PREPARING YOUR PATENT APPLICATION

 

A. Specification

    The "specification" of a patent application is the written description of the invention. The specification must be complete enough in conjunction with the drawings, if any, to allow a person of ordinary skill in the art to understand, make and use the invention without undue experimentation. Who is a "person of ordinary skill in the art"? Someone of common expertise in a field of endeavor that pertains to the invention subject matter. For example, if your invention is a socket wrench, then a person of ordinary skill in the art would be a master mechanic or a mechanical engineer.

    The specification includes the title, which should be generically descriptive and simple, such as "A Selectively Articulating Wrench", never fanciful, such as "A Pizzazz Wrench". The specification of a utility patent application includes a discussion of the art to which the invention is directed, along with what problem(s) the invention solves. Further, the specification includes an identification and description of each figure of the drawings (if drawings are provided).

    The "meat" of the specification has two parts: a "Summary of the Invention", which briefly describes the various structural and operative facets of the invention; and a "Detailed Description of the Preferred Embodiment(s)", wherein a preferred embodiment is a best mode for carrying-out the invention as the inventor views it at the time the patent application is filed. The Detailed Description of the Preferred Embodiment(s) describes one or more examples of the invention, and refers to the drawings (if any) by reference numbers and lead lines to identify the component parts being described.

 

B. Abstract of the Disclosure

    The purpose of the abstract to provide a short description of the invention on the face of the patent to allow a searcher to quickly identify the subject matter of the patent. The abstract is customarily written in a stylized economy of words, wherein the first sentence has no verb. The abstract should not exceed 250 words and should be in the form of a single paragraph.

 

C. Drawings

    The drawing requirements of the U.S. Patent & Trademark Office are quite rigorous. Not only must every aspect of the claimed invention be shown, the drawings must be properly shaded, have uniform numbers and characters, be properly lined in black ink, and be correctly cross-hatched for material (ie., metal, plastic, rubber, etc.) where sectionals are taken. There is also a requirement that the paper be white, strong, flexible and durable. Two paper sizes are now acceptable: American standard 8 x 11 inch paper and European standard A4 paper. Margins are also critical: 2.5 cm top, 2.5 cm left, 1.5 cm right and 1.0 cm bottom (for both sizes of paper).

Of course, an electronically filed patent application, which is now almost universally done, will have a scan of the drawings, the scan (in pdf format) is then uploaded with the application tothe Patent Office website.

 

D. Claims

    At the end of every patent there is always at least one "claim".

1. What is a Claim?

    A claim is a legal definition of what the invention is. The claims enumerate the minimum number of elements necessary to carry-out the invention, the structural inter-relationship between those elements, and, frequently, the function of those elements. It is customary in utility patents to include more than one claim, simply because a claim enumerating only a minimum number of elements may be so broad as to unknowingly encompass the prior art; therefore, more detailed claims are added to further define the invention. The first claim is known as an "independent claim" because it stands readably on its own. The claims which further define the independent claim are known as "dependent claims" because they must be read in combination with any claim on which they depend (the independent claim and any intervening dependent claims in the chain of claims). It is important to note that it may be possible to fully protect an invention with only one claim. Design and plant patents have only a single claim.

    This brings us to why claims are present in patents. Of course, the patent laws require at least one claim, and that is, on the surface, a reason to include them. However, the underlying reason for including claims is that they are used by courts to evaluate the patented subject matter when the patent holder is suing for infringement of his patent, as well as by licensees who will pay you for your claimed inventive subject matter, not your discourse in the specification that you neglected to claim. This is a very important point. You may fully describe a revolutionary device in your specification and drawings, but if you don't claim all those novel features you will have dedicated them to the public. This seemingly harsh rule has a reason. Everyone is entitled to know exactly what the invention is. The specification and the drawing almost invariably include prior art elements side-by-side with your new elements. Who knows by merely reading the specification and the drawing just what the invention is! Here the claims come to the rescue. Claims serve as clear, precise definers of the invention. A general rule to keep in mind is: What you claim is patented, what you don't is not. While under some situations there may be ways to remedy this, such as filing for re-issue or the court created "Doctrine of Equivalents", remember this rule when you are carefully reading over your patent claims before filing of your application.

2. Writing Utility Patent Claims:

    First, it is essential to have a clear understanding of the invention, the prior art, and the exact features of the invention which distinguish it from the prior art. It is those distinguishing features that must be enumerated in the patent claims so that the novelty of the invention will be fully protected by the patent that will later issue.

