Preparation of an application

To obtain patent rights for an inventor, the practitioner typically first drafts an application by interviewing the inventor to understand the nature of the invention and help clarify its novel features. Practitioners need to ascertain what is already known to people familiar with the general field of the invention—such already-known material is termed the prior art, and to obtain drawings and written notes regarding the features of the invention and the background.

During this initial phase, sometimes termed "patent preparation", the practitioner may also seek to determine precisely who contributed to the making of the invention. An incorrect listing of inventors may incurably invalidate any patent that might result from an application. This determination is particularly important in the United States, but may be considered less important in other jurisdictions. The practitioner may also seek to find out whether any publications, offers for sale, or other such public disclosures of the invention were made. Under the laws or regulations of some jurisdictions, public disclosures or offers to sell an invention prior to filing an application for a patent may prevent the issuance of the patent. In the U.S. these laws are laid out in Title 35 of the United States Code, §102.

After drafting an application for patent, complying with any further rules (such as having the inventor or inventors review the application prior to filing), and obtaining the applicant's permission, the practitioner files the patent application with the patent office. Usually, the practitioner seeks to file the application as soon as possible, because in a majority of jurisdictions including Europe and Japan, if two or more applications on the same subject matter are filed, only the party who filed first will be entitled to a patent under the "first-to-file rule". Until the enactment of the America Invents Act, the United States followed a first-to-invent rule, under which early filing may prevent the use of certain materials from being applied against the patent application as prior art while the patent application is pending before the patent office. However, three consecutive congressional sessions in the United States from 2005-2009 have attempted to change the United States to the first-to-file rule with the Patent Reform Act of 2005, the Patent Reform Act of 2007, and the Patent Reform Act of 2009. Finally, on September 16, 2011, the United States shifted to the first-to-file rule with the enactment of the America Invents Act.