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Mistakes happen for startups. Let's all face the fact that we have all made mistakes. Some of these mistakes come from inexperience or not having the right mentors or guidance. Some mistakes are made just because we have a lot to do, and need some form of reminder or management to ensure that deadlines are not missed. Startups and inventors sometimes do not get it right with their patents. Whether you are in Menlo Park, CA or in Florida, the first time doing something is very rarely a straight line.
Filing a patent application is a difficult process because it requires a blend of both legal and technical skills. An easy way to think of what a patent provides an inventor is to view patents as the title to your invention. Like the title to your car you want to ensure that it is correct and provides you the proof of ownership that you need to build a successful business, create wealth, and become financially free. Going to the DMV to correct mistakes can be tedious, time consuming, and costly. The same holds true for patents! Avoiding these mistakes can provide a streamlined and cost effective route to gaining patent protection for your new idea and innovation! Startups and small business owners operate on limited budgets that can sometimes not afford mistakes even though they should be budgeted for.
The title analogy simplifies the role a patent plays with respect to your invention because without a title to your invention anyone can make, use or sell your invention. This makes getting a patent a critical step in protecting your intellectual property and preventing others from making or selling your invention. However, the process is difficult, and many inventors make mistakes during the process. These mistakes can result in delays, or they can jeopardize the patent application making it unpatentable. In this article, we will discuss common mistakes to avoid when filing a patent application.
1. Failing to Conduct a Patent Search
One of the most common mistakes inventors make when filing a patent application is failing to conduct a patent search. The patent search step in the application process helps you determine if your invention is novel and has not been invented by another inventor. This is important because you do not want to spend time and money on a patent application if the invention has already been invented. Even if someone has not made an identical invention as yours, you can use the results of the patent search to determine what you can add to your invention to improve on customer acceptance or utility. These improvements can increase the inventions’ novelty and increase the likelihood of your patent being approved by the patent office. However, you need to be advised that conducting a patent search is nota guarantee that your invention is novel. Because the patent office does not publish pending patent applications until 18 months after the original filing or priority date. This means that the search cannot see the most recent inventions which are likely to be the most similar to your invention.
You can conduct a patent search using Google patents, the USPTO website or utilize paid patent search services. The recommended method is for you to hire a patent agent to conduct a patent search. A patent agent has the experience to think like the US Patent and Trademark Office and can give you an opinion as to the chances that your claims will be allowed which can save time and money in the long run. Learn about our prior art search (patent search) packages here!
2. Inadequate Patent Specification
The patent specification is the description of your invention, and it provides the detailed structure, function, and purpose of your invention. The specification must disclose how the invention works and how to use it. The specification is used by the patent office to determine if the invention is patentable.
A common mistake inventors make is not providing enough detail in the patent specification. The typical problems include incomplete or inaccurate descriptions of the invention, failing to include essential details, or not providing enough information to enable someone skilled in the art to make and use the invention. The specification builds the case for the patent and describes the invention, and it needs to avoid a series of issues to differentiate the invention from the prior art. In many cases, patents often do not obtain an allowance or granted because the specification was written to be narrow or miss crucial details that differentiate the invention from the prior art. For this reason, inventors with poorly written patents will end up spending more of their budget to correct issues with a poorly written specification. This causes a delay for the inventor to progress further in the patent process and issues with their company or business.
Because it is so important, and it is easy for mistakes to occur we recommended that you work with a patent agent to draft the patent's specification. The agent will help ensure that the patent specification is accurate and comprehensive which will increase the chances of a success.
3. Failing to Disclose Prior Art
Prior art refers to any public information that relates to your invention, including other patents, published articles, or public demonstrations. The patent office requires that an inventor disclose all prior art related to their invention. Failing to do so can result in your patent being unenforceable or invalid.
In many cases the inventor does not disclose the prior art because they are not aware of all the prior art related to their invention. A prior art search is critical to avoid this mistake so that you can disclose all prior art related to your invention. Working with a patent agent to assist you in identifying and disclosing all relevant prior art will help you ensure that your patent is allowed. As, 37 CFR 1.56, explains:
"(a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claim. The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98. However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct."
4. Poorly Written Claims
The claims are the patent and are the one of most important parts of the patent. The claims are the part of the patent application that when allowed by the patent office define what your invention is and what you can exclude others from making, using, offering for sale, selling, or importing into the United States. This section is the most important part of the patent application because it defines the scope of the invention that the patent protects. Drafting claims requires experience that is acquired over time and active practice, and a license from the USPTO. The claims must be clear, concise, and accurately describe the invention. If the claims are too broad, the patent may not be enforceable, and if the claims are too narrow, the patent may be easy to get around by competitors.
