• Home
  • About
    • Client Reviews
    • Patent Samples
    • Accolades
    • About Firm
    • Technologies
    • FAQs
  • Services
    • Patent
      • Utility Patents
      • Design Patents
      • Patent Application
      • Patent Defense
      • Patent Enforcement
      • Working with In-House Attorneys
    • Trademark
      • Trademark Search
      • Trademark Application
      • Trademark Enforcement
      • Trademark Defense
    • Licensing
    • Worldwide IP
    • Risk Management
    • Due Diligence
  • Industries
    • Browse Patent Samples
    • Automotive Patents
    • Construction Patents
    • Consumer Products Patents
    • Electronics Patents
    • Food, Beverage, & Other Culinary Patents
    • Manufacturing Patents
    • Medical Products & Devices Patents
    • Optics Patents
    • Software & App Patents
    • Tools & Equipment Patents
  • Learning Resources
    • First-Time Inventor?
    • Why Patent Your Invention in a Bad Economy?
    • Videos on Patents
    • Search 180+ Articles
      • Patent process
        • Overview of Patent Process
          • Patent process timeline and major milestones
          • Patent Process: Invention to Patent Granted (Simplified)
          • Patent process, overall steps and procedures
        • Overview of the examination process within the USPTO
          • Highs and lows of securing patent protection for your invention
          • What is the Patent Office procedure after filing a patent application?
        • Benefits of a Patent Search
          • What is a patent search and How to do it?
        • Patent attorneys, agents and the USPTO can help with the patent process
        • USPTO Website
      • Invention Agreements
        • What is an NDA and when to use them?
        • How to use a contract to protect your invention?
        • Working with others without losing your IP rights
        • Patent Assignments for Independent Contractors
        • Losing Invention Rights When Hiring or Collaborating with Others
        • Avoid Problems: Get an Invention Assignment Agreement
      • Protect Inventions
        • Misconceptions of Provisional Patent Applications
        • Do you need to get your patent attorney to sign an NDA?
        • Can a confidentiality agreement protect me like a patent application?
        • Four types of intellectual property to protect your idea and how to use them
          • Overview of Patents and Intellectual Property
          • Patent protection benefits and why every inventor should consider getting one
          • 8 tips to successfully protect your idea
          • Benefits of Patent Protection
          • Best uses for design patents
        • Reasons to only market your invention after securing patent pendency
          • Dangers of 1 yr grace period under first-inventor-to-file system
          • File a patent application before telling others about the invention
        • Risks and benefits of securing software patent protection
          • Strategy to overcome patentable subject matter rejection
        • Pros and cons of filing a continuation-in-part application
          • What is a continuation patent application?
      • How Patent Applications Work: the Basics
        • How to respond to an office action?
        • Request for non-publication of a patent application
        • Anatomy of a Patent Document
        • How to write a broad patent application?
        • Design patents: pros and cons
      • Patent costs
        • How much does it cost to get a utility patent?
        • Provisional Patent Application: Cheap Alternative?
        • Patent Cost Framework and cash flow
        • Provisional patent application: a cheap option?
        • Cheap provisional patent applications
      • Patent infringement
        • Basics of writing a patent claim for a patent application
        • Patent Marking: Everything you wanted to know
        • Avoiding Patent Infringement
        • Can I Copy My Competitor’s Product?
        • Can I Copy My Competitor’s Product? (Design Patent)
      • Worldwide patents
        • Pros and cons of securing worldwide patent protection and their steps
        • Foreign patent filing to secure protection in other countries
      • Responding to Office Actions
        • Overview of Office Actions
      • Trademarks
        • Trademark Registration: common law, state and federal
        • How to obtain a federal trademark registration?
        • How to select a trademark?
          • Protect your idea when pitching to an investor, potential licensee, or buyer
  • Schedule Consultation
  • Contact

Top-Rated Orange County Patent Lawyer | Helping Inventors in Orange County, Los Angeles County & Beyond | OC Patent Lawyer, Irvine CA

