7 steps to a quality patent application

Not all patents are created equal and not all patent applications lead to patents. This article outlines seven early steps to improve your prospects of securing a quality patent.

What is a quality patent?

A quality patent:

• has broad coverage so that imitators can’t get close without infringing;
• is robust so that it is more likely to survive a challenge and is therefore less likely to be challenged; and
• is easier to enforce so that it provides a stronger deterrent and is therefore less likely to be infringed.

The quality of a patent depends on how your invention compares to earlier publicly-known (non-confidential) technologies. A patent cannot validly cover older technology or anything that obviously follows on from older technology, so there is a trade-off between coverage and validity.

The wording is critical

A quality patent application includes:

• wording that optimises the trade-off between coverage and validity;
• other wording that covers less than the main definitions of coverage to provide fallback positions in case the main definitions of coverage prove to be invalid (e.g. when a patent examiner finds evidence of a relevant old technology); and
• other wording that gives you ‘basis’ to amend the definitions of coverage later on so that you can continue optimising the trade-off as more relevant old technology comes to light.

Step 1: Keep it secret

It’s important that the invention is kept secret (and that examples of the invention are not sold or commercially used) until an initial patent application is filed, although Australia, New Zealand, the US, Canada and some other countries have 12-month grace periods.

Step 2: Initial searching

Search for relevant publicly-known technologies. If there are worthwhile differences between your invention and the publicly-known technologies, there may well be room for a worthwhile patent.

Step 3: Find a registered patent attorney

Patent attorneys have years of legal training to learn how to write a patent application. A patent application prepared without this training is unlikely to lead to a patent and almost certainly won’t lead to a quality patent. You can check whether a patent attorney is officially registered here.

Step 4: Assess patentability AND the business case

Any patent attorney will be happy to provide preliminary comment on your chances of securing a patent and what the patent might ultimately cover, and to outline the patent application process and the applicable costs.

Step 5: Brief your attorney

Preparing a quality brief for your attorney enables them to work quickly and efficiently and ensures that the patent application properly captures the important detail. A quality brief not only describes the invention generally, but also:

• summarises the most relevant publicly-known technologies that you know of;
• points out the key benefits and corresponding physical features (and/or method steps) that set your invention apart from these publicly-known technologies;
• fully details these key features; and
• includes comments on potential variations of (and/or alternatives for) these key features.

Step 6: Professional searching

A professional search for relevant pre-existing technology is entirely optional but usually leads to lower overall cost and/or better patents.

Sometimes a search will reveal similar publicly-known technologies that do not leave room for worthwhile patent coverage. If so, the search is an inexpensive way to get the bad news.

Often searches reveal publicly-known technologies that leave room for worthwhile patent coverage limited in terms of the key features that set your invention apart from these publicly-known technologies. These search results inform the choice of wording in the initial patent application to better optimise the trade-off between coverage and validity. In contrast, if you first learnt of the same search results when a patent examiner raised them later on:

• you would have the cost of dealing with the patent examiner’s objections; and
• the patent coverage might be compromised if the original patent application does not provide basis for wording that is ideal in view of the search results.

Step 7: Study the initial patent application

Drafts of the patent application prepared by your attorney should be closely scrutinised and discussed with your attorney. Take the time to understand what the application does and doesn’t cover. Is there any further significant technical detail to add? Do any of the words have special meaning in your industry? At this stage, you have complete freedom to adjust the wording, whereas once the initial patent application is filed the opportunities for amendment are more limited, more costly and/or come with significant drawbacks.

Further reading

• Patent fundamentals
• How to patent an idea
• How much does a patent cost?