This post is part of a series of posts entitled A Guide To Intellectual Property Protection. For a comprehensive list of articles contained in this series, click here.
A patent application can only be filed with the Patent Office by the actual inventor or his or her representative. The basic elements of a patent application are as follows:
- A specification
- An oath or declaration;
- Drawings, when necessary; and
- A filing fee.
A specification is a written description of the invention or discovery that must clearly and concisely describe the manner and process of making and using the invention. It must be specific enough to enable a person who is knowledgeable in the particular area to which the invention relates to make and use the invention. In addition, the specification must describe the invention in such a way as to distinguish it from other previously known inventions.
The specification should conclude with a claim or claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his or her invention or discovery. The claims legally define the patentable features of the invention. Each claim is a single sentence describing precisely what new, useful, and nonobvious features constitute the actual invention. The claims are the most important part of an application since the monopoly granted by a patent covers only the material appearing in the claims. An example of a claim for a type of billiard table having a novel cushion is as follows:
A playing table comprising: a playing surface and a raised marginal edge portion surrounding said surface, said raised marginal edge portion having a longitudinally extending recess therein, and a cushion consisting only of a base disposed in said recess and a downwardly accurately extending cantilevered lip integral with said base and extending away from substantially the top of said base.
Although, similar to the provisional application, a utility application need not include claims at the time of filing, it must include such claims shortly thereafter, since the claims are a primary portion of the application document on which examination is based. Furthermore, it is typically good practice to include claims in the original utility application filing to ensure that the claims are consistent with the specification and are of appropriate scope.
The applicant is required to furnish a drawing of his or her invention when necessary for understanding the nature of the invention. In other words, if it is possible to draw the invention, a drawing must be included. As many drawings as are necessary to fully describe the invention are required.
An oath or declaration must be signed by the inventor(s) and filed with the application, stating that the named inventor is believed to be the original inventor of the invention which is claimed. By signing the oath, the inventor acknowledges his or her duty to disclose any information known to or later discovered by the inventor which is relevant to the examination of the application by the Patent Office. The Patent Office also requires the submission of an Information Disclosure Statement by the applicant. An Information Disclosure Statement contains a listing of any patent publications and other information of which the applicant is aware and which is relevant to the examination of his or her application. An applicant must submit this document in order to comply with the duty of candor and good faith toward the Patent Office. Failure to do so could later enable another party to invalidate the issued patent.
