People who invent unique products and processes need patent prosecution attorneys to apply for government protection of their inventions. Patent application lawyers are uniquely qualified to file your patents with the U. S. Patent and Trademark Office, as they know what to file to show the unique quality of your invention and can clarify precisely why it differs from other similar patented inventions. The process is complex and a patent prosecution attorney usually has a related technical background. For example, a patent application attorney working on new cancer drugs may have a microbiology degree, or one working on new operating systems may have a computer science degree.

How to Prepare For a Patent Application

1.    Identify the problem solved by your invention

This is needed to get a good feel for what you want to stop others from doing, namely being able to solve the problem you have solved but in another way. The better you do this the better you will be able to protect your invention and give it value through a patent, and the less time your patent attorney will have to take in preparing your patent application. Saving the time of your patent attorney will save you money.

2.    Identify how your invention solves the problem.

This is the second step needed to get a good feel for what you want to stop others from doing, namely solving the problem in the same way as you have solved. The better you do this the better you will be able to protect your main invention and give it value through a patent, and the less time your patent attorney will have to take in preparing your patent application. Saving the time of your patent attorney will save you money.

3.    Identify any other ways to solve the problem.

This is the third step needed to get broad patent protection value. Your attorney can put into the patent application a description of these other ways in order to try to also add those ways to the exclusive rights covered by the patent. The better you do this the better you will be able to block other people from getting around your patent using any of those other ways. This also helps you better understand what you really had invented and what is really important.

4.    Draw Your Invention

If your invention lends itself to a drawing pin the law requires that your patent application included drawing. Your patent attorney does not need blueprints, but rather artistic sketches that show how the invention is made and how it is used. The drawings should be of the best way you know of doing your invention and must be sufficient to enable a person having ordinary skill in the art to which the invention pertains to reproduce the invention. Otherwise, you haven't fully disclosed your invention in a way that the public can make it when the patent expires. If you don't fully disclose it, any patent issuing from your patent application is at risk of being declared invalid due to having an in adequate written description.

5.    Write Up A Detailed Description of Your Invention

Now that you have a drawing with as many figures as are needed to show your invention and any alternatives to solving the same problem, you are ready to write up a detailed description of your invention, referring to the drawings as necessary. Use reference numbers to refer to the parts of each figure of the drawing. One simple way to do this clearly and without confusion is to start Figure 1 with reference number 100, Figure 2 with reference number 200, Figure 3 with reference number 300, and so on. Use the same number for the same part in every figure. So if you have fastener 123 as the 23rd part shown in figure 1, use reference number 123 when referring to that fastener in any other figure. That way, anyone seeing a reference number knows the first drawing figure in which that part appears and can follow through the other figures to see where that part is also found. Do not skimp on reference numbers, they are free and they really help understand what you reference. Every part you d

6.    Do a GAPS Patent Search

Google has set up a nice patent search program that is free and that is relatively easy for novices to use to do a simple preliminary screening patent search. The better you utilize this "Google Advanced Patent Search" or "GAPS", the better you will understand what a patent actually looks like and what other patents already exist directed to the problem your invention solves. To navigate to GAPS, just go to any Google search window and type in "Google advanced patent search" and the first listed link will be to the page you want. Experiment with the various fields and you will quickly find out how it works sufficient to do a quick preliminary screening search. If you find your invention already patented, STOP, you have just saved yourself thousands of dollars and hours and hours of time since you cannot re-patent a previously patented invention. If you do not find it, you should find a number of patents that are somewhat similar and get many ideas as to how you might improve your drawi

7.    Document Your Dates

You DON'T actually need to tell the US Patent and Trademark Office your date of invention to file an application, unless you get into a priority dispute or have to prove that someone else derived their invention from you. That date may be very important if you are ever involved in litigation, and contemporaneous documentation is much more believable than dates fabricated later on. Certain kinds of documents are relatively indisputable, so for example, save receipts for materials you purchased to make any prototypes, letters from other people about your invention, any agreements you make with anyone relative to your invention, and any early sketches or descriptions.

8.    Do You Need a Prototype?

NO, the US Patent and Trademark Office doesn't want them because it has no room to store them. Prototypes have not been required for more than a century for this reason. The PTO wants written descriptions and drawings and or now prefers that those be in electronic form for ease of storage and use and duplication. What used to take the PTO acres and acres to store or is now stored on a simple hard drive. It used to take a huge search around to hold all the copies of patents grouped according to subject matter classification for use by the public and patent examiners in searching. Now that is all digitized and available through computer terminals and online (for example, in the GAPS database referred to above). If you think it will be important to prove your invention works, a video in digital form might well be worth saving. Such a video will certainly help prove your date of invention, if you make sure your video is dated.

9.    Learn the Difference Between a Non-Provisional Utility Patent Application and a Provisional Utility Patent Application

A provisional application is a simpler type of application design to be filed quicker at less cost on a temporary basis. A provisional patent application is NOT a patent, it is only an application. In order to obtain a patent a non-provisional patent application must be filed. However, there are many advantages to filing a provisional application, and you will want to discuss that with your patent attorney. A provisional is particularly useful if you need or want time to tweak or improve the invention, arrange for marketing, arrange for distribution, arrange for manufacturing, raise capital, attract investors, etc. However, if you need to get your patent issued as quickly as possible. You 10 want to start out by filing a non-provisional application so the application can be more quickly examined through special prioritized examination procedures available only for non-provisional applications.

10.  Keep Your Trap Shut until You File

Disclosing, selling, or even offering to sell, the invention may cause you to lose your all rights to get a patent, particularly in foreign countries. Better safe than sorry here. Before you make any such disclosure or sale or any other public mention whatsoever of your invention, you need to see a patent attorney. Patent attorneys are skilled at maintaining the legal secrecy of your invention by suitable secrecy agreements if you need to disclose the invention to someone in order to build it or test it.

11.  Identify other possible inventors

Not every person that helped with the invention is necessarily an inventor. If somebody just supplied materials or followed your directions, they are likely not inventors. However, if someone else contributed and essential non-obvious part of the invention, they are probably a joint inventor. In fact, if someone else made the only non-obvious part of the invention, they and not you, maybe the inventor. Make a list of every person that helped with the invention or that might think they are an inventor, listing when and what they did. Give the list to your patent attorney. Intentionally leaving off an inventor is a form of fraud and can lead to the patent being declared invalid.

12.  See A Patent Attorney. Do not do brain surgery on yourself.

Patent applications are one of the most sophisticated legal documents because they combine technically sophisticated concepts that are, by law, not obvious, with complex patent law not obvious to most people, INCLUDING YOU, special procedures and formats required, and knowledge of past litigation up to the Supreme Court. Knowing the technology is not enough (in fact it often works against you in writing an patent application). Most assuredly, YOU DO NOT KNOW THE LAW, RULES or PATENT OFFICE. (Think you do? Quick, what is 102a, 102b, Rule 56? what is a Rule 132 affidavit?) That stuff takes years of training. Besides, a patent attorney can help you do your part better. It is the cost of doing business in patents. DO NOT do-it-yourself. You will regret it and will need one when the patent examiner rejects you, and then it will cost you even more. So get one NOW. Seriously, do it right or don't do it at all. It is that important!