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What Is A Patent?
A patent is a document that describes an invention in such full, clear, and concise terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention. It is a right granted to an inventor by the government for a period of time to exclude others from making, using, offering for sale, and selling an invention claimed in the patent.
Categories of Patents
Patents are categorized into three types, namely, utility patents, design patents, and plant patents.
A utility patent provides protection for any new method, process, or structure that performs a useful function and generates a useful result. For example, inventions related to new and useful mechanical structures, electronic devices, chemical compositions, business methods, software processes, etc. can be protected by utility patents. A utility patent protects the usefulness of an invention. The patent term of a granted utility patent is 20 years from the date of filing the patent application.
A design patent provides protection for a new ornamental shape or design of an article without regard to its utility. A new and unique design of an article, for example, a piece of furniture, a piece of computer equipment such as a computer mouse, a briefcase, head gear, tools, toys, hardware, etc., can be protected by a design patent. If the new design of the article performs a new and useful function, the inventor should consider filing a utility patent for the new and useful function of the article. The patent term of a granted design patent is 14 years from the date of patent grant.
A plant patent provides protection for any new asexually reproduced variety of a plant including “cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state” . A plant patent excludes others from asexually reproducing, offering for sale, selling, or importing the plant. The patent term of a granted plant patent is up to 20 years from the date of filing the plant patent.
Types of Patent Applications
Patent applications are of two types, namely, provisional patent applications and non-provisional patent applications as discussed below.
- Provisional Patent Application
When an invention or idea is in a conceptual stage and has not been completely implemented or developed, the inventor can protect the inventive concept by filing a provisional patent application. A provisional patent application provides an inventor patent protection of one year from the date of filing the provisional patent application. The provisional patent application provides “Patent Pending” status for an invention. An applicant can mark a product “Patent Pending” as soon as the provisional patent application has been filed in the patent office. The filing of the provisional patent application gives the inventor an early priority date at a cost less than the cost of filing a non-provisional patent application. The inventor can then claim the benefit of the provisional patent application in a later filed non-provisional or regular patent application including the priority date of the provisional patent application and the subject matter disclosed in the provisional patent application, thereby giving an inventor earlier patent rights to the claimed invention.
In order to claim the benefit of the provisional patent application, the applicant must file the corresponding non-provisional patent application within 12 months from the provisional application filing date. “Under the provisions of United States Code (U.S.C.) § 119(e), the corresponding non-provisional patent application would benefit in three ways: (1) patentability would be evaluated as though filed on the earlier provisional application filing date, (2) the resulting publication or patent would be treated as a reference under 35 U.S.C. § 102(e) as of the earlier provisional application filing date, and (3) the twenty-year patent term would be measured from the later non-provisional application filing date.” If the corresponding non-provisional patent application is not filed within 12 months of the provisional patent application filing date, the provisional patent application will be considered abandoned and cannot be revived or used for claiming its benefit or its priority date.
The provisional patent application should include a written description of the invention. Although the provisional patent application does not require formal claims, drawings, etc., the non-provisional patent application will only get the benefit of subject matter disclosed in the provisional patent application. Therefore, in the provisional patent application, it is important that you provide a complete written description of the core invention concepts that need to be claimed in the later filed non-provisional patent application. The written description in the provisional patent application should clearly explain how to make, use, and carry out the invention. Although optional, the provisional patent application may be drafted along the lines of a non-provisional patent application as explained in the next few sections of this chapter.
In general, a provisional patent application can be filed for only utility and plant inventions and not for design inventions. It is also important to note that a provisional patent application will not be prosecuted and will not result in a granted patent unless a corresponding non-provisional patent application is filed within 12 months of the provisional patent application’s filing date. Also, a provisional patent application cannot be modified or amended after the provisional patent application is filed. You may incorporate modifications or amendments by filing a subsequent provisional patent application, or incorporate them in the later filed non-provisional patent application. You can claim the benefit of one or more provisional patent applications in a single non-provisional patent application and multiple non-provisional patent applications can claim the benefit of a single provisional patent application or many provisional patent applications.
Non-Provisional Patent Application
As explained in the previous section, a non-provisional patent application needs to be filed within 12 months of filing the provisional patent application in order to claim the benefit of the provisional patent application. However, if your invention has been completely developed and you have considered all possible improvements of the invention, embodiments of your invention, and future advances in the relevant technology, you may directly file a non-provisional patent application in the patent office without filing a provisional patent application. In another approach of filing a non-provisional patent application after filing a provisional patent application, you may convert a filed provisional patent application into a non-provisional patent application. An advantage of filing a provisional patent application and then filing a corresponding non-provisional patent application is that an applicant obtains 21 years of patent protection, that is, 1 year for the provisional patent application and 20 years for the non-provisional patent application.
The non-provisional patent application requires a detailed specification, one or more claims, drawings (when necessary), etc. Drafting of the specification, claims, and drawings are explained in subsequent sections of this article.
The non-provisional patent application will be examined by the patent office and considered for patentability, novelty, and non-obviousness. At least one of the inventors named in the earlier filed provisional patent application must be named in the non-provisional patent application.
- The Specification
A patent application comprises a written specification and drawings that describe and illustrate the invention. 35 U.S.C 112 requires that the specification contains a written description of the invention, and of the manner and process of using it, in such in full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and sets forth the best mode contemplated by the inventor of carrying out his invention. It further requires that the specification recite one or more claims that particularly point out and distinctly claim the subject matter that the applicant regards as the invention. The specification for the invention should be written in such a way that any person of ordinary skill in the art should be able to infer how to make and use the invention.
37 CFR 1.71 reads,
(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.
Sections of the Specification
(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.
The various sections of the specification are explained below:
The specification of a patent application should teach a person of ordinary skill in the art pertaining to the invention, how to make and use the invention. The specification typically comprises a title, a cross reference to related applications, a background, a summary, a brief description of the drawings, a detailed description of the invention, claims, and an abstract as explained below.
- Title Of The Invention
The title provided in the specification should capture the essence of the invention without being too long. It should be brief, precise, and definite. Avoid using fanciful and ambiguous terms in the title. Moreover, do not use terms, for example, “Patent”, the inventor’s name, the company’s name, “etc.”, in the title.
- Cross Reference To Related Applications
If you are claiming the benefit of an earlier filed patent application or you wish to reference a patent application in the present patent application, you should include a “Cross Reference To Related Applications” section in the specification. In this section, you should enter the patent application number, the title, the date of filing the referenced patent application in the patent office, and the name of the patent office in which the referenced application was filed. You may also include a statement that the specification of the referenced application is incorporated by reference in its entirety. Note that incorporating a referenced application in its entirety means that the subject matter of the referenced application is automatically and entirely included in the patent application.
