Do you need a design or utility patent application?

Are you trying to protect the functionality or the appearance of your idea? If the appearance (how it looks) is what matters, then a design patent application may be the right type of patent application. If the unique features of your concept are functional or structural, then consider filing a utility patent application. In some cases, it may make sense to file both design and utility patent applications. Here’s a helpful post elaborating on the differences between design and utility patents.

A design patent application will mainly comprise drawings showing different views of the product, namely, top, bottom, front, rear and side views. You should pay attention to the drawings to see if any trivial features should be drawn in broken lines. There’s not much in the written specification to review other than to make sure the descriptions of the views are accurate, and the title is correct.

If a utility patent is your goal, then you have the option of filing a provisional or nonprovisional patent application. Filing a provisional application may save some money, but understand the risks and make sure the disclosure in your provisional application will support your subsequent nonprovisional application.

What makes for a good utility patent application?

If you plan to file a utility nonprovisional patent application, then expect rejections. So is a good utility patent application one that avoids rejections? Not necessarily. What if I were to tell you that a utility nonprovisional patent application that gets allowed easily might not always be a good thing?

It seems counterintuitive, but a utility patent granted without rejections may indicate that the scope of the claims can be broadened. We can apply strategies to get a utility patent granted sooner, but speed is not the determining factor of a utility patent application’s strength.

What ultimately matters, however, is the claim scope. To enable more flexibility in claim scope, you must have a thorough and accurate disclosure. Let’s take a closer look at what goes in a patent application. Hopefully, you’ll gain some helpful tips on how to review a draft so that you can spot any issues before your patent app is filed.

What do you look for in a draft nonprovisional application that has not been filed?

There’s nothing quite like a long legal document to help you fall asleep. When you’re faced with pages upon pages of drawings and text, what exactly will help you determine if you have a robust utility patent application?

Here are key questions to keep in mind if you are reviewing a draft patent application that has not yet been filed:

  1. Does the detailed description (written description) accurately describe your invention?
  2. Does the detailed description completely describe your invention, including variations and alternatives?
  3. Do the drawings illustrate the key unique features of your invention? Have any key features been left out of the drawings?

Thoroughness and accuracy are the key ingredients of a good nonprovisional patent application. If the answer to any of the above questions is no, you still have the opportunity to correct or add to the disclosure before the nonprovisional is filed.

Aside from the written description and drawings, you want to have the right framework for reviewing the claims. So how do you review utility patent claims?

What do you look for in utility patent claims?

Focus on the independent claims. If forced to choose, I would err on the side of being broader. Chances are, the examiner will reject your independent claims based on cited prior art which will give you an opportunity to amend the claims to narrow the scope.

Take a look at the following diagram of a claim set. Notice how independent Claim 1 is broad because it includes only two elements, A and B:

Utility Patent Application Claims

If Claim 1 were allowed, it would cover any product that has at least features A and B.

Dependent Claims 2-4 add further features, such as C and D. This is why a highly detailed description is important. The detailed description and drawings must disclose all unique features adequately, including C and D, in order to provide support for claiming such features. If your description and drawings did not show D, for example, you would not be able to claim D.

Pay close attention to any language in the independent claims that seem too limiting for you. For example, take a look at independent Claim 5 above, which recites B and C. Does such an independent claim include a particular component or feature that seems trivial?

Would competing products include feature C? If not, point that out to your patent attorney. It may make sense to delete limiting language in the independent claim and possibly move the feature to a dependent claim. Perhaps independent Claim 5 should be rewritten to recite B and D, for example, if D were more important than C.

What if you want to make changes after your nonprovisional patent application is filed?

If your nonprovisional application has already been filed, you cannot add new matter to your submitted utility application. Make sure your nonprovisional application is as detailed and complete as it can possibly be before filing.

You can, however, file a CIP application with your desired modifications and additional features. The CIP application is considered a child application, or a continuing application, while your first nonprovisional is considered the parent application. You’ll end up with two utility applications so you may decide to abandon the parent application if it does not make sense to pursue it any further.

If it’s early enough, you may even be able to file a petition to abandon the parent application to block it from being published.

Need to file a patent application?

Email US patent attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you file a strong patent application.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com