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Patent Applications

Preparation of patent application

If your request to file a patent application is approved by TTO, you are expected to assist in drafting the patent specifications for your invention. The following information is required:

  1. Title. Keep it short, specific and descriptive.
  2. Cross-reference to related U.S. applications. Identify them by their application number, filing date and relationship to the present application.
  3. Field of the invention. Do not use language that is irrelevant or limits the claimed invention.
  4. Background. What specific problem/s is the invention designed to overcome?
  5. Summary of the invention. Make as broad a statement as possible and avoid language that limits the aims of the invention.
  6. Brief description of the drawings. Explain what views are being shown and the relationships between the different views.
    • Tip: Include an introductory disclaimer clause that the drawings are illustrative only and the invention is not limited to what is shown.
  7. Detailed description of the invention. This is a written description and should have sufficient detail that a licensee or other person can put the invention to use without undue experimentation. However, note that this is not a product specification. If the inventor believes there is a ‘best mode’ for carrying out the invention, this must be revealed. Reference numbers or characters must be used for all described elements, and every claim feature must be illustrated in the drawings.
    • Tips:
      1. Use broad language to describe the invention and include alternatives. For example, when describing an element, use a generic term (e.g. fastener) and describe as many alternatives as possible (e.g. screw, nail, clamp, glue). Thereafter refer to it by the generic name (e.g. fastener).
      2. Describe every aspect and every feature of the invention that you intend to claim for protection.
      3. Give at least three numerical ranges when discussing temperature, concentration, length etc. The broadest range would be the workable range, intermediate would have commercial interest, and the narrowest range would be the commercially very competitive range.
      4. Use sequential numbers to identify the described elements. Start off by using even numbers so that later inserted descriptions can refer to the missing odd numbers. Avoid using the same reference number for different, but similar, elements. For example, if there are three subsections in a drawing, label them 10a, 10b, 10c so it is always clear which subsection you are referring to.
  8. Claims. The scope of patent protection is defined by the claims, not the detailed description. The claims cannot be overly broad. Information on prior claims can be found in industrial journals, the U.S. patent office http://www.uspto.gov,and the World Intellectual Property Organization .
    Normally, TTO would work with the researcher and professional patent attorney in drafting the claims.
    • Tips:
      1. Draft the claims to cover all invention features – if you do not include a feature in the claims, you will be considered to have dedicated it to the public.
      2. Use a generic term for each element of your invention/discovery.
      3. Consider if each element is needed to carry out the invention.
      4. Combine several elements into a single general element.
      5. Draft broad dependent claims.
      6. Do not use reference numerals in the claims.
      7. Consider which statutory classes of claims are available (process, machine, manufacture, or composition of matter).
      8. Consider if the claims cover the most profitable portion of the value chain.
      9. Consider if the claims will be infringed by a single party.
  9. Abstract. This is only a searching tool and should not be used to interpret the claims.
    • Tips:
      1. Cannot exceed 150 words.
      2. Restate the broadest claim using simple English grammatical structure.
      3. Avoid patent jargon, such as "said", "comprises" and "means" – use such terms only in the detailed description and claims.
  10. Drawing(s). Drawings can provide powerful support to written descriptions. They must show every claim feature. While informal drawings are allowed for the purpose of filing, they must meet minimal requirements for publication. Photos are generally not permitted unless they are necessary to show features of the invention.