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  • Writer's pictureCassandra L. Wilkinson

Understanding Your Patent Application

A nonprovisional application for a U.S. patent is made to the Director of the United States Patent and Trademark Office and includes:

(1) A written document which comprises a specification (description and claims); (2) Drawings (when necessary); (3) An oath or declaration; and (4) Fees.1

The following order of arrangement is preferable in framing the specification.2 The specification may include some or all of the following elements:

(1) Title of the invention.3 (2) Cross-reference to related applications.4 (3) Statement regarding federally sponsored research or development.5 (4) The names of the parties to a joint research agreement.6 (5) Reference to a “Sequence Listing,” a table, or a computer program listing appendix submitted on compact disc and an incorporation-by-reference of the material on the compact disc. (6) Statement regarding prior disclosures by an inventor or joint inventor. (7) Background of the invention.7 (1) Field of the invention. (2) Description of related art.8 (8) Brief summary of the invention.9 (9) Brief description of the included drawing.10 (10) Detailed description of the invention.11 (11) Claim(s).12 (12) Abstract of the Disclosure.13 (13) Sequence Listing, if on paper.14

The specification provides a description of the invention and particularly points out and distinctly identifies the extent of patent protection requested by the inventor for their invention.

According to 37 C.F.R. 1.71, the detailed description included in the specification must address the following:

(a) The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.

(b) The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his invention must be set forth.

(c) In the case of an improvement, the specification must particularly point out the part or parts of the process, machine, manufacture, or composition of matter to which the improvement relates, and the description should be confined to the specific improvement and to such parts as necessarily cooperate with it or as may be necessary to a complete understanding or description of it.15

The detailed description in the specification must provide clear support for all of the claims and a basis for the terms used in each claim.16

According to 37 C.F.R. 1.77, the “specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.”17

Therefore, the specification must include at least one claim. Think of the claim as establishing a boundary similar to the boundary of a piece of property. Just as the property boundary gives the property owner the right to prevent others from entering on to their land, the claim gives the inventor the right to prevent others from entering on to the area descripted by the claim for the time period that the patent exists. The inventor or inventors have the exclusive right to exclude others from making, selling, or using the invention as described by the claim in the United States. The claims are the most important part of the patent application. The claims must be supported by both the detailed description of the specification and any drawing submitted with the patent application.18

According to 37 C.F.R. 1.77, the “applicant for a patent is required to furnish a drawing of the invention where necessary for the understanding of the subject matter sought to be patented."19 Therefore, a patent application may be submitted without a drawing if the inventor believes the drawing is not required for the understanding their invention. However, most of the time a drawing will be required to fully understand the invention.

According to 37 C.F.R. 1.63, the patent application must include an oath or declaration per the following requirements:

(a) The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration directed to the application, except as provided for in § 1.64. An oath or declaration under this section must: (1) Identify the inventor or joint inventor executing the oath or declaration by his or her legal name; (2) Identify the application to which it is directed; (3) Include a statement that the person executing the oath or declaration believes the named inventor or joint inventor to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and (4) State that the application was made or was authorized to be made by the person executing the oath or declaration.

(b) Unless the following information is supplied in an application data sheet in accordance with § 1.76, the oath or declaration must also identify: (1) Each inventor by his or her legal name; and (2) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.

(c) A person may not execute an oath or declaration for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56. There is no minimum age for a person to be qualified to execute an oath or declaration, but the person must be competent to execute, i.e., understand, the document that the person is executing.20

For a nonprovisional U.S. patent application, the following fees are required to be submitted with as part of the patent application:

(1) basic filing fee,21 (2) search fee,22 (3) examination fee,23 (4) application size fee,24 if applicable, (5) excess claims fees,25 if applicable, and (6) non-electronic filing fee,26 if applicable.

By having a better understanding of what is required to prepare your patent application, you will be in a better positon to help us with the preparation of your patent application.

1. 35 U.S.C. 111, 37 C.F.R. 1.51 and Manual of Patent Examining Procedure (MPEP) Section 601 2. MPEP Section 608.01(a) 3. MPEP Section 606 4. MPEP Section 211 et seq. 5. MPEP Section 310 6. 37 C.F.R. 1.71(g) 7. MPEP Section 608.01(c) 8. 37 C.F.R. 1.97 and 37 CFR 1.98 9. MPEP Section 608.01(d) 10. MPEP Section 608.01(f) 11. MPEP Section 608.01(g) 12. MPEP Section 608.01(i) to 608.01 (p) 13. MPEP Section 608.01(b) 14. 37 C.F.R. 1.821 through 1.825 15. MPEP Section 608.01(g) 16. 37 C.F.R. 1.75, MPEP Section 608.1(i) and MPEP Section 608.01(o) 17. MPEP Section 608.1(i) 18. 37 C.F.R. 1.75, MPEP Section 608.1(i) MPEP Section 608.01(o) for Specification and 35 U.S.C. 113, 37 C.F.R. 1.18 and MPEP Section 608.02 for Drawings 19. MPEP 608.2 20. MPEP 602.01(a) 21. 37 C.F.R. 1.16(a), (b), (c) or (e) 22. 37 C.F.R. 1.16(k), (l), (m) or (n) 23. 37 C.F.R. 1.16(o), (p), (q) or ® 24. 37 C.F.R. 1.16(s) 25. 37 C.F.R. 1.16(h), (i) or (j) 26. 37 C.F.R. 1.16(t)

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