Patent Quality: Considerations to Draft a Quality Patent Application

What makes a quality patent application? Utility patent applications must meet several criteria to qualify for patent protection:

• Formalities (style, format, etc.)
• Eligibility
• Enablement
• Definiteness
• Novelty
• Non-Obviousness

Keep in mind these are the requirements to utility be awarded protection, after extensive examination from a technical advisor in the patent office. These requirements are not necessary to file a patent application—to get a filing date and call your invention “patent pending”—but if you ultimately want to get a patent you can enforce, then you must meet all these criteria to the satisfaction of the patent examiner.

Formalities. While non-provisional utility patent applications are subject to many requirements in order to be accepted and given a filing date, provisional patent applications have fewer formal requirements. This is partly because the provisional patent application is never examined, rather it’s a placeholder for your later non-provisional patent application if you decide to pursue examination and issuance of a patent. While not quite this simple, you can think of the provisional requirements as 1) following specific filing procedures, and 2) paying the required government fee. Aside from these requirements, you can submit pretty much whatever you want and get “patent pending” status for whatever you file. There are reasons to be much more comprehensive with the application formalities, but you really don’t have to at this point.

Eligibility. Like formalities, eligibility is quite easy to satisfy, if you have a credible argument that your invention does something useful. There isn’t a qualitative aspect to this requirement, except for a few types of inventions that are categorically rejected, like time machines, pure software, mathematical algorithms, and so forth. Again, there are many reasons to be explicit about the utility of your invention, but if your invention doesn’t fall into a prohibited category (or isn’t within certain categories that the patent office is scrutinizing ad nauseum currently), then you should be able to satisfy this requirement without too much effort.

Enablement. The patent application needs to contain enough disclosure to enable someone who is also skilled in the same technology to be able to make and use your invention. That doesn’t mean they would have permission to make and use it, only that you described it well enough they could make and use it based on your description. It’s okay if someone would have to do a little extra research to add to your disclosure, as long as the extra effort isn’t considered “undue experimentation” (for which there’s a lengthy legal test).

Definiteness. Your invention must be claimed in the final non-provisional patent application using very detailed and descriptive language, with clear boundaries (again, to the satisfaction of the patent examiner). Ambiguous terminology, poor grammar, and overcomplicated claiming structures might be your downfall here, if you’re not familiar with how the patent examiners are taught to review claims for definiteness. While you don’t have to even put claims into your provisional patent application, there are several potential benefits, both in the U.S. and in foreign countries, to include some well-written claims in the initial filing.

Novelty. A patent examiner’s job is very easy when the invention you describe and claim is exactly the same as another existing “prior art” reference, which could be a prior-filed patent document, an internet reference, of an actual device on the market—they simply reject your application and move on. Something that is exactly the same is not novel and, consequently, not patentable. While you don’t have to know for sure whether something is novel when you file your application, there are reasons and circumstances when reviewing novelty before filing can be a huge time and money saver (and other circumstances when it is worth the risk of moving forward without reviewing novelty).

Non-Obviousness. Non-obviousness is the evil cousin of novelty. When someone asks, “how different does my invention have to be from an existing product to get a patent?”, this is the issue they are often unknowingly addressing. Non-obviousness simply means an invention should not be obvious in light of another prior art reference, or combination of references. There are legal tests established to make this determination, but the application of that test can vary greatly from one patent examiner to another and from one technology division of the patent office to another. Ultimately, the best defense in this arena is a good offense—provide as much description as possible at the initial filing to anticipate prior art rejections (or combinations of references) by describing every way in which your invention would be unexpected in the applicable field of technology. If you’ve discovered something everyone said was impossible, state that. If you’ve found unexpected good results with your invention, list those. Basically, use every opportunity to help a skeptical patent examiner (and your patent attorney) understand exactly why your invention performs better than existing solutions and, if possible, better than even the inventor would have expected prior to making the discovery or invention.

Although this list of criteria isn’t comprehensive in many ways, and there is a learned art to making the most of each criterion, understanding these basics will get you started on the best path to confidently pursue patent protection for your inventions.

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[This post was originally published April 30, 2018, on LinkedIn by Jeff Holman.]

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