How to Prepare a Patent Application

Patent Attorneys

Patent applications are preferably prepared by patent attorneys or agents, although the inventor(s) may prepare and prosecute their own application. Patent attorneys are attorneys who have a technical background and are registered to practice before the PTO. Patent agents are not attorneys but have a technical background and are registered to practice before the PTO.

Patentability of Invention

Before a patent application is written, the patent attorney reviews the invention disclosure submitted to the technology transfer office. Many times, the attorney will then recommend that a patent search be conducted by a professional searcher or the inventor supply certain pieces of prior art in order to further assess the patentability of the invention. After reviewing the disclosure and the research results, the attorney prepares an opinion as to the patentability of the subject matter in the disclosure.

Once a determination has been made that the invention is patentable, the attorney will begin to prepare the application. Often, the attorney will meet with the inventor in order to learn more about the invention and discuss the information to be included in the application. Moreover, the attorney will often ask the inventor to supply additional information and working examples for inclusion in the application.

Inventor Review and PTO Filing

Once the attorney has completed a draft of the application, a copy is forwarded to the inventor for review. The inventor should review the application carefully for accuracy and completeness, and ask any questions or make any changes deemed necessary. This is extremely important because once the application is filed with the PTO, no new information (so called "new matter") can be added to the application (unless a whole new application is filed). It is critical in patent applications containing nucleotide and/or amino acid sequences that the attorney and inventor carefully review these sequences because if a wrong nucleotide and/or amino acid is included in the sequence, most likely it cannot be corrected. Once the attorney obtains the inventor's approval of the application, the application is filed with the PTO.