There are, of course, more than 3 reasons why a patent application might be ejected by a patent office, however, if you decide to take on the task of preparing and filing an application on your own, we've compiled some important take home tips to keep in mind:
1) Describing your invention
The description is the foundation of your application. As the inventor, you are the expert in how your invention works. In drafting the description, focus on describing the components that make up your invention and the way that those components work together, and avoid attempting to use legal or overly formal language. Stick to the language used in your technical field or use plain English. Once completed, take a mental break from the drafting and revisit it with fresh eyes later to check if you have captured every component and method of how your invention works. Questions to consider: Have you connected all the components and methods? Have you described every drawing in as much detail as possible? Have you provided enough detail to allow someone else to fully understand your invention? Have you covered all the variations or options that your invention has?
Oftentimes, inventors approach us only after examination has begun and an Office action has issued. If the examiner is objecting to new matter or non-enablement of the claimed subject matter, we may be limited in the extent of assisting because of the lack of detail or clarity in the description that was initially filed. While there are ways around this, it can get quite costly. If you feel that there might be a better way of capturing your invention, don’t hesitate to explain your concept to a patent professional and have them draft the description for you – it may save you time and money down the line.
2) Claiming your invention
The claims are the crux of your application, i.e., they tell the patent examiner what it is that you want to protect. You only get protection on what is claimed, and anything you claim must be supported by your description. Otherwise, you will find yourself facing down a new matter and/or non-enablement rejection. Thus, you should only begin drafting the claims once your description has been completed. This way, you can use the description as a guide to draft the claims and to determine if the description is lacking in disclosure. If a patent examiner decides that a claim is not supported by your description, you cannot go in and add support into that same application. Once an application is filed, you are precluded from introducing new matter.
This seemingly simple task is actually quite complex. Even highly specialized and experienced inventors who have filed applications in the past often come to us with an Office action that alleges unsupported claims or problems with the wording of their claims.
The benefit of having a patent professional draft both your description and claims is that you are optimizing the protection of your invention because there is a particular skill involved in connecting the claims to the description.
3) Is your invention new?
“I’ve never seen it before..." “I searched on the Internet and there isn’t anything like it...” “I’m sure no one has thought of this idea..."
The entire patent system revolves around granting protection for new inventions. It isn’t surprising then, that when filing, you want to know if anyone else has come up with the same idea as yours. Conducting a search may give you a close indication of what's out there and may also inspire how you choose to tweak your idea. Unfortunately, there is no absolute way of knowing your invention has already been entered in the patent process by someone else until you submit your application because only a patent office has access to the applications that are in the process of being reviewed.
On the up side, it’s very rare that your idea will be absolutely identical to someone else’s. This is where a patent professional can assist you in getting protection over the aspects of your invention that are different to what’s already out there.
To recap, when drafting a patent application, make sure to thoroughly describe your invention, create claims that are fully supported by that description and do industry research to see what similar inventions are out there. If you want expert assistance in filing your patent application, connect with one of our patent professionals at MU Patents at 858.263.7554.