Write Your Own Patent App

August / September 2009 By: Bruce Winchell Volume 7 Number 4

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Since the Patent Office rejects thousands of applications every year, you should make every effort to avoid the pitfalls and black holes in applying for a patent. Much of this you can do yourself since, presumably, you know more about your invention than anyone else. Besides, you can save big bucks by clearing out the underbrush well before you visit a patent attorney. The less work he or she has to do, the less it will cost.

Before you start to develop the application you should do a "prior art" search to make sure that you are not just writing yourself in to a corner or more exactly into a patent office rejection for submitting something that has already been patented. Prior art constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality. If an invention has been described in prior art, a patent on that invention is not valid.You can do prior art searches online at www.uspto.gov or at www.google.com/patents. Save the results of your search to report to the Patent Office.

With this information in hand, you are ready to start writing your application. You should use the sections as set forth here and in the order listed, using only those sections for which you have information to enter. The paragraphs should all be consecutively numbered as demonstrated here. All pages should be numbered. All text should be double spaced. (You can, incidentally, submit your application electronically, but it's wise to first set it down on paper.)

TITLE
[0001] The title should be in five or fewer words at the top of the first page.

STATEMENT REGARDING
FEDERALLY SPONSORED R&D
[0002] If you have any U.S. government money in your project that was used to conceive or first actually reduce to practice the invention, you must put that information into this section or risk loss of the patent later.

NAMES OF PARTIES TO A
JOINT RESEARCH AGREEMENT
[0003] If you did your inventing under a joint research agreement you should say so in this section so that you and the other party can put all of your inventiveness into one application to save money and to prevent the Patent Office from citing the other party's patent application against yours for related inventions that should have been made in the same application with joint inventors named.

REFERENCE TO SEQUENCE LISTING
[0004] If you have a sequence listing as a part of your invention you can submit it as a table, or computer program submitted on CD ROM, which should be listed in this section.

BACKGROUND OF THE INVENTION
1. Field of the Invention
[0005] Use two or three sentences to describe the technical field of your invention so that one skilled in this art would know how what kind of expertise would be needed to understand this invention.
2. Prior Art
[0006] Describe what prior art you found in a manner that shows how it is related to your invention, such as using the abstract from any patent you found. At the end of each short description note its deficiencies as compared to the your invention.
[0007] After you have repeated this process for all of the references that you found that you believe to be related to your invention, go to the next section.

SUMMARY OF THE INVENTION
[0008] Start with a paragraph describing the invention in terms of the claims of the case and the scope of those claims. Then there should be a series of paragraphs for each object of the invention. One of these objects should explain the expected utility or utilities. The Patent Act requires that you describe at least one utility for the invention to obtain a valid patent.
[0009] For example: It is an object of the invention to enable the use of large numbers of suitable wind turbines to produce electricity needed by the local community.

BRIEF DESCRIPTION OF THE DRAWINGS
[0010] There should be a series of single sentences to describe each drawing . Examples:
[0012] Figure 1 is a perspective view of the present invention.
[0013] Figure 2 in a side sectional view taken along line 2 - 2 of Figure.

DETAILED DESCRIPTION OF THE INVENTION
[0014] This should be a good technical detailed description sufficient to teach those of ordinary skill in this art how to MAKE AND USE the invention and anything that may be stated in the claims at the end of the application. Also, I highly recommend that you specifically state what you think the BEST MODE of making and using the invention is to specifically comply with Section 112 of the Patent Act.
[0015] If the case is a chemical case or where an example would help those of ordinary skill in this art to understand the invention then the Patent Office rules require examples.
[0016] If the case is an electrical or electronic case then at least some of your drawings must be electrical circuit diagrams.

CLAIMS
The claims of the application must start on a new page. Each claim must be one complete sentence, having a preamble followed by a colon and then a description of the elements separated by semi-colons, concluded with a period. Independent claims must NOT refer by number to any other claim.

ABSTRACT OF THE DISCLOSURE
The abstract must start on a new page. The abstract should be one paragraph containing no more than 150 words describing the invention scope commensurate with the scope of the claims. The abstract should stand alone on that page. The abstract page does not have a page number.

SEQUENCE LISTING
If you have a written description of any sequence then this section must start on a new page.

DRAWINGS
If drawings could help someone of ordinary skill understand the invention, then they are required. I recommend that you include drawings if you can think of one. There should very little text. Do not include any drawings that are not discussed in detail in the detailed description of the invention. The drawings must be on separate sheets at the end of the application.
Good luck!

Bruce M. Winchell is a registered patent attorney at Technology Ventures Corporation.