How to draft a patent application


A new invention needs protection and that protection has a process. As and when you discover an invention, you have to see which type of protection should we give to the invention and accordingly the patent application is prepared.

There are various intellectual properties such as trademark, patent, copyright, trade secret, etc. In case, you come on to the conclusion that your invention needs protection, you may start preparing the application.  

Determine if the invention is patentable 

Preparing a patent application is more difficult and time-consuming than one may think. Once you know the type of intellectual property you need and decided that you want patent protection. It is important to determine if the invention is patentable. For that, we conduct a prior-art search.  

Conduct a prior-art search to gather information about the prior arts that may be present already. They may be similar to your search and thus making your invention old. This can lead to infringement later on. So, your invention must not be publicly disclosed already. If you are not experienced in conducting prior art search then it is recommended to hire a licensed patent attorney or agent.  

Also read: Importance of Patent Agent in India 

Identify the type of patent application 

After determining that the invention is patentable, you have to see the type of patent application you will be drafting. There are basically three types of patent:  

  1. Utility patent: We prepare this application for inventions like matter, processes, machines, manufactures, etc. You can apply for this patent with United States Patent and Trademark Office (USPTO) through the Office’s electronic filing system called EFS-Web. A utility patent application must include specification, it should include a description of the invention, claim(s), drawings (if required), an oath or declaration, and prescribed fees for filing, search, and examination fees.  
  1. Design patent: This application is prepared for inventions in which design is to be patented such as ornaments, mobile phone bodies, etc. The configuration of the patent application is done for the designs provided in the application and claims are granted thereof.  
  1. Plant patent: This application is prepared for patent applications for the invention of asexually reproduced plants or newly discovered plant species. 

So, the type of application will depend upon the invention.  

Also read: Patent in India: Procedure for Grant  

Make your decisions for drafting 

There are various factors to keep in mind while preparing a patent application and take decisions regarding that. They may include: 

Cost and time to invest in the patent application: There are several types of fees to be paid for the process of patent which include search fees, examination fees, and issue fees. So, you have to keep this in mind and it will vary depending upon the type of invention.  

Estimate the time that will be utilized for preparing the application and also the time that will be taken while you get first office action. 

Range of protection: You can patent your invention in more than one country. So, you have to decide if you need international protection and draft accordingly for different countries where you need protection. 

Hiring a patent attorney or doing it yourself: It is although recommended to hire an attorney, you yourself can also draft your application. Preparing an patent application is a large process and requires wide knowledge for different steps of drafting and the inventor needs to have knowledge in all these areas. If the inventor lacks behind in any of the required knowledge, it can cause wastage of cost and time.  

Also read: What are the costs and fees for patent registration in India

Prepare your patent application 

After deciding about the above factors, prepare the patent application with all the essential detailing like a proper heading, description of the invention, patent drawings, claim(s), etc. Submit your application online on EFS-Web of USPTO along with the specified fees. It is very important to proof-read the application because you won’t be able to add more claims or amend the application later on.  

Work on office response 

If you have received any office action regarding any change then you should work with the patent examiner. You can also appeal to Patent Trial and Appeal Board (PTAB) if you receive office action more than twice.  

Receive approval upon patent application and maintain it 

You will receive approval for your patent when everything is correct and the examiner clears all the claims. You can maintain patent for certain years after paying maintenance fees.  

Also read: Maintain your patent 

Overview 

The long process of patent drafting covers the following steps: 

  • Determining the type of protection needed for the invention 
  • Prior art search for ensuring the novelty of the invention 
  • Type of patent suitable for the invention  
  • Preparing list for different decisions while preparing the application 
  • Applying for patent
  • Working on the office response 
  • Maintaining the patent 

As you have your invention ready with you, you can hire Your Patent Team to help you with the whole process of drafting an application and get you through with the process. We have the best patent registration team in India having expertise in patent field. We have 325+ technology experts, clients from 45+ countries, technology commercialization and we are always on the client’s side to provide them with the best. So, contact us anytime you need patent support for the best services.  

Related articles: Is Filing a Patent Application a Smart Decision? 

                 Elements of Design Patent Application 


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