Patent Application Requirements

Three Requirements and a Practical Requirement for Patent Applications

Hi, I'm Rich Beem. I'm a patent attorney in Chicago. And I would like to talk with you about three requirements for patent applications and a fourth practical requirement. The three requirements that are stated in the statute that's in the patent law of the United States and number one, there has to be a detailed written description of the invention. And when I saw detailed I mean detailed. You would not believe how detailed a patent application needs to be. And that's one of the things that we provide as patent attorneys is we write up patent applications in sufficient detail so they're going to have a good chance in being issued as patents.

Number two, a patent application needs to enable one that is skilled in your technical field to practice the invention. It can't leave anything out. It has to be enough so that when that skilled person picks up the patent application they will know how to practice the invention successfully, just in the same way that you know how to practice the invention successfully. So that's the second point. It has to enable one to practice the invention. And that's related to the detailed written description.

The third requirement is that the best mode has to be disclosed. That's a point particularly in US patent law. In the US Patent and Trademark Office you patent application has to disclose the best way of practicing your invention, the best mode. You can't keep the best mode as a secret and just put in well, here's a way that works but not very well. Let's see if this will get us our patent and well keep secret the best mode. No, that's not allowed, because one of the purposes of the whole patent system is to disclose to the world what your invention is. And what you get in return for that is you get an exclusive right to practice the invention for 20 years from the filing date. But then after that 20 years everyone gets to practice your invention. And in the meantime what you want to do is keep making improvements and get additional patents so that you're always a step ahead of the game.

So those are the three requirements. Detailed written description, best mode is the third one and the second one to enable one a skill in your technical field to practice the invention.

Now I mentioned there's a fourth requirement. This is not actually in the statute, but it's a practical requirement, particularly if your invention, like many inventions, is a mechanical kind of a thing, it's a product that can be shown in a drawing. If it can be shown in a drawing, and some things can't be, a chemical composition might not be possible to be shown in a drawing, but if it's anything mechanical, if it's anything that you can hold, if it's something you can take a picture of, then it's something that can be shown in a drawing. And all the details have to be shown in a drawing. And the whole defining characteristic is what is it that's claimed as the invention? Anything that's claimed has to be described and it has to be shown in the drawings.

Why do I tell you this? Because I want you to do well with your patent application. You can prepare it on your own. That's permitted, but if you choose to have a patent attorney write up your patent application and file it for you, and negotiate it, and prosecute it through the patent office to issuance of a patent, that's the kind of thing that I do every day. If I can help you, please call me, 312-201-0011. Thank you for joining me.