ANATOMY OF A UNITED STATES PATENT (US Patent No. 5,048,532) Robert P. Simpson Registered Patent Attorney Simpson & Simpson, PLLC 5555 Main Street Williamsville, NY 14221 www.idealawyers.com
ANATOMY OF A UNITED STATES PATENT
(US Patent No. 5,048,532)
Robert P. Simpson
Registered Patent Attorney
Simpson & Simpson, PLLC
5555 Main Street
Williamsville, NY 14221
www.idealawyers.com
Why a Patent Application is The Most Difficult Legal Document to Write
Legal and technical document Plurality of audiences
Client, Patent Examiner, Board of Patent Appeals and Interferences, District Court for District of Columbia, Court of Appeals for Federal Circuit, Potential Investor, Potential Infringer, Potential Infringer’s Lawyer, Federal District Court Judge & Jury
Legal Considerations
35 USC 101 (Utility and eligible subject matter for patent – apparatus, manufacture, composition of matter, process, improvement)
35 USC 102 (Novelty) 35 USC 103 (Non-obviousness) 35 USC 112 (Complete written description,
enablement, best mode)
Application Elements(37 CFR 1.77) Title of the invention Cross-reference to related applications Statement regarding federally sponsored research/development Names of parties to joint research agreement Reference to sequence listing, table, computer program on
compact disc Background of invention Brief summary of invention Brief description of drawings Detailed description of the invention Claim(s) Abstract of the disclosure Drawings
Title of the Invention
Should be short and specific as possible Title may not exceed 500 characters in length
Cross-Reference to Related Application(s)
Continuation, Divisional, Continuation-in-Part Claim for Priority – Provisional, Foreign
Background of the Invention
State the problem to be solved Tactfully describe efforts by others to solve
the problem Explain why there is a long-felt need for the
invention
Background of the Invention
No-no’s Do not discuss Applicant’s invention in the
Background Absolutely, positively NEVER call anything
“Prior Art” in the Background of the Invention. If you call it “Prior Art”, it is, even if it isn’t!
Background of the InventionTwo Schools of Thought
Keep it short and simple – especially if foreign filing is contemplated – this will reduce translation costs.
vs.
Make it interesting and discuss some or all relevant references found in search (regardless of length) – get the Examiner’s attention and let her know you’ve done your homework.
Brief Summary of the Invention
Summarize invention “as claimed” Set forth objects, features and advantages Describe alternate embodiments
Attorney trick of the trade – paraphrase broad claim and remove legalese (“said”, “wherein”, “heretofore”, etc.)
Brief Description of the Drawings
“Brief” means “Brief” – useful in helping the reader to get her bearings in understanding the invention.
Perspective, plan view, top view, rear view, cross-sectional, fragmentary
USPTO prefers reference numbers over letters
Drawings
Informal vs. Formal – Two Schools of Thought
Requirements Must show every feature of the invention specified
in the claims Technical requirements found in 37 CFR 1.84
Detailed Description of the Invention
Complete description of the invention – how complete? Must be in such full, clear, concise, and exact
terms as to enable any person skilled in the art to both make and use the invention
Must set forth precise invention that is claimed in such a manner that distinguishes it from prior art
Must completely describe a specific embodiment Must set forth the best mode of practicing the
invention
Claim(s)
Arguably the most important part of a patent Defines the metes and bounds of the
intellectual property rights
Types of Claims
Apparatus, composition of matter, article of manufacture, method/process, improvement
Independent – stands on its own Dependent – depends from another claim
and includes all limitations thereof Multiple dependent – depends from more
than one other claim
Anatomy of a Claim
Preamble – transitional phrase (comprising/consisting) – elements
“Comprising” means: the following elements and maybe others as well
“Consisting” means: the following elements and only those elements
Claim Objective
The broad claim should include the fewest number of elements possible to define an invention which is novel and was non-obvious to a person having ordinary skill in the art to which the invention pertains at the time the invention was made.
Fewer elements makes it more difficult to avoid infringement.
Example of a Broad Independent Claim
A method for measuring left atrial pressure, comprising: inserting a balloon-containing catheter into the
esophagus and positioning said catheter so that when the balloon is inflated, pressure from the left atrium affects said balloon;
inflating said balloon; and, determining mean left atrial pressure by the effect
of the atrial pressure upon said balloon.
Purpose of Dependent Claims
Dig the well deep so you have a place to retrieve limitations you may need during prosecution
The Doctrine of Claim Differentiation
Abstract of the Disclosure
Must be on a separate sheet Must be no more than 150 words in length Purpose is to enable the USPTO and the
public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure
Used often in patent searching Usually appears after Claims in application
but always appears on face of patent
Miscellaneous Parts
Inventor(s) Assignee Application No. Related Applications International and US Classification Field of Search References Cited Primary Examiner Assistant Examiner Attorney, Agent or Firm