How to Review a Patent Application to Better Protect Your Invention

You received a draft of your patent application (“nonprovisional patent application” or “application”), and you’re wondering—How do I review this? For many inventors, reviewing the application may seem daunting. But while intimidating, your review is an important aspect of the patent application preparation process to ensure the invention is described with enough detail that someone (You!) skilled in the relevant technical field can understand how to make and use it.

Generally, the application is divided into several sections. These sections include a written description, claims, and drawing sections.

There is no one way to begin reviewing these sections, but inventors typically like to begin with the drawings because they are usually the easiest part of the application to review and help familiarize the inventor with the structure of the application.

Where to Start Reviewing?

Start your review with the drawings. They provide a good overview of the patent application.

1. Review the Drawings

A typical patent application will include several pages of drawings to illustrate specific examples (i.e., embodiments) of how the invention may be implemented. During your review, ask yourself whether the drawings capture the invention and whether anything is wrongly labeled or drawn incorrectly.

Keep in mind that in some situations, multiple embodiments may require various drawings, and it is not necessary that embodiments be shown in a single drawing, or even a group of drawings so long as all embodiments are represented. For example, it is possible that some variations and embodiments will only be described in the written description section, and not illustrated. However, make a note of any embodiments that are not shown, to make sure that they are included elsewhere in the written description.

2. Then Review the Written Description

The written description typically includes background, list of figures, detailed description, and abstract sections. Generally,

  • the Background serves to describe the general field of technology in which the invention appears and the kinds of problems it aims to solve,
  • the List of Figures provides the figure number (e.g., FIG. 1) and a brief description of what the drawings illustrate,
  • the Detailed Description serves the primary purpose of describing one or more specific examples of how the invention may be implemented, which are referred to as “embodiments” of the invention, and
  • the Abstract is a short summary of the written description (limited to 150 words).

The purpose of the written description (in particular the Detailed Description) is to describe the invention such that a person skilled in the art can make and use the invention. For example, the written description should step the reader through the drawings when discussing the elements (e.g., the parts of the drawings with a reference number) of the invention. The written description should also describe how the elements relate to one another.

With respect to the claims, the written description should provide a thorough description of claim terms, with examples of each term. For example, for important nouns or verbs in a claim, ensure that the Detailed Description provides examples and illustration in the drawings. Also, make sure that the exact terminology used in the claims is also be used in the Detailed Description.

A. Complete

Because it is not possible to supplement the written description once the patent application has been filed (e.g., add descriptions of additional features or example use cases), it is important to ensure that the written description is complete and covers all elements, features, and other aspects necessary to describe the various ways to use or implement the invention.

Adding additional description, drawings, or examples

You protect only what you describe, so write as much as possible. Once the patent application is filed you cannot go back and supplement the written description or drawings.

B. Enabling

The written description must be enabling. The patent laws require that the patent application describe the invention in sufficient detail to enable a person having “an ordinary amount of skill in the relevant art” to, after reviewing the application, develop and use the invention.

Thus, if additional details may be necessary to satisfy this requirement, make a note of these.

C. Best Mode

The written description must disclose the “best mode” contemplated by the inventor for carrying out the invention at the time the application is filed.

Thus, the inventor should make sure that the Detailed Description completely describes the preferred embodiments for practicing the invention.

No Explicit Identification Required

The best mode does not need to be identified explicitly in the written description.

3. Then Review the Claims

The claims are the most important part of the patent application because they recite the scope of legal protection we are seeking for the invention. They are the numbered paragraphs near the end of the specification and begin with “What is claimed is”.

Each claim serves as a definition of subject matter we are seeking to protect. Different claims may focus on different aspects or features of the invention. Claims that refer to other claims (called “dependent claims”) are, by definition, more narrow than the respective claims they reference. This is because a dependent claim includes everything in the referenced claim plus the additional limitations of the dependent claim. A limitation in a dependent claim does not limit the scope of the corresponding independent claim to which the dependent claim refers.

When a patent issues on the invention, it will be the claims that determine whether a product or process is infringing. In this way, each claim may be thought of as a definition of the minimum that is required to infringe. For example, a method claim comprising a set of steps would be infringed by a computer system that performs all of these steps, regardless of how many additional steps it may perform. The claims should be sufficiently broad to cover variations you can think of, but not so broad that they cover any prior art of which you are aware.

Given the importance of the claims, keep the following questions in mind as you begin your review.

  • Do the claims actually cover what you think you have invented?
  • Is every element included in the claim necessary?

When it comes to claims, less is more and including elements in the claims that are not required for the invention to operate and maintain its novelty will result in claims that are unnecessarily narrow and easier for competitors to design around to avoid infringement.

If the element is important, but not essential, then it may be best to include the element in a dependent claim.

Along similar lines, consider whether there are words in the claim that are unduly limiting. Ask yourself whether a more generic word can be used, or whether a word is even necessary at all.

Questions or Suggestions?

It’s important to me that this article is helpful to you. If you have any questions on the article or suggestions for further clarification, please reach out to me and let me know.

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