What is a Patent Application? A patent application is not a form. It is a legal document describing an invention in a way that satisfies the statutory requirements for a patent to be issued. It takes many hours and a lot of legal and technical judgment to prepare a worthy patent application.

A patent attorney holds an undergraduate degree in a technical field, typically engineering, and a law degree, typically Juris Doctor, from an accredited law school, passed examination for a license to practice law in one or more states, is subject to annual continuing educational requirements, and passed further examination for registration to practice before the Patent and Trademark Office. All this education, testing and licensing is thought necessary by the regulatory authorities to represent clients and prepare a patent application that stands a reasonable chance to provide value to an inventor. 

The patent attorney’s initial job is to claim the invention and prosecute the application so that the invention is legally protected from exploitation by others. You are seeking protection because your invention is potentially valuable property. The initial expense in obtaining a patent may be your only practical means to secure that value to you, the inventor.

The Director of the U.S. Patent and Trademark Office responsible for registration of patent attorneys stated that a patent attorney has a responsibility to “read each paper submitted to the Office before it is submitted. Each submitted paper must be read in its entirety … regardless of the source of the paper.” December 1, 2008 presentation on the USPTO’s Code of Professional Responsibility.

This “duty of inquiry” can be a time consuming process that is codified in the Federal Regulations as 37 C.F.R. § 11.18(b). That section requires that submitted papers be submitted only for proper purposes and that any claims made be legally warranted. Section (b)(1) requires that all statements made be believed to be true and that no statement “covers up by any trick, scheme or device a material fact.” Section (b)(2) goes on to require that the person filing the paper actually makes “an inquiry reasonable under the circumstances” to ensure that the paper is not being presented for any improper purpose and that the contentions are “warranted by existing law or by a nonfrivolous argument [to change] existing law.”

A patent application should comply with the formatting asked for in the Patent Office regulations. This will minimize procedural objections from the patent examiner. The application claims should be worded to include accepted terminology, which, for example, could narrow the claim to precisely what is claimed or widen it to what is described plus whatever may be added to what is claimed.

Aside from the formalities, preparing a patent application requires an understanding of your invention and what it adds to the prior art. An invention should be described and claimed in a manner that will produce the widest protection for what is invented. The claims should be constructed to avoid what has already been described in existing patents or in the open literature, or what is obvious knowing that prior art.  See, for example, my article (pdf format), printed in the February 2006 issue of the American Society of Mechanical Engineers’ Mechanical Engineering magazine.

Savvy and experienced inventors are sometimes confident that they can accomplish the patenting process without an attorney.  This may be true, but a note of caution is warranted.  The Court of Appeals for the Federal Circuit affirmed a District Court decision invalidating 15 patents obtained by a inventor representing himself for legal errors, stating:

“Perhaps some of the errors were attributable to Mr. Nilssen’s representing himself during the prosecution of his patents. It surely was true that he knew more about the subject matter of his inventions than most, or even any, attorney. That is almost always the case with an invention, particularly one dealing with complex subject matter. However, the patent process is a complicated one, one that requires both technical and legal credentials in order to effectively prosecute patents for inventors. The same credentials are generally required to prosecute patents on one’s own inventions. Mr. Nilssen, while apparently gaining considerable knowledge of the patenting process, thought he didn’t need professional patent help. The result of this case, regrettably, proves that he was wrong.” Nilssen, et al. v. Osram Sylvania, Inc., et al., United States Court of Appeals for the Federal Circuit, (2006-1550, October 10, 2007).

You can look at some of the patents and patent applications on the United States Patent Office web site: http://www.uspto.gov/patft/index.html. The declaration, assignment and disclosure statement, as well as the fee and transmittal forms are not shown after a search. Forms for these are available on the patent office site at http://www.uspto.gov/patent/patents-forms.