The background section of the specification sets the stage for your invention to follow. In the background section, you may discuss the field of your invention and the existing needs that are unmet by the prior arts. The background section can recite a short general statement that brings out the general scope of the invention. The problems existing in the prior arts and the need for your invention may then be stated. It is important to note that you should not disclose specific features of your invention in the background section and only focus on the deficiencies and problems of the prior art which can be used to establish the need for your invention.
Under the applicable section of the Code of Federal Regulations, a Background of the Invention is not required and therefore it is not necessary to provide this section in a patent application. Also, mentioning the prior arts in the patent application is not recommended as it may used to invalidate an issued patent on the ground that the prior art cited in the application was incomplete or misleading and the U.S. PTO examiner may have based his decision, in part, to allow the application on the prior art cited by the applicant in the Background Of The Invention. Therefore, it may be preferable to avoid writing a background section in the specification.
- Summary Of The Invention
The summary section of the specification provides an introduction to the invention. In the summary section, you should recite the key inventive concepts of your invention. You should discuss every element of your invention in the summary section. You may also bring out advantages of the invention in the summary section.
Under the applicable section of the Code of Federal Regulations, a Summary Of The Invention is not required and so it is not necessary to provide this section in a patent application. The scope of an issued patent may be narrowed or invalidated on the basis of the subject matter disclosed as being the invention in the Summary of the Invention. A court may find that the summary section identifies key or essential inventive concepts of the claimed subject matter and the disclosure in the Summary of the Invention controls the scope of the invention. This may limit the scope of the invention to the elements discussed in the summary section and narrow the scope of an issued patent. Therefore, it may be preferable to avoid writing a summary section in the specification.
To avoid limiting the scope of the invention, every aspect, element, feature, structure, component, etc. of the invention that is claimed needs to be recited in the summary section. You may also include a statement that the summary is provided to introduce a selection of concepts in a simplified form that are further described in the detailed description of the invention and that the summary is not intended for determining the scope of the claimed subject matter.
- Brief Description Of The Drawings
In general, the detailed description of the invention is better understood when read in conjunction with drawings. The brief description of the drawings section briefly introduces the drawings in the specification. It provides a listing of the drawings that are filed along with the specification of the patent application. In this section, the drawings should be listed by a number or reference character and a brief definition of each of the drawings should be provided that will be used to explain the invention. You may also mention that all the drawings provided in the patent application are example constructions and are not meant to limit the scope of the invention.
- Detailed Description Of The Invention
In the detailed description of the invention section of the specification, the process, machine, manufacture, composition of matter, or improvement invented should be described completely. In this section, every element, method step, system component, and feature of the invention and their corresponding embodiments and variations should be explained in detail in full, clear, concise, and exact terms. You should also explain the process of making and using the invention in detail such that a person of ordinary skill in the art to which the invention pertains may adequately reproduce the invention. Moreover, you should disclose the best mode of practicing the invention and provide supporting examples for every feature, element, etc., of the invention in the detailed description.
Where appropriate the detailed description is typically written with reference to the drawings of the invention. You should describe every element illustrated in the drawings and use reference numerals to refer to the elements of the drawings within the description. Furthermore, every element of the invention as mentioned in the claims section of the specification should be supported with sufficient enablement and working examples in the detailed description. The applications and use of the invention should also be described.
It is important to note that the detailed description of the invention should be complete and thorough in every way as no new matter can be added to the specification of a patent application after the patent application is filed. Amendments and modifications may be made to only the subject matter that has already been disclosed and that can be inferred from the descriptions and drawings.
A well crafted patent application contains no prosecution history estoppel (i.e., which requires no amendment of the claims in response to an Office Action, which, in turn, requires a first Office Action allowance), and that will withstand an invalidity challenge and where possible an infringement challenge.
The specification of the patent application should have at least one claim that clearly and distinctly identifies the invention. The claims drafted in the specification determine the scope of patent protection. The claims may be classified as independent claims and dependent claims. The independent claims should be drafted as broadly as possible to obtain maximum patent protection.
Dependent claims are dependent on a previously recited independent or dependent claim in the claims section. The dependent claims are construed to incorporate all the elements of the claim to which they refer. The dependent claims add limitations to the subject matter claimed in the previous claims to which they refer.
The claims section is required to be written starting on a new page in the specification. The grant of a claim depends on the language or wording used to construct the claims. The terms and phrases used in the claims must find antecedent basis in the description of the invention section so that the terms or phrases used in the claims are clearly understood. Guidelines for drafting the claims of a patent application are provided in section 3.5.7 of this chapter.
The abstract section of the specification should bring out the inventive concept of the invention in non-legal language. The abstract should be written such that the technical field of the invention, the solution to the unmet problems in the technology, and the principal uses of the invention are clearly understood. There is a word limit of 150 words or less for the abstract section of the specification. It should be written in a single paragraph on a new page of the specification and should identify the novelty of the invention in a concise manner.
- U.S. PTO Requirements for the Specification
The following are some of the U.S. PTO requirements for the specification of a patent application:
- A non-provisional utility patent application must be in the English language or be accompanied by a translation in the English language, with a statement that the translation is accurate and a fee set forth in 37 CFR §1.17(i).
- All papers which will become part of the permanent records of the U.S. PTO must be typewritten or produced by a mechanical (or computer) printer. The text must be in permanent black ink or its equivalent; on a single side of the paper; in portrait orientation; on white paper that is all of the same size, flexible, strong, smooth, non shiny, durable, and without holes. The paper size must be either 21.6 cm. by 27.9 cm. (81/2 by 11 inches), or 21.0 cm. by 29.7 cm. (DIN size A4).
- There must be a left margin of at least 2.5 cm. (1 inch) and top, right, and bottom margins of at least 2.0 cm. (3/4 inch).
- The pages of the specification, including claims and abstract, must be numbered consecutively, starting with 1, the numbers being centrally located above or preferably below, the text.
- The lines of the specification must be 1.5 or double spaced (lines of text not comprising the specification need not be 1.5 or double spaced).
- It is desirable to include an indentation at the beginning of each new paragraph, and for paragraphs to be numbered ("", "", "" etc.).
- It is preferable to use all of the section headings described above to represent the parts of the specification. Section headings should be in upper case without underlining or bold type.
- The title of the patent application may have up to 500 characters. However, it is preferable to provide a short and specific title.
- Any non-provisional utility patent application claiming the benefit of one or more prior filed co-pending non-provisional applications (or international applications designating the United States of America) under 35 USC 120, 121 or 365(c) must contain in the first sentence(s) of the specification following the title, a reference to each such prior application, identifying it by the application number or international application number and international filing date, and indicating the relationship of the applications, or include the reference to the earlier application in an application data sheet under 37 CFR § 1.76. Cross-references to other related patent applications may be made when appropriate.
- Where there are drawings, you must include a listing of all figures by number (e.g., Figure 1A) and with corresponding statements explaining what each figure depicts.
- The abstract section of the patent application should be in narrative form and generally limited to a single paragraph, and it must begin on a separate page. The abstract should not be longer than 150 words.
