary of the invention section describes your invention in broad conceptual terms, the detailed description gets its name because it is where we describe in detail how your invention may be implemented. These “embodiments” of your invention should contain all the detail needed to allow a skilled person (i.e. someone who is familiar with the technology) to reproduce the invention without requiring any inventive effort of their own and without undue experimentation.
Understandably, you will only want to give away the minimum of information regarding your invention. We use our expertise to prepare the detailed description with just enough information to meet the requirement to disclose your invention, but without divulging much more.
The claims
Despite appearing towards the end of a patent specification, the claims we draft are the most important section of the patent specification for you. The claims define the scope of the legal monopoly sought for the invention.
The claims we draft define the essential features of your invention that competitors cannot use. For example, where the claim is directed to a product, the claim sets out the features that a competitor cannot include in a rival product without infringing your patent. Where the claim is to a method, the claim sets out the steps that a competitor cannot perform without infringing your patent. The claims are essentially a check list of requirements to be ticked off when considering a potential infringement. Hence, a court will use the claims of the patent specification to determine if an act performed by a third party falls within the scope of the invention (and thus infringes the patent) or not.
We will typically include one or more independent claims, and a series of dependent claims. Each claim is limited to a single sentence, but there is no limit to how long that sentence can be. Line breaks and punctuation are often used to break up long claims into more readable sections.
The independent claims express your invention in the broadest way possible and hence define the broadest scope of your monopoly. Therefore, the independent claims should include only essential features and avoid including optional or preferable features. We consider, often in partnership with our client, what features a competitor may omit or may change to try and avoid infringing your patent, and then revise the claims we draft accordingly. Getting this exercise right can be fundamental to the commercial value of your patent.
Whilst the broadest claims possible are desirable from a commercial perspective, it should be kept in mind that a patent will only be granted if all the claims are novel and inventive. Hence, we tread a fine line when we draft the independent claims: we seek to maximise the scope of your claims while not making the independent claims so broad that they lack novelty or inventive step.
This latter part is particularly difficult as we are often not aware of all the prior art documents over which we must be novel and inventive. This is where the dependent claims become important. A dependent claim includes all of the features of the independent claim upon which it depends, plus one or more further features defined in that dependent claim. We draft the dependent claims to define what we initially see as useful, but not essential, features of the invention. However, if an independent claim is found to lack novelty or inventive step over prior art, we can overcome this by moving the features from a dependent claim into the independent claim if at least one of those features is novel and inventive. Hence, the dependent claims serve as a cascading sequence of fall-back positions we can consider when new prior art is found that indicates an independent claim not to be patentable (for example because the independent claim lacks novelty or inventive step, although the dependent claims can be used to amend around other issues such as lack of clarity, sufficiency, support and unity of invention).
The drawings
A patent specification often includes one or more drawings to aid a reader’s understanding of the invention, both in its broadest terms as well as in the detailed embodiments of the invention. Like in the detailed description, we try to minimise the amount of unnecessary information contained in the drawings so as not to give too much information to competitors.
While the drawings of a patent application may be helpful for understanding the invention, it should be remembered that the scope of invention should be clear from the claims alone. As such, the claims of the patent specification should be clearly understandable without reliance upon the drawings.
Pre-filing searches
When drafting the claims of a patent specification, it is helpful for us to know what is already known to the public in that area of technology. This allows us to pitch the claims at the right level – we are aiming for claims that are novel and inventive, but only just such that we can get the broadest scopes of protection for you. Some clients have excellent knowledge of the state of the art in their area, but this isn’t always the case, especially where businesses are moving into new areas. Other clients prefer to have a better idea of the state of the art prior to filing patent application.
In these cases, we can conduct a pre-filing search. This effectively mimics the search that will be performed by the patent office. We can then be proactive and tailor the patent specification to the documents found, rather than having to react during prosecution of your patent application which can be more difficult because of the need to avoid added subject matter.
While it may seem an obvious choice to perform a pre-filing search, there are reasons not to do so. Most patent offices essentially subsidise the cost of the search such that the official search fee is usually much less than the cost of a commercial search. So, if a client has good knowledge of the relevant state of the art, they may chose not to pay to duplicate the search process with a more-expensive commercial search.
How we gather information to draft a patent specification
Generally, the best way to gather information is through submitting a written description to us. We have guides to help clients understand the type of information we require, and the level of detail we would like. This is usually supplemented with meetings or calls in which we discuss your invention in further detail.
However, we are flexible in how we collect information and can adapt to any client’s individual requirements. We are also flexible in the level of information we collect to draft a patent specification, beyond the bare minimum necessary for us to understand invention so that we can describe it in the required detail in the specification. Some clients seek to minimise costs by providing us with as much information as possible so we spend the least amount of time drafting the specification. Other clients prefer not to spend so much time providing materials to us and leave us to “fill in the gaps”. For example, providing us with drawings to the standards required by patent offices saves expense, but it is time consuming so some clients prefer us to prepare the drawings.
Drafting the patent specification is usually an iterative process. Once we immerse ourselves in preparing a first draft of a patent specification, it often becomes apparent where we should include further details. These details can be gathered when reviewing the first and subsequent drafts of the patent specification. Working in this way minimises the overall amount of time spent gathering information and so helps minimise costs.
Legal requirements for the patent specification
Patent offices impose certain legal requirements on a patent application, beyond the need for a set of claims that define a novel and non-obvious invention. These requirements include:
