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