- 37 CFR 1.71 (f) states that “The specification must commence on a separate sheet. Each sheet including part of the specification may not include other parts of the application or other information. The claim(s), abstract and sequence listing (if any) should not be included on a sheet including any other part of the application.
- 37 CFR 1.52 (b)(2)(ii) states that the text of the specification should be written in a non script type font (e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size of 6).
- 14. 37 CFR 1.58: Chemical and mathematical formulae and tables.
(a) The specification, including the claims, may contain chemical and mathematical formulae, but shall not contain drawings or flow diagrams. The description portion of the specification may contain tables, but the same tables may only be included in both the drawings and description portion of the specification if the application was filed under 35 U.S.C. 371. Claims may contain tables either if necessary to conform to 35 U.S.C. 112 or if otherwise found to be desirable.
(b) Tables that are submitted in electronic form (§§ 1.96(c) and 1.821(c)) must maintain the spatial relationships (e.g., alignment of columns and rows) of the table elements when displayed so as to visually preserve the relational information they convey. Chemical and mathematical formulae must be encoded to maintain the proper positioning of their characters when displayed in order to preserve their intended meaning.
(c) Chemical and mathematical formulae and tables must be presented in compliance with § 1.52(a) and (b), except that chemical and mathematical formulae or tables may be placed in a landscape orientation if they cannot be presented satisfactorily in a portrait orientation. Typewritten characters used in such formulae and tables must be chosen from a block (non script) type font or lettering style having capital letters which should be at least 0.422 cm. (0.166 inch) high (e.g., preferably Arial, Times Roman, or Courier with a font size of 12), but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size of 6). A space at least 0.64 cm. (1/4 inch) high should be provided between complex formulae and tables and the text. Tables should have the lines and columns of data closely spaced to conserve space, consistent with a high degree of legibility.
- Guidelines for Drafting the Specification
- Draft the patent application conforming to the above requirements so that the claims do not have to be amended during patent prosecution.
- Keep the title of the invention short and specific to about 4-8 words. You may use the preamble of your claim to come up with an appropriate title for your invention.
- Begin the detailed description of your invention with the description of the drawings. Use the exact figure definition recited in the brief description of the drawings section of the patent application to begin the description of the drawings.
- Define terms used in the claims and detailed description. You may define the terms, for example, as follows: “As used herein, the term X refers to …”
- Define terms that may be subject to more than one interpretation. For example, if you use a phrase, for example, “substantially similar shape”, you should define it by stating “As used herein, “substantially similar shape” refers to…”
- You may refer to a term using a replacement term. For example, instead of stating “Bluetooth enabled mobile device” throughout the description, you may define it as a mobile device by using the sentence, “As used herein, the term “Bluetooth enabled mobile device” is herein referred to as a “mobile device””. You may then use the term “mobile device” when you need to subsequently refer to the “Bluetooth enabled mobile device”.
- Copy each claim into the specification using non-legal language and then explain each element of the claim with sufficient working examples describing in “full, clear, concise, and exact terms” how to make and use the invention. The description should support the scope of each claim.
- Ensure that the specification is enabling by inserting technical details, technical art and technology, various embodiments or alternative structures, alternative ways in which the invention can be utilized and sufficient working examples.
- Write at least one paragraph for each element of your claims. You should explain the elements in the order of their occurrence in the claims.
- Write at least one paragraph for each feature of the invention illustrated in the figures.
- Write at least one paragraph on each of the embodiments of the invention, that is, the possible variations of the method, components, etc.
- Keep your paragraphs short to about 150-200 words.
- Draft sufficient working examples for the method, system, and applications of the invention. Draft an example of how the invention works.
- When examples of a term first appear in the specification, use the following language:
Example: Messaging services comprise, for example, voicemail messaging, short message service, text messaging, multimedia messaging services, etc. As used herein, these services are collectively referred to as “messaging services”.
Example: As used herein, the oils comprising rosemary oil, spearmint oil, peppermint oil, clove oil, lemongrass oil, cedar oil, cinnamon oil, etc. are referred to as “essential oils”.
- Ensure that every part, its function, working, and use is described in detail in the specification.
- If the descriptions of the elements of the invention are taken from other sources, you should quote the source against the description.
- Do not refer to any element of the claims or figures as the “invention” as this limits the scope of the invention. You may refer to the method, apparatus, system, etc. directly in the description without using the term “invention”.
- Figures should be referred to as example constructions or embodiments of the invention.
- Enter reference numerals used to identify the components or parts of the drawings, in the specification next to the associated terms. Do not use the same reference numeral for two parts.
- The specification should contain a description for each numeral referenced in the drawings.
- Ensure that every part described in the specification is illustrated in the drawings. In the event that a part is not illustrated in the drawings, you should state this in the description by using the phrase “(not shown)” next to the part.
- The EXACT terms used in the claims must be used in the specification and drawings to avoid a written description rejection and/or an indefiniteness rejection. Do not use synonyms or alternative terminology for the same element or part in the specification, drawings, or claims.
- Introduce parts using the indefinite article “a” and then use the definite article “the” for subsequent uses of the same term.
- Draft the specification in the present tense to the extent possible in the specification.
- If aspects of the invention have not been developed and are therefore prophetic, describe them in the future tense.
- Draft the specification in the same order as the figures in the “Brief Description Of The Drawings” section and avoid moving or skipping ahead from one figure to another to the extent possible.
- Avoid usage of adjectives and qualifying terms in the specification as they may limit the scope of the invention. For example, avoid using terms such as desired, required, preferred, essential, critical, necessary, important, key, superior, only, unique, all, none, an important aspect, very accurate, etc
- Avoid usage of relative terms, for example, “may be”, “larger”, “small”, “heavy”, etc. in the specification
- Do not use any terms or language that may narrow or invalidate your invention.
- Do not use phrases that will limit the scope of the claimed invention, for example, “the objects of the invention”, “prior art”, “present invention”, “preferred embodiment”, etc.
- Avoid usage of personal pronouns such as “he” and “she”.
- Limit the specification to a description of the method/system/apparatus, embodiments (or alternative structures) of the invention, alternatives of the process or steps, and working examples to support the scope for each claim.
- Describe as many embodiments of the invention as you can think of in the specification to preclude others from developing ideas from your patent application and filing patent applications for alternative embodiments of the same invention.
- Do not describe the current art or the prior art, limitations of the current art or prior art, and merits or advantages of your invention over the prior art.
- Do not mention the elements of the invention by stating that they are “objects of the invention”. Mentioning the “objects of the invention” limits the scope of the claims to the objects of the invention mentioned in the specification.
- To avoid limiting the scope of the invention to preferred embodiments, use phrases, for example, “In the example of FIG. 1…”, “The carboxylic acid, is, for example, acetic acid…”, “The step is performed, for example, by…”, “The operating system is, for example, Unix…”, etc. Using language like this makes it clear that the carboxylic acid, the step, the operating system, etc. are not limited to the examples specified in the specification.
