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Patent Applications
A patent application must be thorough and technically accurate, as well as understood. When writing a patent application it is important that you remember that the application will be read and understood by different individuals with different technical backgrounds; a patent examiner, a person skilled in the relevant art, a patent attorney or professional searcher, a judge, a jury member, a licensee, an assignee, and your competitor.

There are three general types of patent applications that can be filed - utility, design and plant. A utility patent is the most common type of patent and protects how a particular invention is constructed, how it operates, or how it is used to accomplish a particular purpose. A design patent protects the appearance of an article and not its structure or utilitarian features. A plant patent protects new varieties of asexual propagated plants.

A utility patent application filing consists of a (1) Specification, (2) Drawings, (3) Declaration or Oath and (4) Filing Fee.

1. SPECIFICATION: Currently, the Specification for an utility patent application contains the following sections:
  • Title of the Invention
  • Background of the Invention
    • Field of the Invention
    • Description of the Related Art
  • Summary of the Invention
  • Brief Description of the Drawings
  • Description of the Preferred Embodiment(s)
  • Claims
  • Abstract


Title of the Invention: A five word, shorthand expression of the invention, which captures its essential character or main gist.

Background of the Invention: Consists of two subsections: (1) Field of the Invention and (2) Description of the Related Art.

The Field of the Invention subsection is a general introductory statement of the invention, identifying the technology to which the subject matter of the invention pertains. Generally, it should closely follow the Class and subclass definition adopted by the U.S. Patent and Trademark Office. If the invention relates both to an apparatus and method, both the apparatus and method must be included in this section. The following format should be used: "The invention relates generally to (see Class definition), and more particularly to (see subclass definition).

The Description of the Related Art is important and must be carefully drafted. The purpose of this subsection is to define what degree of skill a person "skilled in the art" has for determining adequacy of the disclosure or what degree of skill constitutes "ordinary skill" for determining non-obviousness of the invention over the prior art. Generally, this subsection contains a brief discussion of the problems or issues addressed by the invention and, if appropriate, a brief discussion of the shortcomings of the prior art. Do not dilute the importance of the invention by discussing problems that are not related to the invention or are not actually solved by the invention. If possible, this section should include statements which show unobviousness. The following are questions which should be answered in this section:

  • To what art area or areas is the invention directed?
  • What is the practical application of the invention that will have relevance to an ordinary person?
  • What is the level of ordinary skill in the art?
  • How has the art revolved?
  • Is the art crowded or open?
  • What deficiency or problem in the art will be solved by the invention?
  • How and under what circumstances did the deficiency or problem become discovered or known?
  • How was the deficiency or problem in the prior art previously approached unsuccessfully by the inventor or by others?
  • What analogous prior art is there with similar disadvantages and how were those disadvantages corrected?
  • What properties associated with the prior art "teach away" from the solution found by the inventor?

Summary of the Invention:

Although not required, our firm normally begins this section by citing the objectives

of the invention. Generally, they are listed in an order beginning with the broadest and should

describe a desired characteristic of the invention. For good form, each object should be set out in informative verb form and should not recite "to provide" some feature of the invention.

"One object of the invention is to___________________________________."

"Another object of the invention is to _______________________________."

"A further object is to ____________________________________________."

"A still further object is to_________________________________________."

Following the "objects" presentation, we write a short summary of the invention which

mirrors the broadest claim. We begin by using an introductory paragraph, such as,

"According to the present invention, the foregoing and other objects are met by......."

Brief Description of the Drawings:

Each figure of the Drawing must be described briefly. In general, each statement

should be a single paragraph and describe only the nature of the view, i.e. plan, exploded

perspective, sectional, side elevational. Separate elements must be shown in separate figures.

Description of the Preferred Embodiments:

This section is sometimes labeled "Best Mode for Carrying Out the Invention". This section must satisfy the requirements for adequacy of disclosure under 35 U.S.C. § 112, paragraph 1, which requires that the invention be described in clear and concise terms as to enable a person skilled in the art to practice the invention. The description must also disclose the embodiment of the invention that the inventor considers the best.

In general, this action must describe the various parts or elements found on the invention, how their interconnected, and how they function together. There is no requirement that the inventor describe or explain a theory underlying the operation of the invention.

The description should be written in plain language, using easily understood sentences grouped in relatively short paragraphs. The description should refer to reference numbers used in the drawings. Every part mentioned in the description should be given a reference number and illustrated in the drawings. Although the inventor can use his own vocabulary, it is usually best to use conventional language.

Claims:

This section is considered the most important part of the application. It sets forth to the Examiner what the inventor considers to be patentable (i.e. novel and non-obvious). The language used in this section is very important and must be fully supported the earlier sections in the specifications.

Abstract:

A one paragraph concise (50 to 250 words) summary of the technical disclosure of the invention and should include that which is new in the art to which the invention pertains.

If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. In certain patents, particularly those for compounds and compositions, wherein the process for making and/or the use thereof are not obvious, the abstract should set forth a process for making and/or use thereof. If the new technical disclosure involves modifications or alternatives, the abstract should mention by way of example the preferred modification or alternative. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.

Where applicable, the abstract should include the following:

  • if a machine or apparatus, its organization and operation;
  • if an article, its method of making;
  • if a chemical compound, its identity and use;
  • if a mixture, its ingredients; and
  • if a process, the steps.


Extensive mechanical and design details of apparatus should not be given. The form and legal phraseology often used in patent claims, such as "means" and "said", should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.

2. DRAWINGS:

The drawings must show every feature of the invention specified in the Claims section of the Specification. The drawings must conform to the rules set forth by the U.S. Patent and Trademark Office.

3. DECLARATION or OATH:

The inventor must make an declaration or oath that he/she believes himself or herself to be the original and first inventor of the subject matter of the application.

4. FILING FEES:

The filing fee must be submitted with the application and consists of the basic fee and additional fees.

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Dean A. Craine
Attorney At Law
400-112th Ave NE Suite 140
Bellevue, Washington 98004
Phone: 425-637-3035
Fax: 425-637-9312
E-Mail: dac@nwpatents.com
Legal Disclaimer
This website is intended to introduce you to the law office of Dean A. Craine, It is intended to be used as a resource for U.S. Intellectual property law. This website is NOT intended to be a source of legal advise. You should not rely on this information and should always seek competent legal advice from an attorney licensed in your jurisdiction. The presentation of information does not constitute an attorney-client relationship. While we make every effort to maintain the accuracy of the information contained in the website, the information is not guaranteed to be complete or reflect the most current legal developments.