Mistakes to Avoid in Your Patent Application

Rich Goldstein

Founder & Principal Patent Attorney

The patent application process on its own can be pretty rigorous. You want to make sure you’re doing everything right and avoiding any mistakes that can either hold up the process or cause your application to be denied. In this article, you’ll find a list of mistakes to avoid in your patent application.  

Mistakes to Avoid in Your Patent Application 

Navigating the patent application process is important to safeguard your idea. First, let’s examine some of the important details to know about patents. 

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Utility patents protect new processes, machines, articles of manufacture, or compositions of matter. Design patents cover new, original, and ornamental designs for an article of manufacture. Lastly, plant patents are granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

As an inventor, your role is to completely disclose your invention, ensuring that it’s novel and non-obvious. A patent attorney or agent aids you by preparing and filing the application with the United States Patent and Trademark Office (USPTO), navigating the legal intricacies to secure the intellectual property rights of your invention.

Common Mistakes to Avoid In Your Patent Application

When starting the patent application process, your invention is essentially on the line. It’s vital to dodge common hurdles that could compromise the patent you need for your intellectual property. Steer clear of these patent-filing blunders to solidify your path to innovation protection.

Not Carrying Out a Comprehensive Previous Art Search

When you embark on the patent application journey, a critical step is to conduct a thorough prior art search. This search is done to confirm that your invention is new, useful, and non-obvious—the core criteria that patent examiners use to assess your application.

It is important to determine your invention’s novelty, gauge the non-obviousness and inventiveness against existing technologies, and verify your invention’s usefulness and practical application. When searching, make sure you do the following:

  1. Use relevant databases: Explore patent databases and literature across multiple jurisdictions.
  2. Include non-patent literature: Look for technical journals, conference papers, and academic research.
  3. Consider international standards: Search for applicable standards (e.g., 3rd Generation Partnership Project (3GPP) and Institute of Electrical and Electronics Engineers (IEEE)) that could relate to your invention.

Remember, diligence is key in this stage; even minor oversights can lead to major repercussions. A successful patent application starts with a solid foundation built on a complete understanding of the prior art landscape. Your goal is to clarify the uniqueness of your contribution to your chosen field.

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Unclear or Non-Concise Specification

When drafting your application, the clarity and brevity of your specification are paramount. This part of your application allows you to define and describe your invention precisely. Remember, your specification is the cornerstone of your application; it must be comprehensible and detailed enough to guide someone skilled in the art through your invention.

Here are key points to keep in mind:

  • Explain your invention’s technical features and how they resolve existing problems or enhance current solutions. Your written narrative should convey your invention’s advantages without ambiguity.
  • Include diagrams and descriptive figures that complement your text. Each figure should have clear English labels and a brief description to make them easy to understand.
  • Structure your specification effectively—start with a general overview of your invention and progress into the more detailed aspects.
  • Steer clear of technical jargon that might confuse readers. Instead, aim for a straightforward language accessible to those familiar with your field.
  • Abide by the formatting guidelines set by the patent office, such as text spacing, margin sizes, and page numbering, to avoid unnecessary administrative setbacks.

Avoidable mistakes in specification writing not only delay the patent process, it can also result in outright rejection. You’ll lay a solid foundation for your patent application by articulating your invention clearly and thoroughly.

Claiming the Wrong Scope of Protection

When filing a patent application, it’s important to claim the correct scope of protection for your invention. This means defining your invention’s legal boundaries precisely. A too-broad claim might infringe upon existing patents, whereas a too-narrow one might not fully protect your intellectual property. Here’s how you can avoid this mistake:

  • Conduct a thorough prior art search: Before drafting your claim, research relevant literature and databases to understand the novelty and non-obviousness of your invention.
  • Balance your claim: Strike a balance by ensuring your claim is broad enough to protect variations of your invention, yet precise enough to differentiate from prior art.
  • Support your claim: Each claim should be backed by details in your specification and drawings. Consistency in terminology between these elements is key.
  • Use clear language: Craft claims using plain language that avoids ambiguity, ensuring they’re understandable and enforceable.