Orange County Patent Attorney

(949) 433-0900
You are here: Home / Lessons / How to use this section on patent applications

How to use this section on patent applications

April 11, 2018 by James Yang

Back to: Navigating the Patent System

Inventors should use the information provided in this section to review a patent application prepared by patent counsel. It should not be used to prepare a patent application without legal counsel. This section explains the anatomy of a design patent application (Chapter 8) and a utility patent application (Chapters 9– 12), which can be filed as either a provisional or nonprovisional application. Since more utility patents than design patents are sought, most of this section is devoted to utility patent applications. This section also includes tips for helping the inventor review and understand a patent application written by a patent attorney (Chapter 12).

I have rarely seen a well written patent application prepared by someone who was not mentored by a senior patent attorney over a period of years. This is one of the reasons that it is my belief that only with proper guidance can an inventor be prepared to write a well-crafted patent application. Nonetheless, some inventors attempt to draft their own patent applications. While I do not advise prosecuting your own patent application, examiners at the USPTO will help pro se patent applicants (i.e., inventors that file and prosecute the patent application without the help of a patent attorney) to a limited extent. However, relying upon the help of the USPTO examiner to prosecute a patent application has limited benefits. First, the USPTO is not required to advise the applicant as to the breadth of the claims or whether the claims suit the inventor’s needs. A patent attorney, however, though not able to guarantee the issued patent is sufficiently suitable for your purposes, does help inventors secure patents with claim scopes aligned with their needs, whereas a patent examiner will not. Secondly, an examiner will not help a client secure a broad claim, which increases the potential for others to avoid patent infringement liability with a design around. As such, it is highly recommended that patent prosecution be handled by competent patent counsel who can successfully advocate meaningfully broad claims on behalf of the patent applicant and one that is more aligned to your purpose. However, please be advised that retaining a patent attorney to assist you through the patent process does not guarantee a mistake-free patent, but only mitigates potential mistakes.

Again, to avoid complications, I recommend that inventors retain competent patent counsel to prepare and file the patent application, which is an intricate, difficult document to prepare and must comply with numerous government regulations, laws, and case decisions which interpret those laws and regulations. The United States  Supreme Court once stated that “the specification [i.e., the actual text and drawings of the patent document] and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy.”9 A patent attorney undergoes years of education and training under the supervision of a senior attorney to  become  proficient  in  preparing  a  patent  application. Furthermore, patent attorneys are expected to keep up with current patent case law. Preparing a patent application without professional help risks difficulty and disappointment.

Many complicated legal principles are applicable when drafting a patent application. A self-help book on drafting a patent application may, for example, expose the inventor to these rudimentary principles, but a layperson will have difficulty assimilating these principles with their own writing styles in an application. Mistakes in an application prepared by an inventor may not be noticed until the USPTO’s examination has started, or after the patent issues, which might blind side inventors and startups with potential invalidity attacks by defendants.

Inventors should use the information in this book to better understand the patent document, which merges information about the invention and the legal requirements for drafting of a patent application, and to facilitate discussion with patent counsel. Inventors should also use information in this book to double check patent counsel’s work. The inventor and attorney cannot, without each other, create an effective patent document.

A patent attorney assimilates the technical details of the invention only after a short discussion with the inventor. Miscommunication may occur and details may not have been conveyed properly or may have been misunderstood. The patent attorney may therefore need clarification regarding the technical details of the invention. Ultimately, inventors should read the draft of the patent application provided by patent counsel thoroughly to be sure that the technical aspects of their invention are correctly described and then bring up any questions they might have with the patent attorney.

Footnote:

9  Topliff v. Topliff, 145 U.S. 156 (1982).

Previous Lesson
Core Concept 7: The Overall Patent Process and Costs (Chapter 7)
Next Lesson
Deciding what application to file: Design or utility?

