Patent ApplicationsA U.S. patent application must be made in writing by the individual inventor(s). If a person who is not the inventor files a patent application, any patent that comes from that application would be invalid. Therefore the determination of who is an inventor is crucial to the successful filing of a U.S. patent application, and is described in more detail below. The patent application is also discussed in the following subparts:
- 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; and
- the inventor's oath.
Under U.S. patent law, only the inventor may apply for a patent, with certain exceptions. 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. It is possible to correct an innocent mistake in a patent application, such as accidentally omitting an inventor or in error naming a person as an inventor.
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.
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 as an inventor (such as an engineer hired to design new 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, as is required by the first paragraph of 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. Failure to include the best mode in the specification may lead to an invalidation of any patent issued.
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 must be sworn to by the inventor before a notary public or other officer authorized to administer oaths. In some instances, a declaration may be used in place of an oath. 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.