10. What is the process and information necessary for securing patent rights?
Obtaining a patent requires submitting a patent application and filing fee to the USPTO. There are no common law or state patent protections. A patent attorney at the USPTO will review the application to make certain that the intended patent meets all requirements. Notably, the applicant must file the patent application within one year of publicly disclosing the invention (including presenting or selling it) to meet the novelty requirement.
The various elements required in a patent application include the following:
• Preamble – The preamble contains the Name of Applicant, Title of the Invention/Design, and Description of the Creation. A utility patent may require background information about the invention or creation process. This section contains what is commonly referred to as the specification(s), which describes how the underlying invention or design will be used. In a utility patent, the applicant will give a detailed description of the invention. It should describe the utility of the invention and how it is differentiated with regard to other art in the field. The applicant will also describe the “best mode” of production of the invention. This section may also include references to or elaborate upon the description of the individual portions of the drawings.
⁃ Note: The detailed description should provide sufficient information to allow a person skilled in this type of invention (PHOSITA) to use or employ the invention. The PHOSITA should not have to undertake much work or further study to employ the creation.
• Cross-References – Often a patent builds upon existing art or patented designs. If this is the case, the application should include a citation to any Cross-Referenced Patents.
• Figure Descriptions – These are descriptions of referenced sections of drawings of the claimed invention or design.
• Claims – The claim is the claimed aspects of the creation or design that is the subject of the patent application. Utility patents will generally contain multiple claims targeting specific aspects of the invention. In a design patent application, because the entire design (including all individual components) is considered in the design application, only one claim is allowed.
• Drawings and Images – A patent application should include detailed drawings of the claimed invention or design. This is very important for the patent examiner to determine whether the claimed invention or design is patentable, as this is what makes it patentable subject matter. The applicant should include as many views (perspective, section, cut away, detail, etc.) of the item as is needed to thoroughly describe each portion of a claim, number each portion of the invention, provide its source (prior patent reference), and provide a brief description of it.
• Oath or Declaration – Lastly, the application must contain a statement certifying that the petitioner is the claimed inventor or designer, as these are the only individuals who can secure patent protections.
The patent application generally requires a filing, search, and examination fee. Once the application and fees are received, the USPTO patent examiner will conduct a search for previously filed patents or applications. The purpose of this search is to determine whether the particular creation exists or has been previously disclosed to the public, as the previous creation or disclosure of the invention may disrupt the ability to secure patent rights. If all conditions are met and the search does not return conflicting patent claims, the USPTO will grant the patent and the patent will be recorded in the federal database. The patent owner must make annual maintenance filings and fees to maintain the patent.
• Discussion: What do you think about the elements required of a patent application? Why do you think these elements are specifically required? Can you think of other aspects about the invention that could be relevant to determining whether patent rights should be awarded.
• Practice Question: Garth is considering filing a patent application to protect his new invention. Can you explain to him the elements of the patent application?