How to Review a Utility Patent Application
You just received an email from a lawyer asking you to review an attached patent application draft. You’re not a lawyer and are not familiar with the legal requirements for a patent application. What kind of feedback is the lawyer looking for? How do you give meaningful feedback quickly?
When should you review the application draft?
As quickly as possible. Filing a patent application is often a time-sensitive process since patents are awarded to whoever is first to file a patent application for the invention. Delaying review will push back the filing date and may cause loss of patent protection for the invention.
Once the patent application is filed, it is impossible to substantively change the application. It’s a mistake to assume you can request a change to the application after filling. Reach out to the attorney before filing if you have any questions about the application.
When reviewing the application, be focused and detail oriented. Errors in the application may invalidate the patent. If you think a change is needed, alert the attorney.
The review process
A utility patent application usually includes the following sections:
- Summary of the invention
- Brief description of the drawings
- Detailed description
The exact phrasing of each section may differ slightly. Other sections, such as “Cross-reference to related applications” and “Statement regarding federally sponsored research” may be included if applicable. Provisional applications do not require claims and the claims section is typically omitted in provisional applications.
If you want to save yourself time, here is my recommended review strategy:
- Carefully read the detailed description section. The detailed description requires a complete and accurate description of the invention. This section is where your technical expertise is most valuable to the review process.
- Next, review the claims. The claims are a precise and concise recitation of what the applicant considers the invention. The claims are read in light of the detailed description and are sometimes difficult to understand without first reading the detailed description.
- Finally, review the remaining sections.
What to look for during your review
Below are important considerations to keep in mind as you review specific sections of the patent application.
Detailed Description Section
Accurate, truthful, and complete
One way to invalidate a patent is to prove the inventors were not truthful to the Patent Office. As you review the detailed description, make sure statements about the invention, such as experimental data or invention benefits, are accurate and truthful. If you find inaccurate, exaggerated, or incomplete statements in the patent application, point them out to the patent attorney.
Best mode requirement
Fundamentally, a patent is an exchange between the government and patent owners. In return for sharing their valuable knowledge about the invention, the government gives patent owners a monopoly on their invention for a limited time. The government does not want to grant patents to inventors who hide details about the invention and only disclose suboptimal solutions for the problem addressed. Thus, the best mode requirement requires the inventors to disclose what they think is the best way of carrying out the invention at the time of application filing.
The application does not have to specifically call out the best mode of practicing the invention, but the detailed description must include a description of the best mode. Furthermore, the best mode requirement is subjective to the inventors. The best mode requirement is fulfilled even if someone can argue there are better alternatives or if the inventors come up with even better solutions after filing.
The enablement requirement refers to the legal requirement that the patent application be written so that “person of ordinary skill in the art” (POSITA) to which the invention pertains can make and use the invention based on the description in the application and other publicly available information existing at the time the application is filed, with minimal experimentation.
Unlike the subjective best mode requirement, the enablement requirement is an objective standard. The hypothetical POSITA is typically someone with less skill than the inventor. As you read the detailed description section, ask yourself if a person of ordinary skill in the field of the invention could make and use the invention without seeking additional guidance beyond what is described in the patent application draft. If additional guidance is necessary, can it be easily found in publicly available information and used with minimal effort? If you believe this is not the case let the patent attorney know.
Scope of the claims
You may have discussed specific details about the invention with the patent attorney. However, the patent application is a legal document designed to protect broad inventive concepts. The application may purposely claim the invention more broadly than the specific embodiments discussed. For example, you may have provided the attorney with a design for an oscillating toothbrush, but the patent application may claim a “cleaning apparatus” to capture other uses for the invention.
After reading the claims, put yourself in the shoes of a competitor trying to circumvent the claims. Can the competitor omit a claim detail and still create what you regard as the invention? Are there important configurations of the invention that are not covered by the claims? Can you envision other uses for the invention not covered by the claims?
Unless a person contributes to the conception of the invention, they are not an inventor and should not be listed as such. Failure to include an inventor in a patent may cause the patent to be invalidated.
After reviewing the application and claims, consider if there are others involved in developing the invention that should be included, or if a named inventor should be removed. Each named inventor must have made a non-trivial contribution to at least one of the claims.
Quickly review the background section of the application to ensure it is accurate and does not contain any misstatements or mischaracterizations about the field of the invention. If you spot any errors, let the patent attorney know.
Other sections, like the abstract, summary of the invention, and brief description of the drawings will be updated by the patent attorney to reflect any changes during the application review. If you spot an error in these sections let the attorney know, but don’t spend too much mental energy reviewing these sections.
Duty to disclose prior art
Finally, it must be noted that inventors have a duty to disclose to the Patent Office information that may negatively impact the invention’s patentability, if known to the inventors. There is no requirement that the inventors search for negative information. However, if they are aware of any prior art pertinent to the invention’s patentability, it should be disclosed to the Patent Office.
Thus, if you are aware of any prior art adverse to the patent application, promptly bring it to the attorney’s attention. The obligation to disclose prior art is ongoing until the Patent Office issues a patent for the invention.
A patent application filing requires collaboration between the inventors and the patent attorney. When reviewing the application, be focused and detail-oriented. Errors in the application may invalidate the patent. The inventors should carefully review the application draft and the attorney should thoughtfully consider inventor feedback to ensure the best possible application filing.