Ultimate Guide to Patent Drafting

The inventor of a product can file for federal protection of certain elements of that invention by the United States Patent and Trademark Office. Drafting a patent application is a complicated process. It is always advisable to work with a legal professional with expertise in patent law when filing a patent. This is particularly true for complicated inventions. The patent professional will be able to assist with drafting patent claims that offer broad protections to the patent holder. Having broad protection is very important when trying to enforce your patent rights. If your patent protections are too narrow, it may open the door for other inventors to copy your invention with slight modification without infringing upon your patent rights. Even in you choose to work with a patent professional, it is important to understand the patent filing process.

In this article, we discuss the types of patent and the process for filing a patent application.


What are the Types of Patent?

There are three broad categories of patent:

The design patent is used to protect the ornamental or aesthetic attributes attached to an article of manufacture. The utility patent provides protections for machines, processes, articles of manufacture, and compositions of matter. The plant patent protections new genetic combinations of asexually produced plants.


What is Required to a Successfully Prosecute a Utility Patent?

Below are the steps necessary to secure patent rights.

Step 1: Determine what type of patent to file (utility, design, or plant).

Step 2: File an application for patent protection with the United States Patent and Trademark Office (USPTO). This includes paying the applicable filing fees.

Step 3: The patent applicant must prosecute the patent. This simply means answering any concerns or requests for additional information from the USPTO’s patent examiner. The process begins with the USPTO examined determining whether the claimed invention is patentable subject matter. This is discussed below. Then the examiner will do a patent search the USPTO database (and foreign filing databases) for prior patent filings covering the claimed elements. The examiner will then examine whether the claimed elements are already in public use or the subject of common knowledge. Any questions or concerns uncovered by the examiner will be presented to the applicant via correspondence.

Step 4 (If Applicable): If the patent is rejected, the applicant has the ability to file a request for appeal and reconsideration. The applicant may also file a new application. In either event, this requires additional filing fees.

Step 5: If the USPTO awards patent protections, it will notify the applicant. The patent application and award is then filed in the public directory.


What is Required Elements of a Utility Patent?

The role of the USPTO patent examiner is to determine whether the patent application complies with the filing procedure and whether the claimed invention meets the elements required for patent protection. The required elements are as follows:

  • Patentable subject matter – The categories of patentable subject matter are:
    Machine – A machine generally has moveable parts.
    Process – A process is a detailed manner of doing something.
    Article of Manufacture – The shape or structure of the invention is related to its function or utility.
    Composition of Matter – This is a new or previously unknown or recognized combination of elements making up a substance.
  • Novel – The claimed elements of the invention cannot be readily known by the public. This is true when the invention has been disclosed to the public for more than 12 months before the application. The invention cannot be the subject of a prior patent application within the US or abroad.
  • Non-Obvious – The patent examiner will determine whether the claimed elements of the invention are readily understood by a person having ordinary skill in the art (PHOSITA). If experts in the field readily know, understand, or employ the subject matter of the patent, it may be considered obvious. If something is obvious, it lacks the uniqueness to be protected by patent.
  • Useful – The invention must have an understood function or utility. The value of the function or utility is not in debate. It is simply important that the invention have an identified use. Otherwise, the invention will be considered abstract and not subject to patent protection. NOTE: A design patent is not required to by useful.


Elements of the patent application

A non-provisional patent application must include the following information:

Application forms – The USPTO requires use of standardized forms available on the USPTO.gov website.

Names of all inventors – Only the inventors can file for patent protection. This includes businesses that contract with or employ inventors to create the invention.

Residences of the inventors – This is included in the form application.

Name or title of the invention – It is recommended that the title be somewhat descriptive of the invention.

Patent agent or attorney and registration number (if applicable)

Address for correspondence – The inventor’s address or that of the legal representative.

U.S. Government agency with rights in the invention (if applicable)

Specification – This is the paragraph(s) explaining the invention and identifying the function or use.

Claims – These are elements of the invention that are claimed to be novel, non-obvious, and useful. Thus, these are the elements that are copy and commercialization by others. (NOTE: A design patent only has one claim. The claim regards the aesthetic or ornamental design of the invention).

Drawings – The utility patent must generally included detailed drawings of the invention. The claimed elements of the invention must be displaying and made readily identifiable. This is normally done by drawing arrows, numbering, and describing the structure and components of the invention.

Oath or Declaration of the Inventor – This is a declaration that the applicant is the inventor of the invention and all statements contained in the application are valid.

References to any prior Art – This is required when the patent relies upon an existing patent, or the patent application claims protections for advances beyond an existing patent. This is also used when the patent filing began as a provisional patent and is now being prosecuted as a non-provisional filing.



Intellectual property is a highly complicated area of legal practice. It is easy to miss an element of a patent application. If you need help with the patent filing process, our team of intellectual property lawyers are here to help.