A patent application should detail in-depth information pertaining to the invention claimed and corresponding subject-matter. Each country/region has its specificities as to the application form (request to grant a patent). Navigating the specifics of what information should be detailed in a patent application can be difficult, but this handy guide will delve into the key components.

All patent applications should contain general details, including the applicant name(s), address, and information pertaining to the agent acting on behalf of the applicant(s), as well as more technical information regarding the invention. This technical information comprises the patent specification of an application. The specification for a patent application should include:

Patent Title

The patent title detailed in the application will be the name assigned to your protected invention, and should be both short and factual. Due to the fact that the title will enter the public domain upon submission of your application, it is important to avoid disclosing confidential data or detailing novel methods relating to your invention in the title. Disclosing such information could risk your ideas being copied by other individuals or entities, who may use your unprotected, novel idea to produce analogous concepts or similar ideas of their own.

Field of the invention

The type of invention, or area of technology, to which to patent subject matter relates, otherwise known as the ‘field of invention’, should be depicted briefly in the patent specification. Such description should include a definition of both the class and subclass of the invention, for example "the invention pertains to technology for heating, specifically, for heating and cooling systems."

Background to the invention

The background to your invention is an important element in a patent application. It should detail any prior art that the applicant is aware of, although there is no obligation on the applicant for this information to be entirely comprehensive or accurate. The purpose of the background to the invention in an application is to provide a general overview of what the novel invention brings to the market that other, similar or prior art may not. It may also assist with the assessment of claim validity of the patent.

Statements of the invention

A patent specification should also detail the statements of the invention, which provide formal definitions as to what the invention is, and the intended scope of protection. Such statements should generally comprise broad definitions of the subject matter to which the patent application relates, and will be similar in nature to the claims section of the application.

Drawings

A patent application can typically include as many drawings as needed to accurately describe the invention. Any drawings contained within an application do not need to be highly technical, however they must be clear and adequately depict the patent.

A list of all drawings should also be included alongside corresponding descriptions of what each drawing depicts and shows. The drawings themselves should have precise labeling, with the numbers on the drawings establishing a connection between the illustration and the description.

Abstract

The abstract should comprise an understandable and clear description or overview of the main features of the invention(s) contained within a patent application and specification, which offers a useful overview of the patent's essence. The abstract is primarily used as an aid in patent searches, allowing others to find your patent application when searching for related inventions. The abstract must align with the rest of the patent specification and maintain accuracy, excluding any information which is not contained within the rest of the application. For this reason, it is typically composed after the completion of the patent application to ensure that the abstract accurately encapsulates the patent's content.

Description

The description should encompass an explanation of the innovation and its operational principles, depicting how the invention may be put into use, otherwise known as "specific embodiments” of an invention. It must encompass all the essential information for someone with expertise in the relevant field to replicate the invention. For instance, if the patent pertains to heating and cooling technology, fundamental details about assembling and running such technology, which a proficient heating engineer would reasonably be aware of, would not be required for them to replicate.

It is important to incorporate every aspect that makes the invention unique and explains its operational basis, as omission of the same may lead to the rejection of the application, or issues upon grant later down the line.

Patent claims

The patent claims are the most crucial sections within a patent application as the patentability of an invention will largely be determined by assessment of the claims. The claims should detail the scope of the application, defining exactly what will be protected by the patent if granted. The invention defined within the claims will typically be examined against, and compared with, existing inventions in order to assess patentability, therefore meticulous drafting of the patent claims is crucial. The claims should also outline the intended exclusive rights of the patent holder once granted, and the extent to which third parties will be able to utilize the invention. It is important to ensure that the claims encompass all possible versions of the invention that could possibly be created, as failure to do so may result in third parties creating similar versions of your invention if the claims do not limit them from doing so.

Each patent claim should consist of one sentence. Patent claims are separated into two categories, namely independent claims and dependent claims. Independent claims set forth the protection which is sought for the invention, outlining the necessary features for achieving the intended effect of the invention. The dependent claims, on the other hand, assist in limiting the scope of independent claims, providing additional details and context with reference to previous claims. The first claim detailed should typically be the most fundamental for the essence of the patent, and each subsequent one adding additional features. Each claim should be complete in and of itself.

The drafting of a patent application and specification is a complex and vital part of obtaining IP protection for an invention. It is therefore recommended that applicants seek legal advice or instruct a patent attorney to assist with the patent application process, particularly with the intricate drafting of claims. If you would like further details on applying for patent protection, or to file an application through the IP-Coster platform, contact us via social media, email, or our website contact page!

