Patents in the United States are governed by the Patent Act (Title 35 of United States Code) as amended by the Leahy–Smith America Invents Act. There are three types of patents: utility patents, design patents, and plant patents. The most common type of patent is a utility patent.
A patent application is best filed before any public disclosure of the invention. In the United States, there is a one (1) year grace period from the inventor’s own public disclosures of the invention to file a nonprovisional patent application or a provisional application for patent. You should be aware that certain international jurisdictions do not afford a grace period and any prior enabling disclosure of the invention in the United States may foreclose the grant of patent protection in those countries having an “absolute novelty” requirement.
An inventor is free to prepare his or her own patent application; however, you are well-advised to seek the help of a patent practitioner. The preparation of an application for patent and the conducting of the proceedings in the United States Patent and Trademark Office (USPTO) to obtain the patent is an undertaking requiring the knowledge of patent law and rules and USPTO practice and procedures, as well as knowledge of the scientific or technical matters involved in the particular invention. While a patent may be obtained in many cases by persons not skilled in this work, there would be no assurance that the patent obtained would adequately protect the particular invention.
An “invention disclosure” is a confidential document written to describe an invention. As an inventor, you need to set down in writing, both, a general description of your invention, as well as a detailed description of the complete version of your invention. The aim is to provide in highly specific terms the various nuances of each and every aspect of the invention. A qualified patent attorney can help you describe various options, combinations, and characteristics that make up several different versions (or, in patent parlance, “embodiments”) of the invention.
A description of the problems that the invention solves and the inadequacy of existing systems in solving these problems can be helpful. In addition, it is strongly recommended that you describe the previously unknown key features of the invention and explain why those features are not obvious in view of the existing technology and why those features are advantageous or valuable.
Recognize that no matter how brilliant your ideas are, even brilliant ideas may be excluded from patent eligibility because of the abstract nature of the ideas. In the words of the U.S. Supreme Court, “abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” Gottschalk, Acting Commissioner of Patents v. Benson et al., 93 S.Ct. 253, 257 (1972). As such, abstract ideas are excluded from patent eligibility based on the concern that “monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct., 1289, 1293 (2012).
However, where the invention involves a particular, practical application of the abstract idea, the invention may nonetheless be eligible for patent protection. A qualified patent attorney can help you determine patentability of an invention.
Written Description | Enablement
To obtain a patent, the “specification” section of a patent application must contain an adequate disclosure of the invention for which patent rights are sought. This patent law requirement is known as the written description requirement.
The patent law in the United States requires a complete disclosure of the invention such that a person of ordinary skill in the area of technology related to the invention can, after reading the disclosure, make and use the claimed invention without undue experimentation. This patent law requirement is referred to as the enablement requirement. The courts have stated that written description and enablement are separate, albeit intertwined, requirements.
The patent specification is a written disclosure of invention that is drafted to satisfy patent written description and enablement requirements as well as to define the claim’s scope. The level of detail needed in a patent application may vary depending on the simplicity or complexity of the invention and the level of ordinary skill of persons familiar with the area of technology related to the invention.
Inventorship | Conception
In the United States, a patent may be applied for only in the name(s) of the actual inventor(s). It is a basic patent law tenet in the United States that an inventor is the person(s) who contribute to the conception of the invention as claimed. If two or more persons make an invention jointly, they apply for a patent as joint inventors.
It is important to thoroughly analyze who should be named on the patent application. It is enough for a person to contribute conception to a single claim in order to be considered a joint inventor.
- Conception has been defined by the courts as "the complete performance of the mental part of the inventive act"; it is the "formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention," as it will be used in practice. Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986) (quoting 1 Robinson On Patents 532 (1890).
In the United States, the failure to correctly name the inventor(s) of a claimed invention in a patent application is a proper ground for rejecting the application or invalidating any patent that may issue from the application. A qualified patent attorney can assist in correctly identifying the inventor(s) that should be named in a patent application.
To obtain patent protection in the United States, the applicant must submit a patent application to the United States Patent and Trademark Office (USPTO). Patent prosecution is the process of shepherding a patent application through the USPTO to obtain the patent.