Choosing the Wrong Type of Application

Selecting the appropriate type of patent application is crucial for aligning with the inventor’s goals and strategy. Carefully consider the benefits and drawbacks of provisional and non-provisional applications. A provisional application can provide an early filing date and allow time for further development, while a non-provisional application begins the formal examination process.

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Neglecting to Enlist Professional Help

In your journey to secure a patent, overlooking the benefits of professional advice is often a serious mistake. Patent attorneys or agents possess specialized knowledge of patent law and application processes. Their expertise extends to conducting a comprehensive prior art search that lays the groundwork for a successful patent filing.

Seeking professional help can aid you in:

  • Drafting a strong application: Crafting a clear, complete, and legally sound patent application is no small task. A patent professional knows how to describe your invention with the precision that the patent office demands.
  • Determining claim scope: To safeguard your innovation effectively, drafting claims that balance breadth with specificity is vital. Professionals make sure your claims are neither too broad nor too narrow.
  • Navigating legal procedures: From filing to prosecuting your application, experts adeptly handle any obstacles, often foreseeing issues before they occur.
  • Staying informed of deadlines: Missing a deadline can jeopardize the entire patent application process. An expert keeps track of these deadlines, helping you maintain your patent validity over the years.

By enlisting professional help, you’re investing in the potential of your intellectual property. This choice uplifts your patent’s quality and bolsters its chance for approval. Remember, the right guidance at the right time can decide your patent’s journey from application to award.

Not Keeping Close Tabs on the Process

Keeping an eye on your application’s status is important when applying for a patent. The journey from application to grant comprises numerous steps, each with their specific requirements and deadlines.

By closely monitoring your patent application process, you directly contribute to the efficiency and success of your intellectual property protection efforts.

Waiting Too Long to File the Patent

When you’re developing a new invention, the clock is ticking. It’s important to remember that patent applications are time-sensitive. If you sit on your groundbreaking idea for too long, you might lose the chance to claim it as your own. Here’s why prompt filing is non-negotiable:

  • One-year grace period: In the United States, the law allows a grace period where you can file a patent application within a year after publicly disclosing or selling your invention. However, this shouldn’t be considered as a safety net you can rely on.
  • First to file: Many countries operate under a first-to-file system. This means the patent is awarded to the person who files first, not necessarily the true inventor.
  • Risk of losing rights: Should you delay and someone else apply for a patent on an identical invention, they could legally bar you from using your creation.

Remember, your innovation isn’t just a cool new product—it’s potential intellectual property that can define your business’s future. To keep your invention securely under your name, start the patent application process before making any public disclosure. Here’s a quick checklist to keep you on track:

  • Mark your calendar with key deadlines
  • Avoid making your invention public until you’ve filed for a patent
  • Understand the patent laws that apply to your invention, especially if you’re considering international patents
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Related Questions

What Are the Most Common Reasons for Patent Applications Failing?

Some of the most common reasons for patent applications failing include lack of novelty (your invention must be something new), not addressing office actions, claim issues, and incomplete disclosure. By avoiding these common mistakes, you can improve the likelihood of your patent application succeeding.

What Words Should You Avoid When Filing a Patent?

Avoid language that introduces unnecessary limitations, such as “critical”, “necessary”, or “must”, as these terms can imply that alternatives are excluded, even if that was not your intent. Be cautious with phrases that emphasize the importance of certain features or methods like “special,” “unique,” or “superior,” which may limit the interpretation of your claims to those specific embodiments. 

How Do You Determine Whether You’re Infringing On a Patent?

By conducting a freedom to operate search, you can analyze whether your invention overlaps with existing patents. This involves breaking down your invention into its basic elements and checking each component against existing patents. If every element of at least one patent claim is found in your product, there could be an infringement.

Conclusion

To make sure your patent application is successful, avoid common pitfalls. Performing a comprehensive prior art search is an absolute must to establish the novelty of your invention and increase the chances of getting an approval. Remember, clarity is key; lacking detail can hinder your application process. Finally, if you’re ever in doubt, consult with professional patent attorneys or agents.

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