A common mistake is the use of ambiguous or indefinite language. This can result in the rejection of the patent application. Therefore, the inventor must use precise language and avoid broad or generic terms. Poorly written patent claims can seriously weaken your patent and make it difficult to enforce. If the claims are too broad, they can be easily challenged and invalidated due to prior art, making the patent essentially useless. On the other hand, if they’re too narrow, competitors can easily work around them, limiting the patent’s value. Ambiguous or vague language can lead to rejections from the USPTO or legal disputes over interpretation, while claims that don’t align with the patent’s specification may be denied for failing to clearly describe how to make and use the invention. In the end, a patent with poorly drafted claims might not offer the protection you need, allowing others to take advantage of your invention. To avoid these pitfalls, it’s essential to craft clear, precise, and well-balanced claims that maximize protection while minimizing risks. Poorly written patent claims can seriously weaken your patent and make it difficult to enforce. If the claims are too broad, they can be easily challenged and invalidated due to prior art, making the patent essentially useless. On the other hand, if they’re too narrow, competitors can easily work around them, limiting the patent’s value. Ambiguous or vague language can lead to rejections from the USPTO or legal disputes over interpretation, while claims that don’t align with the patent’s specification may be denied for failing to clearly describe how to make and use the invention. In the end, a patent with poorly drafted claims might not offer the protection you need, allowing others to take advantage of your invention. To avoid these pitfalls, it’s essential to craft clear, precise, and well-balanced claims that maximize protection while minimizing risks. Poorly written patent claims can seriously weaken your patent and make it difficult to enforce. If the claims are too broad, they can be easily challenged and invalidated due to prior art, making the patent essentially useless. On the other hand, if they’re too narrow, competitors can easily work around them, limiting the patent’s value. Ambiguous or vague language can lead to rejections from the USPTO or legal disputes over interpretation, while claims that don’t align with the patent’s specification may be denied for failing to clearly describe how to make and use the invention. In the end, a patent with poorly drafted claims might not offer the protection you need, allowing others to take advantage of your invention. To avoid these pitfalls, it’s essential to craft clear, precise, and well-balanced claims that maximize protection while minimizing risks. Poorly written patent claims can seriously weaken your patent and make it difficult to enforce. If the claims are too broad, they can be easily challenged and invalidated due to prior art, making the patent essentially useless. On the other hand, if they’re too narrow, competitors can easily work around them, limiting the patent’s value. Ambiguous or vague language can lead to rejections from the USPTO or legal disputes over interpretation, while claims that don’t align with the patent’s specification may be denied for failing to clearly describe how to make and use the invention. In the end, a patent with poorly drafted claims might not offer the protection you need, allowing others to take advantage of your invention. To avoid these pitfalls, it’s essential to craft clear, precise, and well-balanced claims that maximize protection while minimizing risks.Poorly written claims can significantly weaken a patent and limit its enforceability. Here’s how:
- Too Broad – If claims are overly broad, they may be easily challenged and invalidated due to existing prior art. This can render the entire patent worthless.
- Too Narrow – Claims that are too specific may make it easy for competitors to design around the patent, reducing its commercial value.
- Ambiguous Language – Unclear or vague claims can lead to rejection by the USPTO and legal disputes over their interpretation, making enforcement difficult.
- Lack of Enablement – If the claims don’t align with the patent’s specification, the USPTO may reject the application for failing to adequately describe how to make and use the invention.
- Unenforceable Patents – Poorly drafted claims can result in patents that fail to provide meaningful protection, allowing competitors to exploit the invention without legal consequences.
To maximize a patent's strength, it's crucial to draft clear, precise, and strategically balanced claims that provide broad protection while avoiding invalidation risks.
5. Missed Patent Deadlines
Patent applications have strict deadlines that must be met to avoid abandonment. The most critical deadline is the one-year grace period for filing a patent application after the invention has been publicly disclosed or offered for sale. Missing this deadline can result in the inventor losing the right to apply for the patent. The one year grace period is a very common mistake among inventors particularly in the software space, that build the invention first, then seek patent rights. Building a successful company requires startup founders to complete multiple tasks in parallel to meet their business goals and milestones.
Other important deadlines include responding to office actions issued, paying maintenance fees, and filing continuation applications. Inventors must be aware of these deadlines and ensure that all actions and responses are promptly addressed. Failure to meet these deadlines can result in the abandonment of the patent application or the loss of patent rights.
Conclusion
Filing a patent application can be a complex and time-consuming process, and the inventor needs to avoid mistakes that can delay or result in the application being abandoned. Conducting a patent search, disclosing all relevant prior art, providing a detailed patent specification, creating clear and distinct claims, and meeting all required patent deadlines, inventors can maximize the probability of obtaining a strong and enforceable patent.
Remember, it is always a good idea to seek the advice of a patent agent. Patent agents in most cases have years of technical training and have passed the patent bar and are licensed to practice at the USPTO. Their skills and knowledge will ensure that the patent application is properly drafted and filed. They can provide valuable insights and guidance throughout the process and help you avoid mistakes.
In conclusion, a successful patent application requires careful attention to detail, a thorough understanding of the patent law, an excellent technical background in the field of the invention and a willingness to invest time and resources in the process. By avoiding these common mistakes and seeking the assistance of a qualified patent professional, inventors can protect their valuable inventions.