1. 1. If designated for a European patent, see EP as designated Office for the applicable time limits.
2. 2. If designated for a Eurasian patent, see EA as designated Office for the applicable time limits.
3. 3. In the absence of information from the Office concerned, the time limits shown are those which would normally apply under PCT Articles 22(1) and 39(1)(a).  If the Office decides to apply longer time limits, that information will be published in the PCT Newsletter.
4. 4. ARIPO acts as designated office for the following State which does not act in the capacity of designated office:  SZ.
5. 5. This time limit may be extended provided that the applicant pays an additional fee for late entry into the national phase.
6. 6. If designated for an ARIPO patent, see AP as designated office for the applicable time limits.
7. 7. May be extended upon written request of the applicant.
8. 8. Time limit applicable if applicant pays an additional fee for late entry into the national phase.
9. 9. Swiss Office acts as designated one for the following State which does not act in the capacity of designated office:  LI.
10. 10. EPO acts as designated office for the following States which do not act in the capacity of designated office :  BE, CY, FR, GR, IE, LT, LV, MC, MT, NL, SI, SM.
11. 11. This Office has notified the International Bureau of the non-applicability of the 30-month time limit under PCT Article 22(1), as modified with effect from 1 April 2002 – it does not yet apply the 30-month time limit for entering the national phase.
12. 12. OAPI acts as designated office for the following States which do not act in the capacity of designated office :  BF, BJ, CF, CG, CI, CM, GA, GN, GQ, GW, KM, ML, MR, NE, SN, TD, TG.
13. 13. The time limit may be extended by 30 days if the applicant pays an additional fee for late entry into the national phase.
14. 14. The time limit may be extended by up to 18 months provided the applicant pays the prescribed fee.
15. 15. Up to 12 months after the 30-month deadline (30 months from the priority date) the applicant can request reinstatement of rights provided that he/she pays the fee for reinstatement of rights and meets the other requirements outlined in subsection 154(3) of the Canadian Patent Rules for the reinstatement of rights.
16. 16. For international applications filed on or after July 1, 2020.

Filing for patent protection can be a complex and time-consuming process, but knowing where to start can alleviate some of the pressure for new applicants.

Initial Stages

One of the most crucial elements in the early stages of filing is grasping an understanding of the patent system itself, particularly in each country or region that you wish to obtain protection in.

As both individual countries and states, as well as regional patent systems, possess varying filing requirements and regulations, one of the most important first steps to consider are the jurisdictions in which protection would be sought for your invention. In order to do so, it may be necessary to consider the invention itself and the potential market(s) in which it could be placed.

In order to effectively evaluate and consider the IP legislation and regulations of any jurisdiction of interest, it is advisable to consult with a patent attorney or agent who is well-versed in the patent laws of that particular state. The greater understanding of the requirements of each country or region that you wish to obtain protection in, the better, as a more comprehensive and thought out application may prevent potentially time consuming and costly office actions later on.

Searches

A vital part of the initial stages of the patent protection process is the conducting of patentability and prior art searches. Such comprehensive searches should be undertaken prior to the drafting of a patent application to ensure that your invention is unique (novel) and does not infringe on existing patents. Moreover, you will be unsuccessful in obtaining a patent if your invention has already been publicly disclosed, however most jurisdictions have a grace period during which disclosure is disregarded. This period will vary from country to country.

The requirement of novelty is one of the most crucial criteria of patentability for a patent, thus a comprehensive search and comparison of inventions similar to yours can provide a more solid basis for a patent application and in turn, provide for a higher chance of successful outcome.

Such searches can be conducted through the IPO in which protection is sought, or via patent databases, publications, and other relevant resources. Moreover, the undertaking of a search can be a pivotal moment in the decisions an applicant takes in terms of filing and defining the scope of protection, as the results can indicate whether an applicant should be filing for a patent for an invention or utility model, for example.

Patent Application Drafting

Once you have considered the initial elements of your invention and have some understanding as to what may be required in the potential jurisdictions you wish to file for patent protection, the next vital step is the drafting of a patent application itself.

In order to have the best chances of success, patent applications should be detailed and well-written, and a solid understanding of what is required from each jurisdiction in which you wish to file is helpful. A patent application should typically include an abstract, a written description of the invention, drawings or diagrams (if applicable), and a list of the claims that define the scope of protection further given to your invention.

Depending on the invention itself, applicants should also consider the type of patent protection or patent application offered in varying jurisdictions. For example, some countries offer the option of filing for either a utility model or patent, whilst others offer the opportunity for applicants to file a provisional application or a non-provisional one.