- Recite the full text of all abbreviations of terms when the abbreviation is used for the first time in every section of the patent application. The abbreviations may then be used for subsequent uses of the same terms.
- In the description, explain all symbols, for example, mathematical symbols, which appear in the description and drawings.
- If you are referring to a trademarked good or service in the description, you should add the trademark symbol on the good or service and the name of the owner of the trademark.
- Do not use legal language, for example, “said”, “means”, etc. in the specification.
- The abstract and summary of the invention should recite at least the first independent claim in non-legal language. Do not list too many advantages of the invention in the abstract. Keep it technical and terse.
- Include relevant disclaimers for the different sections of the patent specification. For example, for the summary section, you may recite that the summary is not intended to identify key or essential inventive concepts of the claimed subject matter, nor is it intended for determining the scope of the claimed subject matter.
For the brief description of the drawings, you may recite that the drawings are provided as example constructions and are not meant to limit the scope of the invention.
Furthermore, for the examples provided in the specification, you may recite that the examples have been provided merely for the purpose of explanation and are in no way to be construed as limiting of the present invention.
- Have another person proof read the completed patent application.
- The Claims:
The claims determine the scope of protection for the inventive concept in a patent application. The claims should be drafted in such a manner that they cannot be easily designed around. The claims establish the basis of patentability and hence should be drafted to bring out the novelty and non-obviousness of the invention. The claims should be drafted as broadly as possible but just narrower than the prior art. The claims should be drawn to the new process, machine, article of manufacture, composition of matter, or the new use of an existing process, machine, article of manufacture, or composition of matter. As mentioned earlier, claims are classified as independent claims and dependent claims. We will now look at the U.S. PTO requirements for claims.
- U.S. PTO Requirements for Claims
35 U.S.C 112 states, “ The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention
A claim may be written in independent form or, if the nature of the case admits, in dependent or multiple dependent form.
A claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”
The construction of independent claims and the dependent claims is explained below.
- Independent Claims
The independent claim stands alone and should independently capture the core inventive concept. The independent claim can be broken down into a preamble, a body, and optionally a whereby clause.
To draft an independent claim, you should first identify the preamble of your claim. The preamble should recite the main purpose of the invention in a broad manner. The preamble should be concise and should not contain any elements (also known as “limitations”) of the invention as they will not be considered as part of the claim set and will therefore go unclaimed. The preamble only serves to identify the nature and class of the invention.
The body of the independent claim should comprise the essential elements or limitations of the invention. The elements of the invention should be brought out in a broad manner in a logical sequence. Each of the elements in the sequence should be logically connected to a preceding element. The final element recited in the body of the independent claim should recite the end result for establishing the purpose of the invention stated in the preamble. A broad independent claim should capture only the elements of the invention without which the invention will not work. The fewer the elements recited in the body of the independent claim, the broader the scope of the independent claim.
The independent claim may be concluded using the “whereby clause”. The whereby clause may recite how the end result generated by the final element in the body of the claim achieves or accomplishes the main goal of the invention as stated in the preamble. The whereby clause may also recite the advantages of the invention and how the end result is accomplished. The whereby clause is typically used to emphasize the usefulness of the invention claimed in the patent application.
When drafting the preamble, the elements in the body and the whereby clause of the independent claim, broad terms and phrases should be used to avoid limiting the invention. For example, if an element of the invention requires the capture of an image using a camera, the usage of the terms “image” and “camera” would limit the element of the invention to only capturing an image using a camera and would not cover the capture of other data using other devices, for example, video recorders, mobile phones, etc. Therefore, to broaden this element, you may, for example, state “capturing data and multimedia content using a data capture device”. This element would broadly capture all types of data and multimedia content including, for example, text, image files, audio files, video files, etc., using any information or data capture devices, for example, cameras, video recorders, mobile phones, etc.
Furthermore, it is important to establish antecedent basis for every term used in the claims. Therefore, you should use proper articles, for example, “a”, “said”, and “the” when referring to different terms and elements in the claims. For example, when you mention a term for the first time in the claims, use the article “a” before the term. For every subsequent reference to that same term, use “said” before the term. The word “said” implies that the following term refers to a term that was previously recited. In some cases, the articles “a” and “the” are used to establish antecedent basis.
The results of the validity search can be used as evidence to invalidate the claims of the subject patent, thereby showing that the subject patent should not have been issued as a patent in the first place in view of the prior art references and that the inventor of the subject patent was not the first to file or develop the invention.
- You may consider the following steps when drafting an independent claim:
- Identify the purpose of the invention and define it as the preamble of your independent claim
- Identify all the elements of the invention
- Determine broader terms that may be used to define and broaden the elements of the invention.
- Remove optional elements of the invention in order to broaden the scope of the claim.
- Connect the elements of the invention.
- Check for antecedent basis in the claims
- Ensure that the inventive concept and its novelty are captured in the independent claim.
Dependent claims are narrower than the claims they refer to. Dependent claims incorporate all the elements of the claim that they refer to. They recite additional limitations to the claims and/or recite the elements of the preceding claims more specifically. The dependent claims provide a means for argument on novelty when the examiner rejects elements of the independent claim. In the event that the examiner invalidates your broad independent claim, the combination of the broad independent claim with your narrower dependent claims may be considered patentable. The dependent claims therefore provide a backup to your independent claim.
Every additional feature of your invention should be captured in a dependent claim. The dependent claims should be drafted with varying scope so that a wider search of your invention will have to be conducted during examination.
Moreover, the dependent claims aid in clearly and descriptively specifying what the broad terms or elements recited in the independent claim or other claims refer to. . Note that, in a dependent claim, you can only descriptively specify elements already referred to in the previous claims or add alternative structures to those elements.
The following steps may be considered while drafting dependent claims:
List out the narrow features of your invention and draft them as dependent claims.
- Use the elements that you previously eliminated when drafting the independent claim, to draft the dependent claims.
- Descriptively specify the broad elements of your previous claims.
- Clarify each of the broad terms used in the previous claims.
- Add alternative structures related to the elements of your previous claims.
- Use the word “wherein” to narrowly refer to the elements of the previous claims.
- To incorporate additional elements of the invention, use the words “further comprising”.
35 U.S.C 112 provides, “an element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”
Means-plus-function clauses are typically used to generically claim a structure or a step for performing a specified function. Claiming an element as a “means” is expected to cover the structure or material described in the specification. Typically, a “means-plus-function” clause in a claim cannot be understood without referring to the specification in order to determine which structure is used to perform a particular function. Therefore, if a “means-plus-function” clause has been used in the claims, the structure, devices, or materials used to perform the particular function must be disclosed in the specification.
