How to Draft Other Sections of the Patent Application. Episode 21

Final Episode on Patent Application Sections

This is the last episode on how to write the various sections of a patent application.

If you haven’t yet, listen to Episodes 9-20 to learn about each of the other sections.

In the last episode, I discussed how to claim benefit from an earlier-filed provisional application.

• That only applies if you actually filed a provisional application.

• If you did not file a provisional application and there are no other related applications, you can skip that section.

Additional Sections That May Apply

There are a few other sections that may apply, but they do not apply to most inventors.

I was almost tempted to say you could skip this episode, but you should at least be aware of these sections.

If one of these applies to you, I highly recommend hiring an attorney, as it likely means your situation and invention are complicated enough that filing on your own may not be a good idea.

1. Statement Regarding Federally Sponsored Research or Development

Did you develop your invention with federal government support?

• If yes, you must include this section.

• If no, you can skip it.

If your invention was developed with government support, you must include this sentence:

“This invention was made with government support under [identify the contract] awarded by [identify the federal agency, e.g., the National Science Foundation or the National Institutes of Health]. The government has certain rights in the invention.”

Most inventors won’t need this section because they did not receive government funding.

2. Joint Research Agreement Statement

This is different from having a co-inventor.

• This typically applies to large corporations or universities when multiple institutions collaborate on an invention.

• If this applies to you, you likely have an attorney filing your application for you.

If this does apply to you, you should not be writing your own patent application. Skip this section unless advised by an attorney.

3. Sequence Listing, Table, or Computer Program Listing Appendix (Submitted in Electronic Form)

Most inventors won’t need this section, but in certain situations, it is required.

Table Submissions

• Usually, tables are included in the Detailed Description of the Embodiments.

• However, if you have more than 50 pages of tables, you must submit them on a CD instead of including them in the main application.

• This rarely applies to most inventors.

Computer Program Submissions

• If your invention includes software:

• If the code is 300 lines or fewer, you can include it in the application.

• If the code is more than 300 lines, it must be submitted separately on a CD.

Sequence Listings (Biotech and Pharmaceutical Applications)

• If you are filing a biology-related patent that includes a nucleotide or amino acid sequence, you must submit a sequence listing on a CD.

• If you need this, you are likely part of a company or university and should have a patent attorney handle this.

• There are specific rules on how to format sequence listings and correlate them with sequence ID numbers in the written application.

If any of these apply to you, you should be working with a patent attorney.

4. Statement Regarding Prior Disclosures by the Inventor or a Joint Inventor

This section relates to whether the patent office can use your own work against you.

Example: Grace Period for Public Disclosure

• You gave a presentation about your invention at a conference on January 1, 2018.

• You filed a patent application for that invention on February 1, 2018.

That’s okay in the U.S. because:

• You have a one-year grace period to file a patent after publicly disclosing your invention.

However, how does the Patent Office know that you made the public disclosure and not someone else?

• If someone else disclosed the invention before your filing date, it could invalidate your application.

This section allows you to tell the Patent Office upfront that your disclosure should not be used against you.

• You can inform the examiner that the prior disclosure was made by you, preventing your own disclosure from being used as prior art against you.

Final Thoughts on Patent Application Sections

That’s it for all the sections of a patent application!

In the next episode, I’ll explain how to put all the parts of your application together for filing, including:

• Formatting rules

• How to order the sections in the way the Patent Office requires

Need Help With Your Patent Application?

If you need help drafting your patent application, connect with me! I'm Adam Diament, and until next time, keep on inventing!