    Secondly, there must be developed some form of strategy for defining the invention across a range beginning with broadest terms (usually this is done in Claim 1, where the fewest possible elements of the invention are recited) down to narrowest terms (usually this is done by including a series of dependent claims which depend on Claim 1, or by including a second independent Claim which includes many, if not all, the elements of the invention). The theory behind this is that if prior art is found which anticipates or renders obvious the broadest definitions of the invention, there will still be left standing the more narrow definitions of the invention. In writing patent claims you want to go as broad as is possible in view of the known prior art. Remember, there is no such thing as the prior art teachings of a patent expiring with the patent - prior art is there to haunt you permanently.

    Writing allowable claims that are as broad as possible requires years of skill which no article such as this can substitute for. We shall, therefore, discuss the basic parameters of claim writing.

    A claim is written as a single sentence. Each element must be positively recited, such as "a lever having..." Each time that element is again referred to, the word "said" or "the" should precede it, such as "said lever ..." Thus, when a patent claim says "the rod" or "said rod", you had better have defined that rod somewhere in a prior portion of the claim. So, the reason for all the "saids" in patent claims is actually to eliminate confusion, not to create it!

    All claims come in packages of three parts: a) a preamble, b) a transition clause, and c) a main body.

    a) The preamble titles the invention and, frequently, sets-up the environment of its use.

    b) The transition clause is used to introduce the main body and relate it to the preamble. A word such as "comprising" is frequently used because it is very broad: while the elements recited in the main body define the invention, any number of unmentioned elements can be included as well. On the other hand, words such as "consisting of" are very narrow: the invention is restricted only to those elements recited in the main body.

    c) The main body precisely defines the invention by enumerating each element of the invention in clear terms. By "element" is meant a feature or a component of the invention's structure. Structural definitions are used rather than functional definitions. All elements must be structurally interconnected and must logically cooperate so as to result in the invention called-for in the preamble. It is frequently useful to also include a recitation of function of the elements, but in doing so there must be sufficient structure recited to support any claimed functionality.

3. Considerations:

    As a general rule, a claim that is broad in scope may be commercially valuable because it would be difficult to devise an invention that has features which fall outside the claimed definition, whereas a claim that is narrow in scope may be commercially valueless because it would be easy to make a product having features that are outside the claimed definition. There are exceptions to the general rule. For example, a very narrow claim might cover only one feature of an invention, but if this feature is significant enough then the patent might be commercially valuable. Thus, whether you can get a patent is frequently not the central issue; rather, the central issue is whether you can get a patent with a commercially valuable claim. A patent search looks to see what prior patents are close to your invention and how these might affect the scope of a claim drawn to your invention.

 

E. Information Disclosure Statements

    Rule 56 of the patent rules requires that an applicant for a patent disclose to the U.S. Patent & Trademark Office (USPTO) any information which may be considered to be material to the patentability of the patent application. The preferred form of an information submission is known as an Information Disclosure Statement (IDS). Note that there is no duty to submit an IDS for a provisional patent application because it is not subject to examination for patentability.

    Rules 97 and 98 of the patent rules set forth in detail how to submit an IDS to ensure it is considered by the USPTO. In this regard, you should submit all information at the time of filing the regular patent application, because if you submit it after 3 months from the filing date, and a first Office Action has been sent, you will have to pay a late fee [see Links] or submit a certification, both best avoided if possible.

    An IDS includes "prior art" information. Prior art refers to any publication or public use which describes some or all the details of the invention. There are several refinements to this definition, such as what constitutes a "publication" and just what is a "public use", and it is here where the sticky problems arise.

1. Content: You need to cite any publication or public use (i.e., products on the market) that discloses some aspect of the invention upon which the claims are drawn which is material to patentability. This rule is necessary because the publication or public use could render some or all the claims being rejected by an Examiner at the USPTO. Such a rejection will be based upon one or both the grounds of "anticipation" or "obviousness". Anticipation means that a single publication or prior use shows every detail of the subject matter recited in the claim; simply put, the invention "has been done before". Obviousness means that to an artisan of ordinary skill in the art of the invention, it would have been obvious to make the invention based upon a knowledge of the prior art.

2. Limitations: A publication has no time limit. The writings of Aristotle are just as applicable as the writings Stephen Hawking. There is a grace period of one year for inventors who originally and independently invented the invention: the inventor may still file for a patent application on the invention within one year of the date of his publication or public use. After one year the inventor is barred from obtaining a patent.

3. Publications: A publication is anything that is in definite recorded form and which has had some general circulation with the public. An article in print, a video or audio recording, even a painting can qualify as the subject matter of a publication.

4. Public Use: Public uses include your activities. Be aware that products on the market may not be patented, and may not even be described in a publication, yet they are prior art. So, be on the look-out for public uses when doing your prior art research. One good technique is to order product information from manufacturers in the field of your invention.