Knowing how to review a patent application can save you time, money, and help you strengthen your patent application.  The truth is, no one knows your invention better than you, the inventor.  Yes, that’s right, your patent attorney learns all about your invention from you (and their own scientific background and research in the field but you get the point).

Start with the claims

When working with a patent lawyer or agent, the first part that needs to be reviewed is the claims. These are the metes and bounds of your intellectual property parcel, and what you’re setting out to protect.  So make sure that the claims reflect your invention accurately, completely, and are true to your invention.  In addition, various embodiments and alternative ways must be included in those claims. Claims are hard to write and read, so make sure you go through each element of your claims.  If an element is not necessary and can be removed, take the time to work through the elements of the invention and ask yourself if one or more of the elements could be removed from the claim and still have your invention operate and be unique. If you can remove some elements, remove them and maybe add them to a dependent claim.

After the claims, review your drawings and specification

After you review the claim and are satisfied with what they include, it is time to review those drawings and specifications. Here are some things to consider on how to review a patent application:

  1. Your application must be true, complete, and accurate

One of the most important obligations an inventor has is to make sure that a patent application for an invention properly describes that invention.  Please carefully read your patent application to make sure that all of the information contained is, to the best of your knowledge, true, complete, and accurate. You have to make sure that the application discloses and claims all equivalents of the invention that you can reasonably anticipate.

  1. Best Mode requirement

Patent laws require that you disclose in your application the “best mode” known to you for carrying out the invention at the time the application is filed. The best mode requirement is a safeguard against the desire on the part of some people to obtain patent protection without making a full disclosure as required by the statute. The requirement does not permit inventors to disclose only what they know to be their second-best embodiment, while retaining the best for themselves. This sometimes requires updating an application prior to filing.

  1. Enablement requirement

In addition, patent laws require that the description of your invention must be sufficiently complete to enable a person with ordinary skill in your field of invention. This requirement affects the level of details of the drawings and description contained in the application.  Make sure that your application also references all equivalent implementations of the invention as you know them.

  1. Inventor’s Oath

As part of the application process, you will be required to execute formal papers including a declaration document in which you will affirm that you believe yourself to be the sole (or joint) inventor and that you in fact invented the new disclosure. You will also affirm that you do not believe that your claimed invention was:

(i) ever known or used in the United States before your invention thereof;

(ii) patented or described in any printed publication before your invention thereof or more than one year before your application for patent; or

(iii) in public use or on sale in the United States more than one year before your application for patent.

Make sure to not make any false affirmations since that is indeed perjury and punishable by law.

  1. Disclosure of material information and prior art

As an inventor, you also have an obligation to disclose all information of which you are aware of which is material to the examination and/or patentability of the application. Any time before the USPTO grants your patent or you pay your issue fee, and you come across material information, make sure to bring that information to your attorney’s attention promptly. The term “material” means information having more than a trivial relationship to your invention. For example, any information that a reasonable patent examiner would consider important information in deciding whether to grant your patent should be disclosed or brought to your attorney’s attention. This information might include, for example, publications or patents that addresses the novelty, operability, or non-obviousness of your invention.

If you’ve conducted a search and found important information, make sure to bring it to your attorney’s attention.  If we have conducted a prior art search on on your behalf, relevant prior art will be disclosed as part of the Information Disclosure Statement.

  1. Corrections or additions

If you believe that corrections or additions to your patent application as now written are necessary to properly describe your invention, you should make any changes directly on the page(s) involved.  Now is the time for you to include those corrections or additions, because changes and corrections might not be possible after filing.  Don’t be shy, your patent attorney or agent works for you! You have to bring up comments or issues before they file your patent application. After you file your application, you are pretty much committed to that text forever. It is always best to make sure the application is as perfect as you and your patent attorney or agent can make it before it is filed. Your patent lawyer or agent should be able to give you an explanation of what every section is for. Don’t be afraid to ask questions!

Now that you know how to review a patent application, if no changes are necessary and formal papers have been provided, you can sign these papers where indicated and return all the documents to us for filing in the Patent and Trademark Office. But you need to strive to have the best draft possible. Now is not the time to get lazy or rely solely on your patent lawyer or agent!