4 Common Patent Mistakes

The United States patent system is arcane and convoluted. Its intricacies are boundless, sometimes leaving even seasoned patent attorneys scratching their heads.

Although the processes for filing a patent application and obtaining an issued patent are complex, it is almost always a worthwhile endeavor. This is because a patent grants the owner the exclusive right to produce and sell their invention.

Unfortunately, many mistakes are commonly made throughout the patent prosecution process. Avoiding these mistakes helps to ensure that your intellectual property gets the protection it deserves.

Let’s examine some of the most common mistakes that are made in connection with patent applications.

Waiting Too Long to File

The process of obtaining patents is time sensitive. Waiting too long to file an application may mean that the inventor entirely misses out on the opportunity to obtain a patent.

The U.S. patent system is a “first to file” system. This means that the first person to file an application for an invention has the right to obtain patent protection. Also in play is the one-year grace period that is available under U.S. law.

This grace period makes it possible for a company or individual inventor to market, sell or otherwise publicly disclose their invention up to one year before they file a patent application. For example, if you announce a new product at a trade show in June of 2021, you’ll need to file a patent application in the U.S. covering that product before June of 2022.

The problem with publicly announcing an invention and filing a patent application subsequently is that someone else might steal your idea. If they are able to file a patent application for your invention before you do, then they may be legally entitled to a patent.

This is bad enough, but here is an additional reason to consider filing a U.S. patent application before public disclosure of your invention. Patent protection may not be available in many foreign countries if your product was publicly announced before a patent application was filed. If you expect to have an overseas market for your product, then it’s smart to get a U.S. patent application filed as one of your first steps.

Forgetting Deadlines

It’s vital that you file a patent application before publicly disclosing your invention, but that’s not the only deadline that it’s necessary to bear in mind.

For instance, examiners at the U.S. Patent and Trademark Office minutely examine the claims of each patent application. These claims are compared to the claims of existing patents and patent publications. If the examiner determines that the claims of your patent application are too similar to the claims of an existing patent or publication, then an Office action is issued.

The applicant has an opportunity to respond to these Office actions with amendments and arguments, but it is essential that this is done within the deadlines. When you receive an Office action, pay special attention to the issue date of the document. Typically, you will need to respond to the Office action within two or three months of this date. Extended deadlines are available, but you have to pay increasingly expensive extension fees depending upon when you respond. If you fail to respond to the Office action by the final extended deadline, your patent application will be abandoned.

Another deadline to be aware of is the deadline to file a non-provisional or foreign patent application. If you file a provisional patent application in the U.S., then it is necessary to file a non-provisional patent application within one year of the filing date of the provisional patent application. Similarly, foreign patent applications must be filed within one year of filing a provisional patent application or a non-provisional patent application that does not claim priority to a provisional patent application.

Inaccurate or Vague Descriptions

It’s an unfortunate reality that many patent applications are filed without including sufficient detail. This makes them vulnerable to cancellation or other issues that may make the patent unenforceable. Accordingly, it is imperative that the invention disclosure be as precise and detailed as possible. Accurately describe each component, and ensure that you include drawings that fully illustrate the invention.

If drawings are included as part of the patent application, make certain that you include a brief description of the figures in the specification. This is a requirement of the U.S. Patent and Trademark Office.

Failing to Pay Required Fees

When inventors file patent applications without benefit of legal counsel, they frequently forget to pay the necessary fees. Examples of some fees include those that are due upon filing of the application. These include fees for filing, search and examination of the application. Additional fees may be due depending upon the number of claims that are included in the application. Failure to pay the fees within the designated time period will result in the abandonment of the application.

Ask Williams IP Law to Help with Filing Patent Applications

These and other common patent mistakes can be avoided when you work with a qualified intellectual property attorney. Your lawyer will use the invention disclosure that you provide to craft the application’s specification and claims. Thanks to training and experience, he can draft a patent application that provides a meaningful scope of enforceable patent protection.

If you want to make certain that your patent application is timely filed, appropriately detailed and doesn’t become abandoned through a failure to pay required fees, work with the patent prosecution professionals at Williams IP Law. Call us today to set up a complimentary consultation.

Author: Jeff Williams

Jeff Williams is an experienced mechanical engineer and lawyer that consults closely with clients in a strait forward and clear manner.  He brings a particular set of strengths and unique perspectives to the firm.    
 Jeff received a B.S. in Mechanical Engineering from Arizona State University in 2005.  He was an engineer for a number of years at a number of large corporations before pursuing his law degree.  He graduated from Texas A&M University School of Law (formerly Texas Wesleyan University School of Law) with a J.D. in 2010.  By combining his education and prior work experience into the field of intellectual property law, Jeff has developed key skills to fully assist clients.