Patent applications, i.e. documents describing the solution for which an Applicant wants to obtain protection, are the most important documents defining what will ultimately be the subject of an exclusivity. It is therefore not surprising that such a document should be prepared in accordance with the art, i.e. the applicable standards. When filing a patent application, it is worth avoiding several common mistakes that may ultimately lead to the rejection of the application or the limitation of patent protection. Below we present some of them.
However, we should start with the fact that each solution must be new, must meet the requirement of inventive step and industrial applicability. These are the three main criteria that must be met together and absolutely on a global scale (not locally), without which it will not be possible to obtain a patent.
Here are some of the most common mistakes you may face:
Lack of novelty of invention
As mentioned above, the invention must be new on a global scale. If it has been previously disclosed (e.g. in an online publication, at a conference, or has been sold), such solution can no longer be patented. It happens that Applicants boast about their solution on a blog/by publishing a post with a photo. It happens that a product is given to several “friends” to verify and confirm that it works and fulfils a specific purpose. It also happens that during commercial work, the Applicant does not take care of the appropriate confidentiality agreements and presents the solution in full to its business partner. All such activities, which ultimately result in the disclosure of the solution, can effectively destroy the quality of novelty. It is completely irrelevant that it was the person who is, for example, the inventor of the solution who disclosed its content. When assessing novelty, it is important that an unlimited group can become familiar with the solution and this alone (i.e. the possibility of familiarization) is enough for patent protection not to be granted. Unfortunately, it is a common mistake to publicly disclose an invention before filing an application, so it is absolutely necessary to remember to not disclose it anywhere before the date of filing of the application.
Insufficiency of disclosure
The patent specification must be prepared in a clear, exhaustive and precise manner, so that the expert in the field to whom the patent description is addressed can finally reproduce the solution disclosed therein. A patent description consists of several parts, but it is worth remembering that at least one example/embodiment of an invention should always be disclosed. The description should also include information about the prior art solutions available in the field to which the solution relates. Omission of key technical details in the patent description may ultimately lead to the rejection of the application, and in a situation where protection is obtained, deficiencies in disclosure may constitute one of the grounds for invalidation. Such a premise is then called the lack of sufficiency of disclosure of the invention.
Too wide or too narrow scope of protection
The previous point is also connected with too broad scope of a patent claim, which may be rejected, or, on the contrary, too narrow scope, which may limit the effectiveness of protection, giving competitors the opportunity to circumvent the patent. That is why it seems so important in the entire process of preparing a patent application to use the services of a patent attorney who will allow you to define the scope of protection in the most optimal way. Each Applicant would like to claim the widest possible scope, while patent offices would like to grant patents for the narrowest possible scope, so as to leave space for other participants to use solutions in a given field. Somewhere in between is the patent attorney, who guards that the description and claims are prepared in the most optimal way.
Lack of patent research
Patent research can be very helpful tool. Performing a search before filing an application may allow you to familiarize yourself with the solutions available in a given field, or by revealing an already filed/patented analogous solution, it will save funds and avoid filing an application in a given area. Patent research is a completely voluntary service and ultimately it is the customer who decides whether or not to use such a service. However, they can certainly avoid disappointment in the form of a negative search report issued by the Patent Office in a situation where a patent application is filed for something that will not be able to obtain protection in the end.
Formal errors in the application
In addition to the patent description, when filing an application, you should also remember about formal requirements, such as a signed power of attorney document if you are represented by a professional attorney, stamp duty on the power of attorney paid to the competent authority (in this aspect there has been a change since January 2025), the filing fee paid on time and, for example, additional pages or categories of the invention. It is also important to indicate the legal basis for the patent. A patent attorney who conducts the case of filing a patent application may be responsible for all these elements.
Establishing the Inventor/Applicant relationship
Naming the wrong person as the Inventor or Applicant can ultimately lead to litigation that can last for years. That is why it is so important to clearly define the rights and obligations of each party, including the effective transfer of rights, in properly constructed provisions in contracts between the parties, in order to avoid the aforementioned disputes.
Lack of proper strategy
The patent is valid only in the countries where it has been filed. The lack of an international protection plan may allow competition to use the invention in other jurisdictions. Terms are key in the world of industrial property. Overlooking, for example, the 12-month deadline for claiming priority will result in the inability to extend the protection. These deadlines are mostly irreversible, so if you decide to protect yourself more extensive than in one country, you should take care of the deadlines or entrust the care of the case to a professional.
Correctness of the translation
In the case of international/European applications or validation of European patents in the territory of the Republic of Poland, errors in translations may change the meaning of the invention and limit or distort the protection sought. Therefore, it is extremely important to also keep in mind the accuracy and correctness of the translations.
Author: Piotr Godlewski