Table of Contents

  • Introduction
    • Disclaimer
    • What you will find in this course
    • How to use this course
  • To Patent or Not To Patent (Section 1)
    • Purpose of the patent system
    • Benefits to the patent owner
    • Overview of the Seven Core Concepts
  • Getting Started: Seven Core Patent Concepts
    • Core Concept 1: Defining the Invention (Chapter 1)
    • Core Concept 2: Ownership–Resolving Ownership Issues (Chapter 2)
    • Core Concept 3: Conducting a Novelty Search (Chapter 3)
    • Core Concept 4: Different Ways to Protect an Idea (Chapter 4)
    • Core Concept 5: Three Bars to Patentability and the First-Inventor-to-File Regime (Chapter 5)
    • Core Concept 6: Preserving Foreign Patent Protection (Chapter 6)
    • Core Concept 7: The Overall Patent Process and Costs (Chapter 7)
  • Utility and Design Patent Applications (Section 2)
    • How to use this section on patent applications
    • Deciding what application to file: Design or utility?
    • Design Applications (Chapter 8)
    • Cost Considerations for Provisional and Nonprovisional Utility Patent Applications (Chapter 9)
    • Overarching Principles of a Utility Patent Application (Chapter 10)
    • Parts of a Utility Patent Application (Chapter 11)
    • Claims section
    • Writing Tip #1: How to write an application with the broadest possible protection (without breaking the bank) (Chapter 12)
    • Writing Tip #2: Be explicit. Don’t rely on inferences made in the patent application
    • Writing Tip #3: Using the word “may” versus “is”
    • Writing Tip #4: Preferred embodiments and using the word “substantial”
    • Writing Tip #5: Do not use the word, “invention” 
    • Writing Tip #6: Suboptimal embodiments
    • Writing Tip #7: Ranges
    • Writing Tip #8: Software Inventions
  • Patent Examination FAQs (Section 3)
    • FAQ #1: Patent Process Timing
    • FAQs #2-3: Patent Costs
    • FAQ #4: Duty to search v. Duty to disclose
    • FAQ #5: Review of Formalities
    • FAQs #6-7: Secrecy
    • FAQs #8-9: Nonpublication request and foreign patent protection
    • FAQs #10-16: Restriction Requirement
    • FAQs #17-21: Responding to Office Action rejections
    • FAQs #22-29: Broadening patent protection
  • Appendices
    • Appendix A: Trademark
    • Appendix B: Sample Utility Patent  
    • Appendix C: Sample Design Patent
    • Appendix D: Sample Trademark Registration
    • Appendix E: Entity Size 
    • Appendix F: Patent Laws

Popular Posts

Patent process overview
Patent process explained
How much does a patent cost?
Trademark process and costs
Patent process and costs

 

Services

Utility Patents
Design Patents
Patent Prosecution Services
Patent Defense Services
Patent-Law Counsel for In-House Attorneys
Trademark Prosecution Services
See All Services

Industries

Automotive Patents
Consumer Products Patents
Culinary Patents
Manufacturing Patents
Medical Patents
Optics Patents
Software & App Patents
See All Industries

Contact

James Yang
OC Patent Lawyer
2372 Morse Ave., Suite #178
Irvine, CA 92614
Tel: (949) 433-0900

Connect

  • Facebook
  • LinkedIn

Sitemaps

Sitemap: Pages | Sitemap: Posts

Terms of Use and Privacy Policy

By accessing this blog, you agree that no attorney-client relationship is formed except by a subsequent written retainer agreement. Also, you agree to not send confidential information unless directed by me to do so. The information posted on this blog is legal information and not legal advice.
Complete Terms of Use
Complete Privacy Policy

ADA Compliance

OC Patent Lawyer aims to ensure that its services are accessible to people with disabilities.
Accessibility Statement

Service Area

From our office in Irvine, California, we serve clients from all areas within Orange County and Los Angeles County, California.

© 2023 · James Yang, Your Entrepreneur and Mid-Size Business Patent Attorney