(408) 985-0642


Patent Application

  • May 4, 2015
  • admin
  • Comments Off on Patent Application
By Doug Weller

In a patent application, an inventor discloses an invention in sufficient detail so that others can make and use the invention. Provided the disclosure is sufficient, the invention is novel and non-obvious,and various other administrative requirements (e.g. fees paid, etc.) are fulfilled, the government issues a patent on the invention. The patent provides to the owner of the patent a limited right to exclude others from using the invention. This limited right may include the legal ability to prevent others from making, using or selling the invention, or at a minimum allows the owner of the patent to extract a royalty from those who make, use or sell the invention.

Patent applications essentially consist of two parts. The first part includes drawings and a specification that sets out one or more embodiments of the invention in sufficient detail so that a person familiar with the technological art in which the invention resides can make and use the invention.

In the second part of the patent application, the claims, the inventor sets out in special “claim language” the essential idea that others are to be excluded from using. If the claims are written too narrowly (e.g., include too much detail) the patent may exclude others only from using a very few specific embodiments of the invention. This makes it very easy for competitors to design around the patent. On the other hand, if the claims are written too broadly (e.g., include insufficient detail), the subject matter in the claims may not meet the essential patent requirements of  novelty and non-obviousness.

Preparing patent applications

In order to prepare a patent application, it is necessary to understand not only the invention, but also the technological field in which the invention resides. This informs the preparer  of the patent application exactly what information must be included to satisfy the disclosure requirements. It also provides the background information necessary to precisely draft claims which will have maximized value to the owner of the patent.

An intimate acquaintance with the workings of the U.S. Patent and Trademark Office is an extremely userful asset, allowing an experienced patent attorney to guide the patent application through the examination process in order to maximize the likelihood a quality patent will be issued.

For more information on the process of obtaining quality patents you can read further on this website or contact patent attorney Doug Weller.

This website provides general information and is not intended as legal advice or to guarantee a particular outcome in a legal matter.