Business people are often at a loss when they learn that they only have seventy-two hours to file a utility non-provisional patent application in the United States. After this short or even shorter time period, they will permanently forfeit their invention pursuant to a statutory non-extendable deadline if they not submit the application. This is indeed a true emergency situation that could happen to anyone. However, there is a tough and difficult but successful approach in this ‘worst of times.’
An important goal for drafting the application is as follows: The patent application must enable a person in a particular industry to create and use the invention without excessive experimentation. For example, with a computer related invention, there must be sufficient information to describe its function. The application’s text and diagrams must also integrate programmed elements with other elements unless a skilled computer expert could do so without such disclosure.
Consequently, during those precious seventy-two hours the focus must absolutely remain upon drafting and often illustration of technical application information. If one were to divide these seventy-two hours into time allotments, there should be 71.75 hours spent on technical disclosure drafting and only 0.25 hours on claims. Why is this so? Because the only portion of the application that can be modified after the application is filed are the claims. Without this time allocation, there may not be sufficient technical information within the non-claim text and/or illustrations (as well as first set of submitted claims) to enable the invention’s creation and use. Under U.S. patent law this insufficiency cannot be remedied in this same application after submission to the patent office.
The patent application must also contain what is designated as the best mode of the invention. This is the best prototype as well as the best methods to produce and use the invention. If the invention is a method, then one must describe the best variation of the method for invention purposes. The final requirement of the patent application text is known as the written description requirement. The written description requirement is defined as (i) technical information in the application that (ii) confirms to someone skilled in the invention’s industry that (iii) the inventor had possession of all the necessary technical details when the application was submitted to the patent office.
During the seventy-two hours window for creating the application, the inventor(s) must be completely available to work with the patent attorney. This collaboration is both conceptual and physical, and it will be endure throughout each night and day. Similarly, the patent attorney must continuously work on the application with the inventor throughout this time period. If drawings are necessary, often a patent illustrator is not available at such short notice. Consequently, the attorney and inventor must draft and place the reference numerals on the drawings themselves as best they can. Professional drawing skill is not necessary under these circumstances. Instead the inventor and attorney must be sure that they accurately include all the features in the drawings with as much detail as required to meet these three technical requirements.
Professionally I have lived through this situation with what is known as a continuation-in-part utility non-provisional application. In two and one-half days I completed additional new drawings with reference numerals as well as substantial technical text. I am pleased to report that my client obtained the patent that resulted from this effort.
© 2011 Adrienne B. Naumann
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