Since 35 U.S.C 112 states that the “means-plus-function” clause will be construed to cover the corresponding structure, material, or acts described in the specification, it may be disadvantageous to use the “means-plus-function” clause as it limits the scope of the invention to only the structures defined and described in the specification of the patent application.
- Novelty and Non-Obviousness Considerations in Claims
Although it is important to draft broad claims, it may not always be possible in view of the novelty and non-obviousness requirements of the claims.
35 U.S.C. 102 states, the claim that identifies the invention must be novel in view of the prior art. Although the claim should be drafted as broadly as the prior art allows, you may need to reintroduce those elements or narrowly recite existing elements to define novel aspects of the invention.
Therefore, if the prior art has three elements A, B, and C and your claim also has those three elements A, B, and C, you can overcome the prior art by introducing a new element D to your claim. Your claim will therefore now comprise elements A, B, C, and D which may be considered novel over the prior art. However, this combination of elements A, B, C, and D may not meet the non-obviousness requirement. Alternatively, you may consider a narrower recitation of at least one element of your three element claim. For example, if you alter the structure or implementation of the element C to C1 where the structure of C1 is not disclosed in the prior art, you will now have a claim comprising three elements A, B, and C1. However, this combination of elements A, B, and C1 although new may still not meet the non-obviousness requirement.
In addition to being novel, under 35 U.S.C. 103, the claim that defines the invention should be non-obvious in view of the prior art. 35 U.S.C. 103 states, “A patent may not be obtained though the invention is not identically disclosed or described as set forth in §102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.”
As explained in Chapter 2, the KSR v. Teleflex Supreme court decision gives a U.S. PTO examiner more leeway to find an invention obvious and therefore unpatentable. To design around a potentially obvious rejection, a new element may be introduced or an existing element modified to overcome the prior art. You should therefore consider every possible distinct feature, embodiment and alternative structure of your invention in order to draft a claim that would be considered novel and non-obvious, in other words, patentable over the prior art.
- Technical Requirements Of Claims
The claims are required to be drafted in a clear, concise, and technical manner such that they will not be misunderstood. The claims should be drafted on a new page and should begin with the words “I claim”, or “We claim”. Some of the technical requirements for claims are listed below:
- The claims should recite statutory subject matter, should distinctly recite the novel and non-obvious invention, and should be clearly and descriptively supported by the specification.
- The claims section of the patent application should begin on a separate physical sheet or electronic page.
- If multiple claims have been draft, the claims should be numbered consecutively in Arabic numerals.
- Each claim should be written as a single sentence.
- If your claims have many elements (also referred to as “limitations”), indent each element as shown in the examples above.
- Avoid negative limitations in the claims. In other words, draft your claims with positive limitations.
- Provide antecedent basis in your claims.
As explained earlier, use the articles “a”, “said”, and “the” accurately for every term used in your claims. You may use “a” when you first introduce a term, and then “said” for every subsequent use of the same term.
- Word and punctuation usage
Avoid using abbreviations, for example, IC for integrated circuit to avoid ambiguity in claims. Also, avoid using relative terms such as “large”, “smaller”, etc., and casual language. Furthermore, avoid using quotes, dashes, parenthesis, trademarks, etc.
For each step of your method claim, use the “-ing” form of the verb to recite the method step. For example, in the examples above, you will see the use of the terms “creating”, “publishing”, etc. Also, you should not directly state hardware/software in a method claim. As explained earlier, to introduce hardware/software applications in the method claims, use the “providing” clause.
When required to specify a dimension, use terms, for example, “about”, “approximately”, etc. to avoid limiting the dimension to the values claimed. You may also avoid specifying dimensions, for example, length, width, thickness, height, shape, etc. to broaden the language of the claims by using the term “predetermined”. For example, you may refer to a structure having a cylindrical shape by reciting “a structure of a predetermined shape” to avoid limiting the shape of the structure to a cylindrical shape.
A claim that recites “comprising” or “including” means having at least all the elements or components listed in the claim and any additional elements or components (i.e., including all of the elements recited in the claim but not limited to such claims).
A claim that recites “consisting of” means the claim is limited to the elements or components listed in the claim and nothing more.
You may refer to multiple units of a structure by using the term “plurality”, for example, “a member comprising a plurality of recesses for insertion of fasteners”.
There should be only a single period at the end of the independent claim and for each dependent claim.
- Number of claims
Try to limit the number of claims to 20. Note that the U.S. PTO charges an extra fee for every claim in excess of 20 and every independent claim in excess of 3.
- Guidelines for Claim Drafting
The following items provide a guide for drafting the claims of your patent application.
- First, since it is the objective of the inventor to exclude others from making, using, or selling the invention, you should write an independent claim that is broad as the subject matter in the specification allows but just narrower that the prior art to capture the novelty of the inventive concept. A broad claim recites the fewest number of elements and uses the fewest number of words in each element.
- Draft independent claims for the method, system, and use of the invention.
- Draft at least one computer readable medium/device independent claim where applicable, for example, when the invention is drawn to a software process or algorithm.
- Draft dependent claims for each of your independent claims to capture every novel element/feature of your invention.
- You should further draft additional independent claims having a scope narrower than the previous independent claim.
- In general, the more claims there are in a patent application, the more difficult it is for a third party to prove infringement and for a challenger to invalidate the patent.
- Note that “less” is better in claims. You have achieved nothing for the client if you write a narrow claim that can be easily infringed by a competitor.
- Note that each additional word, element, and whereby clause is a limitation in the claim and narrows the scope of the claim. You can broaden the scope of your claim by using fewer elements and words in the claim.
- Arrange the claims from the broadest claim to the narrowest claim.
- Ensure that the elements of the claim cooperate with one another.
- Capture all the novel subject matter in the claims of your patent application. Novel subject matter that is not claimed falls into the public domain.
- Keep the preamble brief, for example, “A global positioning receiver comprising:”
- Draft dependent claims of narrowing scope to make it easier for the patentee to establish literal infringement.
- Ensure that the last step of your claim recites a concrete and useful result, or an output that performs a useful function.
- Write a method claim for a particular use or application of an invention, as method claims generally provide broader protection than apparatus claims which are easier to design around.
- Avoid use of the “mean plus function” clause as it narrows the scope of the claim to the structures and components disclosed in the specification.
- Claims must satisfy two statutory requirements: claims must be definite and must be supported by a specification that meets the written description, enablement and best mode requirement of 35 USC 112.
- Preamble to a pharmaceutical composition should read: “A composition comprising……”, or, “A composition Y for increasing the hemoglobin count…”, and not: “A chemical composition or compound for the treatment of ….” unless clinical data is available to show the therapeutic efficacy of the pharmaceutical composition. Example: A claim for “The treatment of immunodeficiency using compound X…” needs clinical data support in the specification, but this support can be provided at any time during prosecution of the patent application by a section 132 affidavit. A claim for a change in the attribute of the molecule or a parameter, for example, increase in hemoglobin level, lysis of cell wall, etc., does not need clinical support in the specification.
