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Preparing for a Utility Patent Application

On Behalf of | Sep 15, 2020 | Patent Law

Utility patents, also called patents for invention, protect the creation of a new and useful process, product, or the machine. They also protect the improvement of a process, machine, or product. When you secure a utility patent for your invention, you can prohibit other people or companies from using, making, or selling your invention without authorization from you. 

Preparing for a utility patent application is incredibly important. Once you have searched for similar patents and have not discovered any major conflicts with your patent, you can begin to prepare your application. The process of drafting a patent includes the formal process of preparing a utility patent and filing it with a country’s patent office.

The Pre-Drafting Process

Before you begin preparing your utility patent, you will need to conduct a patentability search. Conducting a patent search is one of the most important parts of preparing for a Utility Patent application. If another person or business has patented an identical or similar invention to yours, then you will not be able to secure a Utility Patent.

Spending enough time on your patent search will prevent you from wasting time and money in the future by applying a product, machine, or process that has already received the Utility Patent. A patent search will also help you make sure that you were not using a product that has already been patented, opening yourself up to a patent infringement lawsuit. If you find an identical or similar patented invention, you may alter your invention to make it unique.

Defining the Scope of Your Utility Patent Claim

After conducting a thorough patent search, you should consider the scope of your patent claim. Every non-provisional Utility Patent application needs to have at least one claim in it. Determining the scope of your patent claim is an important part of your patent application. You will need to define your claim to satisfy the requirements of federal patent law. In addition to satisfying a legal requirement, your patent claim’s words will give your claim breadth. They will also narrow down what you want to claim as your own invention.

Essentially, the scope of your claim will help you and others correctly identify when someone else has infringed upon your patent. For example, if you are petting a special kind of gel pen, your patent claim would state what another person or business would need to create or sell to violate your utility patent. For someone to infringe on your gel pen claim, they would need to create, use, sell, or offer for sale or import a pen that included three specific elements. These three elements must describe your product in detail.

When drafting a utility patent claim, it’s useful to consider the single point of difference between your invention and all of the existing technology or products that have been created in the past. Sometimes it is helpful to work backward. For example, what is the benefit of using your product instead of another product? How does your product achieve that benefit? These differences should be set forth in your claim.

You want to ensure that you have the broadest patent protection available while still identifying the specific unique differences between your product and others. If your claim is drafted too narrowly, then you may not be able to hold violators of your patent liable. The utility patent claim determines the “metes and bounds” of your invention. As such, they are one of the most important parts of a utility patent application.

Writing a Basic Utility Patent Claim

The writing process for an effective utility patent should only happen after you and your patent attorney have spent significant time understanding your product. Before drafting your actual claim, your patent attorney will consider all of the additional subject matter and review the patentability search results. He or she will also review all of the information you provide in your Invention Disclosure form in order to gain a deep understanding of your product.

Your patent lawyer will begin to put together the utility patent claim. In the first draft, a patent attorney will modify or create figures describing the invention. They will also write a complete and thorough description of your invention and any embodiments you prefer. Next, they will begin writing the claims that define the invention. The Structure of a utility patent application includes the following:

  • The title of your invention
  • Cross-reference to any related patent applications
  • Statement regarding any prior disclosures by the inventor or a joint inventor
  • The background of the invention
  • A brief summary of the invention
  • A brief description of multiple views of the drawing
  • A claim
  • An abstract of the disclosure

Reviewing the Utility Patent Claim Draft

Once your attorney has completed a draft of your Utility Patent application, he or she will provide it to you for your review. Your attorney will also include any questions or requests for more information within your utility patent application’s first draft.  After you thoroughly review the Utility Patent application, you can return your first draft with any questions or comments. Your legal team will then answer your questions and review your comment. They may need to complete a second draft, and soon they will offer you the final form of your Utility Patent for your review. Once you agree to the final patent application, you will need to sign a declaration. Under United States patent law, inventors must swear under oath that they are the inventor, under the penalty of perjury.

Contact an Experienced Utility Patent Lawyer Today

The process of submitting a utility patent in the United States can be quite complicated. If you need to submit a utility patent application, the experienced intellectual property lawyers atAU LLC will help. Contact our Chicago Law Firm today to schedule your initial consultation.