Five Common Patent Filing Pitfalls For Inventors To Avoid

Filing a patent is a necessary step for inventors to protect and promote their intellectual property. To build a robust IP portfolio, inventors must go through the often-tedious patent filing process. However, there are certain pitfalls that can jeopardize patent applications-

Lack of Prior Art Search

Conducting a thorough prior art search is crucial before filing for a patent.

A patentability or prior art search helps attain a 360-degree view of what is happening in the intellectual property landscape with respect to your invention. It involves examining existing patents and publications to ensure your invention is novel, non-obvious, and applicable to the industry.

However, inventors do not always possess the expertise or tools required to analyze publicly available literature thoroughly. Patent claims and language are complex, and it is easy to miss significant details. Moreover, the scope of prior art is not limited to its existence in patent publications- prior art can be anything that dates back and uses a similar technology for a similar purpose. It is best to rely on an IP expert to conduct a detailed prior art search to ensure your patent application gets accepted.

Ambiguous Explanation

Inventors often fall into the trap of unclear invention explanations and generalized descriptions.

A patent application with a clear and comprehensive description of the innovation, its features, applicability, technology use, and more serves as a holistic guide to your innovation. In such a scenario, using vague language, inconsistent terminology, and broad descriptions can backfire. In other words, what might seem like an obvious term might be jargon for the patent officers reviewing your patent application.

A detailed description of the invention encompassing functionality, real-world use cases, probable future variations, and modifications can strengthen transparency and understanding.

Claims Too Broad or Too Specific

Using overly broad claims in patent applications threatens patentability. Patent claims define your invention and determine what to protect. If the claims are too wide, the application lacks specificity in describing the invention. Broad claims are also prone to being rejected due to prior art overlap.  

Similarly, being too particular about patent claims may also hurt your application, as the claims narrow down the scope of the invention. Instead, start with a general invention description, provide appropriate use cases, and avoid vague language while drafting specific claims. In other words, keep your claims broad enough to protect from infringement and future modifications and narrow enough to prevent overlap with prior art.

Incomplete Disclosure

Patent applicants are legally obligated to disclose all relevant information to the patent office during the patent application process. Inventors must be transparent in disclosing all known prior art and maintain the ethical standards of the patent application process.

Insufficient disclosure can lead to application rejection or invalidation in case of a granted patent.

Do-it-yourself Patent Filing

Inventors find patent drafting and filing more economical, executing the entire process without any professional help. While it might make sense to draft a patent application all by yourself, patent drafting is more critical and involves thorough legal and technical expertise.

Professional guidance from a patent attorney or agent ensures the accuracy of your filings and safeguards your invention from potential infringement.

The patent filing process requires careful attention to detail and legal expertise. By avoiding these common patent filing mistakes, inventors can ensure their patents are valid and make a strong application.