Preparing a patent application

 

This is a collaborative process.

We need you to help us to get to grips with your specific area of technology and to understand in detail what it is you have created, why it is important to the development of your business, and how it differs from any known technology.

That last point – what’s new and unique about your invention – often proves crucial when the strength of the patent application is eventually tested by a Patent Examiner. In an ideal world we would always recommend conducting searches for existing “prior art” before preparing a patent application, to get the clearest possible picture of what is out there already and what distinctions we can draw between the known technology and your invention. In reality this decision often depends on budget.

You should be aware from the beginning that filing a patent application means disclosing your invention to the world. Eighteen months from its filing a patent application will, unless you choose to withdraw or abandon it, be published on the website of one or more Patent Offices and be freely available to anyone that cares to search for it.

And a patent application needs to give the reader a clear idea of what your invention is and does. To be valid, a patent must be sufficiently clear and complete to enable a skilled person to put the invention into practice for themselves. If there is some “ingredient X” vital to the implementation of your invention, it cannot be left out if the patent is to withstand later attack.

Keep in mind also that no technical information can be added to a patent application after it has been filed at a Patent Office. It is common to amend applications during the application process, to get around official objections, but these amendments cannot involve adding technical subject matter. This is another reason why you should give us as much technical detail as is available at the outset.

Once you have provided the necessary technical information it is for us to incorporate that into the specification that will form the main body of your patent application. This is to contain, among other things:

  • an explanation of the relevant background technology
  • a detailed description of one or more ways to put your invention into practice. This is normally the largest part of the specification. Drawings are often required
  • a set of patent “claims”.

The first of the claims is normally crucial. It is a short, pithy statement of the essential features of the invention. It will determine the scope of protection conferred by the patent: a competitor whose product or service lacks even one feature of the claim will escape infringement, so the claim needs to be written broadly enough to cover variants of your invention. At the same time, the claim must be specific enough to capture what it is about your invention that distinguishes it from the technology that has gone before in a non-obvious way. By convention a patent claim, however long it needs to be, contains no full stops, which can make its meaning and syntax a little difficult to decipher.

Crafting the claims is one of the key parts of the patent attorney’s role.

Once a first draft of the application is ready we need you to take a hard, critical look and to give us your feedback so that we can get to a version which is clearly in line with your thinking before we file it at the Patent Office.

The act of filing establishes an effective date for the application which can subsequently be retained for matching applications in overseas territories. Disclosures of the invention – by you or by others – after the filing date do not prejudice the patent application, so at this point, although the application process has a long way yet to run, you can get on with commercialisation of the invention without having your hands tied by the obligation to keep it confidential.




Working with us


We know the law but it’s you that best understands your technology and your market. Strong patents that serve your commercial goals are typically the result of a close and lasting collaboration between patent attorney and client. Client relationships are all important to Bartle Read and in order to foster them we are:


Flexible

 …in the way that we work with you. Lines of reporting should be set up for your convenience, not ours.

Proactive

We will often need you to take decisions or to give technical input, but in matters of patent law it is always us that should be proposing solutions to problems.

Plain Spoken

Patents and patent law are ridden with jargon but it’s our job to make sense of it for you, not to bamboozle you with it.
Got a question? Please don't hesitate to ask it Contact us

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Bartle Read
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