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In most cases, patent applications should be drafted by patent attorneys or patent agents that have been trained to draft patent applications. In fact, only patent attorneys and agents may legally draft patent applications for other parties, although inventors are allowed to draft and file there own patent applications. Most patent professionals will quote a price between $6,000 and $15,000 to draft a patent application.
A U.S. patent application must be made in writing and must name the actual inventor(s) of the invention. The application must contain a detailed, written description of the the invention, should include figures or drawings that show the invention, and must include one or more claims that particularly point out and distinctly claiming the invention. The most important parts of a patent application are described in the following sections below:
- The identify of the patent inventor
- The specification (the part of the patent application that describes the invention)
- The claims (which define the scope of the patent application)
- The patent application drawings
- The inventor's oath or declaration
Patent Requirements | Patent Index | Provisional Applications
Under U.S. patent law, the patent application must identify the true inventor or inventors of the invention. Not only is this a prerequisite for an enforceable patent, but anyone who falsely states that she/he is the inventor in a patent application is subject to criminal penalties. Nonetheless, it is possible to correct an innocent mistake about inventorship in a patent application, such as accidentally omitting an inventor or accidentally naming a person as an inventor who was not an inventor of the invention claimed in the patent application.
The determination of who is an inventor often requires careful consultation with a qualified patent attorney. If two or more persons make an invention jointly, they apply for a patent as joint inventors. A person who makes a financial contribution is not a joint inventor and cannot be joined in the patent application as an inventor. It is also inappropriate to name executives or "team leads" as an honorary inventor in a patent application if there were not involved in the actual inventive process.
In those cases where an inventor refuses to apply for a patent or cannot be found, a joint inventor or a person having an ownership interest in the invention (such as the inventor's employer) may apply for patent protection on behalf of the missing inventor. If the inventor is dead, the patent application may be filed by legal representatives, such as an executor of the estate.
It is possible for a person to be an inventor without being the owner of the resultant patent. If an inventor is employed to invent things for their employer (such as an engineer hired to design new electronic components), the employer will usually be the owner of any patent or invention made by the inventor. Nonetheless, the inventor would have to sign the oath for the patent application, and the patent will be issued in the name of the inventor.
The specification portion of a patent application is a written description of the invention. The specification also explains how to make and use the invention. The two primary requirements of the specification is that it must be "enabling" and it must describe the "best mode" of the invention (35 U.S.C 112).
The enablement requirements states that the patent application must describe the invention in such full, clear, concise, and exact terms that any person skilled in the technological area to which the invention pertains will be able to make and use the invention. To meet this requirement, the specification should completely describe the invention, and do it in such a way as to distinguish it from the prior art (old inventions).
The best mode requirement states that the patent application must describe completely at least one specific embodiment of the invention. These specific embodiments must include the best mode contemplated by the inventor for carrying out her/his invention. While it is possible to challenge the validity of an issued patent if the specification is not enabling, recent changes to the patent statute made by the America Invents Act have removed the ability to challenge a patent's validity on the ground that the specification failed to disclose the invention's "best mode."
In addition to the description of the invention, the specification also includes a title, a brief abstract of the invention, an initial summary of the invention being claimed, and a brief description of the drawings.
The patent application must include one or more claims which particularly point out and distinctly claim the subject matter which the applicant regards as the invention. These claims form the heart of any patent which is issued from the application, as they describe the patent's breadth and coverage. Claims are basically brief descriptions of the subject matter of the invention; they recite all essential features necessary to distinguish the invention from what is old without including any unnecessary details.
When a patent application is examined by the Patent and Trademark Office, it is the claims that the examiner uses to compare the application with the prior art. If the claims are written too broadly, the examiner will reject the claims as covering the prior art and a patent will be denied. If a claim is too narrow, the patent will have little value as it will not cover competitor's products. Thus, the drafting and amending of claims is the most technical portion of a patent application, and it is here that a skilled patent attorney will earn her money.
The patent application will also include one or more drawings of the invention whenever a drawing is required to understand the invention. Most applications, including those for software patents, will include a drawing showing or describing (in a flow chart, for instance) the crucial features of the invention. By law, the drawings must show every feature of the invention specified in the claims. Since drawings are required to be in a very particular format, it is usually necessary to hire a competent draftsperson to make the drawings. It is possible, however, to avoid filing the formal drawings (those which meet all of the Patent and Trademark Office's requirements) until the application has been examined and allowed.
The oath or declaration of the applicant is required by law. The inventor must make an oath or declaration that she/he believes herself/himself to be the original and first inventor of the subject matter of the application. In addition, the oath contains other statements as required by law and by the Patent and Trademark Office rules. The oath or declaration must be signed by the inventor in person, or by the person entitled by law to file the patent application on the inventor's behalf.