- For combination products, the ratio of the products must be stated in the claim and specification. For example: A surfactant composition comprising a mixture of (1) lauryl alcohol and (ii) sodium lauryl sulfate, magnesium lauryl sulfate or a mixture thereof wherein the ratio of (1) to (ii) is about 1:1 to 1:1.5 by weight.
- File at least 1 claim in a provisional application as some foreign patent offices require that the provisional application recite at least one claim.
- Ensure that your invention meets the Bilski requirements as explained in section 3.7 of this chapter.
- Use dictionaries and technical dictionaries for words used in claim construction. The words of a claim “are generally given their ordinary and customary meaning”. If you want a word to be interpreted differently, you should provide a special definition for that word in the specification.
- Avoid using vague, obscure, and casual terms and inconsistent terminology in the claims.
- Consider what a competitor might do with an invention and draft your claim to cover those aspects of the invention.
- Support your claims with a specification that describes multiple embodiments and alternative structures of the invention to capture the full scope of the invention in the patent application. The disclosure of the specification should enable the claims to avoid invalidation. Furthermore, every element of your claims should be supported in the drawings of the patent application.
- Only the elements that are essential to produce a workable invention should be recited in the claims.
- Avoid negative limitations in the claim. However, use of negative limitations in chemical patents may be advantageous in differentiating the invention from the prior arts. If you wish to use negative limitations in claims, draft them in a positive manner. For example, use phrases such as “comprises 0% of” or “is free of” instead of reciting “does not contain” in a negative limitation.
- For a computer implemented invention, the claims must recite,” A computer implemented method”, “A computer implemented system”, etc.
- Use definite language in the claims. Do not use “may be”, “or”, etc. in the claims.
- Do not use short forms of words, for example, admin, id, auto, info, etc. Write out the full forms of the words, for example, administration, identifier, automatic, information, etc.
- Where appropriate use “comprising” instead of “having”, “including”, and “consisting of” in the claims. Note that “comprising of” is incorrect.
- While providing antecedent basis in your claims, note that using “the said” is incorrect.
- Before you specify a function in a claim, ensure that you precede the function with an element or structure that performs that function.
- U.S. PTO Requirements for Drawings
35 U.S.C.113 recites, “The applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented. When the nature of such subject matter admits of illustration by a drawing and the applicant has not furnished such a drawing, the Director may require its submission within a time period of not less than two months from the sending of a notice thereof. Drawings submitted after the filing date of the application may not be used (i) to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclo¬sure therein, or (ii) to supplement the original disclo¬sure thereof for the purpose of interpretation of the scope of any claim.”
The drawings of a patent application should illustrate every element/ feature of the invention as specified in the claims. The patent application will be considered incomplete if drawings, where required, have not been submitted with the patent application. The drawings should also show by a reference numeral every component, structure or method step recited in the claims. You may also provide drawings for each of the embodiments or alternative variations of the invention described in the specification. You should have the drawings prepared by a competent draftsman who specializes in patent drawings.
The standards for the drawings of the patent application as recited in 37 CFR § 1.84 are listed below,
There are two acceptable categories for presenting drawings in utility patent applications:
(a) Drawings. There are two acceptable categories for presenting drawings in utility patent applications:
(1) Black and white drawings: Black and white drawings are normally required. India ink, or its equivalent that secures solid black lines, must be used for drawings.
(2) Color drawings: When color drawings are required to disclose the subject matter sought to be patented in a utility patent application or the subject matter of a statutory invention registration, the U.S. PTO will accept color drawings in utility patent applications and statutory invention registrations only after granting a petition filed under this paragraph explaining why the color drawings are necessary. The petition should include the following:
(i) The appropriate fee set forth in 37 CFR 1.17(i);
(ii) Three (3) sets of color drawings; and
(iii) The specification must contain the following language as the first paragraph in that portion of the specification relating to the brief description of the drawing: “The file of this patent contains at least one drawing executed in color. Copies of this patent with color drawing(s) will be provided by the Patent and Trademark Office upon request and payment of the necessary fee.”
If the language is not in the specification, a proposed amendment to insert the language must accompany the petition.
(1) Black and white. The U.S. PTO accepts photographs in utility patent applications only after granting a petition which requests that photographs be accepted. The petition should include the following:
(i) The appropriate fee set forth in 37 CFR 1.17(i); and
(ii) Three (3) sets of photographs.
Photographs must either be developed on double weight photographic paper or be permanently mounted on Bristol board. The photographs must be of sufficient quality so that all details in the drawing are reproducible in the printed patent.
(2) Color. Color photographs will be accepted in utility patent applications if the conditions for accepting color drawings have been satisfied. See paragraph (a)(2) of this section.
(c) Identification of drawings: Identifying indicia, if provided, should include the application number or the title of the invention, inventor’s name, docket number (if any), and the name and telephone number of a person to call if the Office is unable to match the drawings to the proper application. This information should be placed on the back of each sheet of drawings a minimum distance of 1.5 cm. (5/8 inch) down from the top of the page. In addition, a reference to the application number, or, if an application number has not been assigned, the inventor’s name, may be included in the left-hand corner provided that the reference appears within 1.5cm. (5/8 inch) from the top of the sheet.
(d) Graphic forms in drawings: Chemical or mathematical formulae, tables, and waveforms may be submitted as drawings and are subject to the same requirements as drawings. Each chemical or mathematical formula must be labeled as a separate figure, using brackets when necessary, to show that information is properly integrated. Each group of waveforms must be presented as a single figure, using a common vertical axis with time extending along the horizontal axis. Each individual waveform discussed in the specification must be identified with a separate letter designation adjacent to the vertical axis.
(e) Type of paper: Drawings submitted to the Office must be made on paper which is flexible, strong, white, smooth, non shiny, and durable. All sheets must be free from cracks, creases, and folds. Only one side of the sheet shall be used for the drawing. Each sheet must be reasonably free from erasures and must be free from alterations, overwritings, and interlineations. Photographs must either be developed on double weight photographic paper or be permanently mounted on Bristol board.
(f) Size of paper: All drawing sheets in an application must be the same size. One of the shorter sides of the sheet is regarded as its top. The size of the sheets on which drawings are made must be:
(1) 21.0 cm. by 29.7 cm. (DIN size A4), or
(2) 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).
(g) Margins: The sheets must not contain frames around the sight (i.e., the usable surface), but should have scan target points, i.e., crosshairs, printed on two catercorner margin corners. Each sheet must include a top margin of at least 2.5 cm. (1inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch), thereby leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4) drawing sheets, and a sight no greater than 17.6 cm. by 24.4 cm. (6 15/16 by 9 5/8 inches) on 21.6 cm. by 27.9 cm. (8 1/2 by 11 inch) drawing sheets.