Consulting with a patent attorney can greatly simplify the process and potentially increase the chances of a successful patent application by assisting with the drafting of an application as well as reviewing for any discrepancies.

Filing

The filing of the patent application itself will involve the completion of all necessary forms, which are commonly found on the official Intellectual Property Office website or the relevant jurisdiction, as well as payment of the corresponding official fees and the submission of any obligatory accompanying documents, such as a Power of Attorney, for example. These requirements, as well as being complex, can require a patent attorney's expertise to achieve, for example the payment of certain fees, filing of documents, and in some countries, the mandatory requirement of foreign applicants to have a local patent attorney representative in the jurisdiction.

It is also helpful to consider the subsequent results of filing a patent application, even in the early steps of assessing how to file an application.

How do I start?

The IP-Coster platform can facilitate the beginning of your patent protection journey once you have drafted an application and are ready to begin the filing process, allowing you to obtain fee quotations for patent filing worldwide and providing professional advice from our wide range of international patent professionals. If you would like further assistance on the aforementioned crucial first steps, please contact us here.

Trademarks are essential assets in the protection of brand identity, as well as a brand's reputation in the market, but applying for trademark protection can be a tumultuous task. Among the multitude of considerations applicants face, various jurisdictions allow for the filing of trademark applications even before the mark in question has been used.

Those filing before the United States Patent and Trademark Office (USPTO), for example, are afforded the opportunity to file an intent-to-use trademark application if they so wish, but what sets it apart from a use-based application?

Intent-to-use Trademark Applications

An intent-to-use (ITU) trademark application before the USPTO can be a viable and useful filing option for applicants who have not yet utilized their mark in commerce, but have a good faith intention to do so in the future. The applicant must provide evidence of said intention to the USPTO, typically in the form of a declaration or statement of use.

Whilst a mark filed for via an ITU application will not be registered until the trademark has been demonstrated to have been used in commerce, such applications can be a great option for those who wish to secure the earliest possible application filing date, even before they have used the mark. In turn, this provides priority of the mark over potential competitor's later marks, comprising one advantageous element of ITU filings. This can be particularly useful for companies that are still in the developmental stages of business and have not yet begun to sell or advertise their goods or services, but intend to in the foreseeable future.

It is important for applicants to note that an ITU application does not provide immediate protection for a trademark, and that it is required for the mark to be used in commerce within a certain time frame depending on the circumstances surrounding the application.

Use in commerce as per the USPTO can constitute use of the mark with respect to goods and/or services, and can occur on an interstate, territorial, or foreign commerce basis. The demonstration of use can comprise the trademark being placed on the packaging of the good, for example, and requires the good to be sold or transported in commerce. In relation to services, use can comprise the sale or advertising of the same, and proof that the service is being rendered in commerce.

There are three periods during which an ITU trademark applicant can claim the mark to have been used in commerce, the first being any time between the filing date of the ITU and the date of approval by the examiner of the mark for publication. The second option is for the applicant to confirm the mark's use in commerce within the first six months following the date of issuance of the Notice of Allowance from the USPTO.

If neither of the first two options are viable, applicants may also file up to five requests for an extension of time to file a Statement of Use, constituting a maximum extension period of 3 years, alongside payment of the corresponding fee. If confirmation of use of the trademark is not provided within these time constraints, the ITU application may be abandoned, rendering the trademark vulnerable for use by others.

Use-Based Trademark Applications

A use-based trademark application, on the other hand, can be filed only once a trademark which is the subject of the application has been effectively used in commerce.

In order to be eligible for filing a use-based application, the trademark must have been used in connection with the sale or advertising of goods or services in commerce, as with the eventual registration of ITU applications. Evidence of said use is required to be provided to the USPTO, typically in the form of a specimen or sample of the goods or services with the trademark.

Once the application is approved, the trademark is registered with the USPTO, and the company has exclusive rights to use the mark in connection with the goods or services listed in the registration.

One advantage of filing for a use-based application is that it provides for a more expedited route of protection of the trademark in contrast with an ITU application.

Other jurisdictions operate different but similar systems to the US in relation to such applications, with neighboring Canada allowing for the filing of a trademark application on a "propose to use" basis, which potentially constitutes a less stringent requirement to meet than intent-to-use for applicants.

It's important to note that trademark laws and regulations vary by country and can be complex. If you are interested in filing a trademark application or learning more about intent-to-use applications, please contact us here at IP-Coster.