When an inventor files a patent application, the patent examiner looks at the patent application to determine if it qualifies. It should be remembered that even if the examiner grants your application, anything disqualifying that the examiner missed overturns your patent.
Your patent application will be examined to determine that your intellectual property is novel, useful, and nonobvious. Your patent application must adequately describe your invention.
Novelty or NewYour invention is not new as defined by U.S. patent law if:
- an identical (or too similiar) invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before your invention was; or
- your invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to your application for a patent in the United States.
Or if what you invented has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which you filed an application in the U.S., your patent application will be rejected.
It does not matter if the printed publication or public use was by you or by someone else. If you described your intellectual property in a printed publication or used it publicly, or placed it on sale, you must apply for a patent before one year has gone by, otherwise you lose any rights to one.
Note: Even if the United States allows this one-year of grace other foreign countries do not. You will not be able to file in some countries if any public disclosure has taken place.
UsefulAn invention must serve some useful function. The term useful means that your intellectual property has a useful purpose and it must be operative. You must accurately describe what its use is and your invention must live up to your claims in order to be called useful.
NonobviousThe invention you are seeking to patent must be sufficiently different from what has been used or described before that it is nonobvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitutions of one material for another, or changes in size, are ordinarily not patentable.
Nolo Law gives this example of nonobviousness: A baseball player invents an electronic device that can signal whether a pitch is a ball or a strike. The patent application is rejected on the ground that similar technology has already been developed for television commentators.
Reduced to Practice - Prove it on PaperIn your written patent application you must fully describe your invention to such a degree that a person skilled in the same field as the invention could make or use that invention. A person skilled in the same field as the invention should be able to read your patent application and understand it. The inventor must be able to make claims about his/her invention in clear and definite terms.
The part of a patent application that describes and reveals your invention is called the specification and includes various types of descriptions, claims, and drawings depending on the type of invention and type of patent involved. Remember, ideas alone can not be patented. In other words - you can't just write, "I have an idea for a new alarm clock." You must be able to describe how your alarm works so that an expert in alarm clocks would understand how it would work and that it would indeed work.
As a novice, to file your first patent application yourself is often unwise. However, you could write your own descriptions and then pass them over to your attorney. The attorney could use your writings as a guide and a time-saver, and that will save you money. You should present your inventor's logbook, prototype, and any prior art searches to the attorney (more about those later.)
You must write a complete and thorough description of your intellectual property as you cannot add any new information to your patent application once it is filed. You can only make changes to the subject matter that could be reasonably inferred from the original drawings or description.
"Claimed by the inventor in clear and definite terms" is not as easy as it sounds. Claims define the intellectual property and are what are legally enforceable by law. Claim writing can make or break a successful patent application.
Before even beginning the patent application process - you must search for news about similar inventions to yours that have already been publicly disclosed called prior art. More about that next.