(h) Views: The drawing must contain as many views as necessary to show the invention. The views may be plan, elevation, section, or perspective views. Detail views of portions of elements, on a larger scale if necessary, may also be used. All views of the drawing must be grouped together and arranged on the sheet(s) without wasting space, preferably in an upright position, clearly separated from one another, and must not be included in the sheets containing the specifications, claims, or abstract. Views must not be connected by projection lines and must not contain center lines. Waveforms of electrical signals may be connected by dashed lines to show the relative timing of the waveforms.
(1) Exploded views. Exploded views, with the separated parts embraced by a bracket, to show the relationship or order of assembly of various parts are permissible. When an exploded view is shown in a figure which is on the same sheet as another figure, the exploded view should be placed in brackets.
(2) Partial views. When necessary, a view of a large machine or device in its entirety may be broken into partial views on a single sheet, or extended over several sheets if there is no loss in facility of understanding the view. Partial views drawn on separate sheets must always be capable of being linked edge to edge so that no partial view contains parts of another partial view. A smaller scale view should be included showing the whole formed by the partial views and indicating the positions of the parts shown. When a portion of a view is enlarged for magnification purposes, the view and the enlarged view must each be labeled as separate views.
Where views on two or more sheets form, in effect, a single complete view, the views on the several sheets must be so arranged that the complete figure can be assembled without concealing any part of any of the views appearing on the various sheets.
(i) A very long view may be divided into several parts placed one above the other on a single sheet. However, the relationship between the different parts must be clear and unambiguous.
(3) Sectional views. The plane upon which a sectional view is taken should be indicated on the view from which the section is cut by a broken line. The ends of the broken line should be designated by Arabic or Roman numerals corresponding to the view number of the sectional view, and should have arrows to indicate the direction of sight. Hatching must be used to indicate section portions of an object, and must be made by regularly spaced oblique parallel lines spaced sufficiently apart to enable the lines to be distinguished without difficulty. Hatching should not impede the clear reading of the reference characters and lead lines. If it is not possible to place reference characters outside the hatched area, the hatching may be broken off wherever reference characters are inserted. Hatching must be at a substantial angle to the surrounding axes or principal lines, preferably 45°. A cross section must be set out and drawn to show all of the materials as they are shown in the view from which the cross section was taken. The parts in cross section must show proper material(s) by hatching with regularly spaced parallel oblique strokes, the space between strokes being chosen on the basis of the total area to be hatched. The various parts of a cross section of the same item should be hatched in the same manner and should accurately and graphically indicate the nature of the material(s) that is illustrated in cross section. The hatching of juxtaposed different elements must be angled in a different way. In the case of large areas, hatching may be confined to an edging drawn around the entire inside of the outline of the area to be hatched. Different types of hatching should have different conventional meanings as regards the nature of a material seen in cross section.
(4) Alternate position. A moved position may be shown by a broken line superimposed upon a suitable view if this can be done without crowding; otherwise, a separate view must be used for this purpose.
(5) Modified forms. Modified forms of construction must be shown in separate views.
(i) Arrangement of views: One view must not be placed upon another or within the outline of another. All views on the same sheet should stand in the same direction and, if possible, stand so that they can be read with the sheet held in an upright position. If views wider than the width of the sheet are necessary for the clearest illustration of the invention, the sheet may be turned on its side so that the top of the sheet, with the appropriate top margin to be used as the heading space, is on the right-hand side. Words must appear in a horizontal, left-to-right fashion when the page is either upright or turned so that the top becomes the right side, except for graphs utilizing standard scientific convention to denote the axis of abscissas (of X) and the axis of ordinates (of Y).
(j) View for Official Gazette: One of the views should be suitable for publication in the Official Gazette as the illustration of the invention.
(1) The scale to which a drawing is made must be large enough to show the mechanism without crowding when the drawing is reduced in size to two-thirds in reproduction. Views of portions of the mechanism on a larger scale should be used when necessary to show details clearly. Two or more sheets may be used if one does not give sufficient room. The number of sheets should be kept to a minimum.
(2) When approved by the examiner, the scale of the drawing may be graphically represented. Indications such as “actual size” or “scale 1/2” on the drawings, are not permitted, since these lose their meaning with reproduction in a different format.
(3) Elements of the same view must be in proportion to each other, unless a difference in proportion is indispensable for the clarity of the view. Instead of showing elements in different proportion, a supplementary view may be added giving a larger-scale illustration of the element of the initial view. The enlarged element shown in the second view should be surrounded by a finely drawn or “dot-dash” circle in the first view indicating its location without obscuring the view.
(l) Character of lines, numbers, and letters: All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thickness may be used in the same drawing where different thicknesses have a different meaning.
(m) Shading: The use of shading in views is encouraged if it aids in understanding the invention and if it does not reduce legibility. Shading is used to indicate the surface or shape of spherical, cylindrical, and conical elements of an object. Flat parts may also be lightly shaded. Such shading is preferred in the case of parts shown in perspective, but not for cross sections. Spaced lines for shading are preferred. These lines must be thin, as few in number as practicable, and they must contrast with the rest of the drawings. As a substitute for shading, heavy lines on the shade side of objects can be used except where they superimpose on each other or obscure reference characters. Light should come from the upper left corner at an angle of 45°. Surface delineations should preferably be shown by proper shading. Solid black shading areas are not permitted, except when used to represent bar graphs or color.
(n) Symbols: Graphical drawing symbols may be used for conventional elements when appropriate. The elements for which such symbols and labeled representations are used must be adequately identified in the specification. Known devices should be illustrated by symbols which have a universally recognized conventional meaning and are generally accepted in the art. Other symbols which are not universally recognized may be used, subject to approval by the Office, if they are not likely to be confused with existing conventional symbols, and if they are readily identifiable.
(o) Legends: Suitable descriptive legends may be used, or may be required by the Examiner, where necessary for understanding of the drawing, subject to approval by the Office. They should contain as few words as possible.
(p) Numbers, letters, and reference characters:
(1) Reference characters (numerals are preferred), sheet numbers, and view numbers must be plain and legible, and must not be used in association with brackets or inverted commas, or enclosed within outlines, e.g., encircled. They must be oriented in the same direction as the view so as to avoid having to rotate the sheet. Reference characters should be arranged to follow the profile of the object depicted.
(2) The English alphabet must be used for letters, except where another alphabet is customarily used, such as the Greek alphabet to indicate angles, wavelengths, and mathematical formulas.
(3) Numbers, letters, and reference characters must measure at least .32 cm. (1/8 inch) in height. They should not be placed in the drawing so as to interfere with its comprehension. Therefore, they should not cross or mingle with the lines. They should not be placed upon hatched or shaded surfaces. When necessary, such as indicating a surface or cross section, a reference character may be underlined and a blank space may be left in the hatching or shading where the character occurs so that it appears distinct.
