Prepare a Patent

After your caveat has been read and approved by your instructor(s), begin the testing and revision necessary to transform a caveat into a patent. Your patent application should include three major parts: [11]

  1. Preamble: Here you establish what is novel about your invention. Under current patent law, the inventor is obligated to cover the 'state of the art' for the patent examiner, though the examiner does an independent check. In your case, the 'state of the art' is in the exhibits at the end of this packet. You need discuss only those parts that are relevant to your invention; your purpose is to show that your improvements on the state of the art are both novel and useful and go beyond what any ordinary expert 'skilled in the art' could do. If this all sounds vague, it is! The onus is on you to sell the idea that you have invented something, not merely 'tweaked' devices that are already widely available. For example, Bell had to spend hours in court establishing that his telephone was based on novel principles and not just a 'knock-off' of devices like a telephone invented by Philip Reis over a decade earlier. Bell contended that Reis' telephone could only send musical tones and not the human voice, because Reis did not understand the undulating current which formed the basis of Bell's patent.

  2. Specification: Here you provide a clear picture of your invention and how it operates. This section should make reference to figures that illustrate its design and operation. These figures should be clearly labeled. (See Exhibit 1, Bell's patent no. 174,465 for an example.) In your cases, we know you are not expert electrical inventors, so your patent can contain your best attempt to describe how your system ought to work--explain the principles as well as you can. Bell's electrical and mathematical knowledge was shaky, and he carefully avoided going into too much detail on certain aspects of his devices. In contrast, you should go into detail, so we can help you learn more about the physics of these devices.

  3. Claims: This is the most important part of your application. An examiner goes through each application claim by claim, deciding what to allow. You should claim every feature of your invention that you believe to be new or novel. It is probably better to claim too much than too little; typically, an examiner refuses to allow many of an inventor's claims, but some that you wouldn't expect might stand. Bell, in particular, wrote claims of astonishing breadth and covered both telegraphy and telephony. His actual devices worked poorly, but his patent application was a masterpiece (see Exhibit 1).

For more information on patents, look at the U.S. Patent Office Homepage or the Shadow Patent Office Homepage

Unless otherwise noted this page and all its contents and subdocuments are copyright 1994 by Michael E. Gorman