Drafting and Filing Your Utility Patent Application

Once the SHERMAN IP Invention Disclosure Form and attachments are provided, the initial interview has been conducted, any additional subject matter has been provided (if requested), and the patentability search has been reviewed (if ordered), a SHERMAN IP attorney thoroughly reviews all of the information in the Invention Disclosure Form and other materials; taking the necessary hours or days to gain a deep understanding of the invention. Based on this review, SHERMAN IP begins its internal process including completing pre-application documents.

At this stage, a first draft of the patent application is drafted by the SHERMAN IP Attorney. This includes modifying or creating figures, putting together a thorough description of the invention and any preferred embodiments and developing the claims defining the invention.

Prior to drafting the claims, a claim scope strategy is developed by the SHERMAN IP attorney based upon the invention as conveyed by, you, the inventor, taking into account the known Prior Art and an economic interest in providing a level of protection that is going to be valuable to you. This is very important in protecting your invention. When someone says that they “designed around the patent” they’re saying that the claims were too narrowly drafted and there was a way to achieve the intended result without being covered by the claims. The claims define the “meets and bounds” of the invention. The claims are the most important part of the application and determine the scope of protection for your invention.

A basic patent application should include the following sections, in order:

(1) Title of the Invention,
(2) Cross-reference to related applications,
(3) Statement regarding prior disclosures by the inventor or a joint inventor,
(4) Background of the invention,
(5) Brief summary of the invention,
(6) Brief description of the several views of the drawing,
(7) Detailed description of the invention,
(8) A claim or claims, and
(9) Abstract of the disclosure.

Once the first draft of the patent application is completed, it is provided to you by the SHERMAN IP Attorney. SHERMAN IP’s practice is to also include any questions or requests for further information in the first draft patent application. Once you return the first draft patent application with your comments and any questions, the SHERMAN IP Attorney may then contact you to review your comments, and hopefully the document can be placed in final form for your final review.

The United States Patent Laws require the each inventor to state under oath, subject to the penalty of perjury, that they are the inventor, or one of the stated original inventors, of the claimed invention in the patent application and that they authorize the patent application to be filed. Once the patent application is ready to be filed, SHERMAN IP will provide you with a Declaration to execute serving this purpose, and stating that you have reviewed the final patent application and declaring these statements.

The Declaration will also remind you of your Duty of Candor. This is a Duty that you have to provide any and all material information that you know about to the United States Patent Office that might affect the validity or scope of your claims. You don’t have a duty to find information, but if you know about information, your Duty of Candor requires you to tell the United States Patent Office.

The US Patent Laws also recognize that ownership of the claimed invention is initially with the person who created it. Therefore, SHERMAN IP may also provide you an Assignment where you transfer those rights to another person or entity. This is necessary if you have signed an Employment or other agreement agreeing to transfer your rights.

After all the parties have reviewed and approved the patent application, SHERMAN IP prepares all related documents and transmittal materials and files it with the United States Patent Office. SHERMAN IP sends any related Assignments for recording with the United States Patent Office as well. The United States Patent Office maintains the sole repository to record transfers of ownership of US patent rights.