(4) The same part of an invention appearing in more than one view of the drawing must always be designated by the same reference character, and the same reference character must never be used to designate different parts.
(5) Reference characters not mentioned in the description shall not appear in the drawings. Reference characters mentioned in the description must appear in the drawings.
(q) Lead lines. Lead lines are those lines between the reference characters and the details referred to. Such lines may be straight or curved and should be as short as possible. They must originate in the immediate proximity of the reference character and extend to the feature indicated. Lead lines must not cross each other. Lead lines are required for each reference character except for those which indicate the surface or cross section on which they are placed. Such a reference character must be underlined to make it clear that a lead line has not been left out by mistake. Lead lines must be executed in the same way as lines in the drawing.
(r) Arrows: Arrows may be used at the ends of lines, provided that their meaning is clear, as follows:
(1) On a lead line, a freestanding arrow to indicate the entire section towards which it points.
(2) On a lead line, an arrow touching a line to indicate the surface shown by the line looking along the direction of the arrow; or
(3) To show the direction of movement.
(s) Copyright or Mask Work Notice: A copyright or mask work notice may appear in the drawing, but must be placed within the sight of the drawing immediately below the figure representing the copyright or mask work material and be limited to letters having a print size of.32 cm. to .64 cm. (1/8 to 1/4 inches) high. The content of the notice must be limited to only those elements provided for by law. For example, “1983 John Doe” (17 U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in 1.71(e) is included at the beginning (preferably as the first paragraph) of the specification.
(t) Numbering of sheets of drawings: The sheets of drawings should be numbered in consecutive Arabic numerals, starting with 1, within the sight as defined in paragraph (g) of this section. These numbers, if present, must be placed in the middle of the top of the sheet, but not in the margin. The numbers can be placed on the right-hand side if the drawing extends too close to the middle of the top edge of the usable surface. The drawing sheet numbering must be clear and larger than the numbers used as reference characters to avoid confusion. The number of each sheet should be shown by two Arabic numerals placed on either side of an oblique line, with the first being the sheet number and the second being the total number of sheets of drawings, with no other marking.
(u) Numbering of views:
(1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation “FIG.” Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation “FIG.” must not appear.
(2) Numbers and letters identifying the views must be simple and clear and must not be used in association with brackets, circles, or inverted commas. The view numbers must be larger than the numbers used for reference characters.
(v) Security markings: Authorized security markings may be placed on the drawings provided they are outside the sight, preferably centered in the top margin.
(w) Corrections: Any corrections on drawings submitted to the Office must be durable and permanent.
(x) Holes. No holes should be made by applicant in the drawing sheets.
- Guidelines for Preparing Drawings
The following is a list of guidelines for preparing drawings for a patent application:
- Prepare a process flow diagram to represent the independent method claim. Every element in the independent method claim must be present in the process flow diagram.
Prepare a block diagram representation to represent the independent and dependent system claims. This block diagram should present all the components/ parts described in the system claims and must illustrate the relationship between different components/ parts.
- Provide structural diagrams in sufficient views for an apparatus illustrating all the components/parts of the apparatus and their connections.
- Each independent claim must have a supporting figure. The figures should include all the elements/embodiments of the claim.
- The drawings should show sufficient details of your invention to ensure full and clear understanding of the invention by a person of ordinary skill in the art to which the invention pertains.
- The drawings should show every part and modification that you intend to include in your claims.
- The EXACT terms used in the claims must be used in the specification and correspond to the numerals shown in the drawings.
- Represent every significant part/component/block in the drawings with a unique reference numeral. Use the same reference numeral to indicate the same part even if it is shown in different figures.
- You may identify every component/part with a reference numeral based on the figure number that it belongs to. For example, reference numerals for components/parts in FIG. 1 may begin with numerals such as 101, 102, etc. Similarly, reference numerals for components/parts in FIG. 2 may begin with 201, 202, etc. Use higher value reference numerals to avoid confusing the reference numerals with the figure numbers.
- Each subpart must also be identified using reference numerals. For example, if component 101 has two sub-parts, each sub-part may be referenced as 101a and 101b.
- The blocks within a flow chart/ block diagram should be of the same length. The breadth of the blocks may vary depending on the text entered in them.
- Insert a descriptive label on or near each component/part whose function is not apparent.
- All numbers, letters and reference lines appearing on the drawings should be simple and clear.
- The figure details, reference numerals, descriptive labels should be large enough to be easily read. You may use bold type to represent the figure labels and reference numerals.
- The font size of text in the figure or flow chart should be uniform throughout the figures. The font should be Times Roman of font size 10 point to 12 point.
- Every drawing should be distinctly labeled as FIG. 1, FIG. 2A, FIG. 2B, etc.
- Prepare a separate drawing for each element in the claim/description that further branches to different modules/processes or for which detailed representation is required.
- Do not show dimensions, for example, length=10cms, in the drawings.
- Screenshots should be represented as black and white wire frames with clear and readable text.
- Convert all color drawings to gray scale.
- Cross-sections must be depicted with dashed lines.
- Business Methods and Software Patents
- Business Method Patents.
A recent court decision, in re Bilski held that a business method patent is surely patent eligible if:
1) The method is tied to a particular machine or apparatus, or
2) It transforms a particular article into a different state or thing.
Business methods and software will be patentable if they meet the above stated “machine-or-transformation” test. Note that merely reciting the display or storage of data in a computer is not sufficient to meet the machine test; an element in the claim must recite the processing of data and such processing must be supported in the specification. Note that if the business method can be performed in the human mind, it is not patentable because it is obviously not tied to any machine and does not transform any article into a different state or thing.
- The following are guidelines for drafting business method patents:
- Draft computer implemented method or system claims for your business method.
- Prepare a logic flow of the business method steps and in the specification state that the logic flow will be used to create a computer executable program to implement the business method. For example, refer to the logic flow diagrams prepared in patent #20090132394 discussed below.
- Tie-in or link the logic flow diagram to a computer executable program on computer hardware and describe the computer hardware.
- Show how the original business data is transformed, for example, show how the business method, or transaction, or data (for example, sales data) is changed into an output (for example, using an algorithm) that is displayed to an end user on a display screen where the end user can engage in interactive communication, or interact over a computer network with the sender of the information.
- Software Patents
Since software inventions are also required to meet the above stated “machine-or-transformation” test, the guidelines mentioned for business method patents above may be followed when drafting the specification for a software process. You should prepare block diagrams for the computer software and detailed flow charts of the software processes involved in the invention. Furthermore, you may include a source code detailing the invention and include a flowchart that explains the flow of instructions defined in the source code. You should prepare a flowchart describing the process flow so that a programmer will be able to program and recreate the invention. In the specification, you should explain in detail how the source code and any other instructions are implemented, how the computer is configured to execute the instructions, how the invention controls the computer, and the hardware involved in the invention. Examples of the programming languages, the microprocessors, the operating systems used, etc. may be provided.