Jeffrey G. Sheldon’s How to Write a Patent Application (Third Edition) provides expert insight and guidance on the full patent application process. Here are Sheldon’s 7 tips to speeding up the patent filing process:
- File the inventor’s original disclosure document or draft scientific paper as a patent “application” by adding an abstract and a single claim. Although such an application would be nowhere near the quality of an application prepared using the procedures of this book, assuming that the disclosure by the inventor satisfies the basic requirements of 35 U.S.C. § 112, at least a filing date will be obtained. Moreover, even if the application does not satisfy the U.S. disclosure requirements of 35 U.S.C. § 112, it may be sufficient for many foreign countries. This basic application can then be converted into a quality application by filing a continuation-in-part application as promptly as possible. Clearly this approach gets an early filing date. However, one disadvantage is the increased cost of filing two applications. Another disadvantage is that the one-year priority date for filing in foreign countries begins to run on the date of filing of the first application, which means that the decision of whether to file a foreign application needs to be made earlier, and costs associated with filing foreign applications are incurred earlier.
- During the initial meeting with the inventor, draft at least the broadest claim, and preferably some of the dependent claims. As discussed below, preparation of the claims is the most critical and difficult part of an application. It is efficient and effective to prepare the claims when the inventor is readily available to provide instant feedback and while the patent practitioner’s mind is freshly acquainted with the merits and novelty of the invention.
- Forego a novelty search, or have the novelty search done in parallel with drafting the application. As discussed in chapter 5 of the book, novelty searches are often ordered before preparing a patent application. However, when time is of the essence, it may be necessary to forego the novelty search, or conduct it in parallel with preparation of the application. When the novelty search is conducted while the application is being prepared, once the search results are available, the application can be polished and the claims modified as required, based on the search results.
- Order the drawings as soon as possible. Preparation of the drawings can be the longest lead-time item due to the schedule of draftsmen. Get the drawings on order promptly.
- Do not wait for the drawings to prepare the application. Many practitioners wait until the drawings are available before beginning the application. An advantage of this procedure is that the reference numbers can be placed on the drawings as the specification is prepared. However, when it is important to file promptly, rough sketches of the invention can serve the same purpose for preparation of the application. Although some time is lost when the reference numbers are added to the draftsman’s drawings, that lost time can be sacrificed when filing early is important.
- Use the inventor’s drawings or drawings prepared by the patent practitioner for filing. The inventor may have some drawings of the invention, or the patent practitioner may be a sufficiently skilled draftsman to prepare rough sketches. If those sketches are sufficient for filing, they can be used for that purpose when it is important to file early. Formal drawings can be prepared later by a skilled draftsman.
- File the application without the formal papers, including the declaration. A week or more can be lost while the inventor reviews the application and signs the declaration and other papers. It is possible to file without the declaration and formal papers. A disadvantage is that the Patent Office charges a surcharge for filing the application piecemeal. Another possible disadvantage is that the inventor or inventors may have problems with the application and not like it. If the claims are not satisfactory, it may become necessary to file a preliminary amendment under 37 C.F.R. § 1.115, which adds to the expense of filing the application. If something is incomplete or inaccurate in the specification, then it may become necessary to file a continuation-in-part application. In the latter instance, the original filing date may be lost, and thus the fees incurred for filing the first application would have been for naught.
TO LEARN MORE ABOUT THE PATENT FILING PROCESS, READ:
How to Write a Patent Application (Third Edition) Jeffrey G. Sheldon (Leech Tishman Fuscaldo & Lampl, LLC)
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