Intellectual Property Law for Engineers, Scientists, and Entrepreneurs. Howard B. Rockman
invention, and the government would then register that explanation. This procedure caused immense difficulty when infringers were brought to court, and the court had the burden of determining just what the inventor was claiming as his or her invention, without any direct statement in the registration certificate that defined the novel point or points of the invention. Thus, the courts had no knowledge of the prior art against which the novelty of the “invention” could be measured.
This system changed in 1836, owing to the efforts primarily of Senator John Ruggles of Maine. Congress created a Patent Office and an examination system, and inventors were required not only to describe their invention in their applications for a patent, they had to specifically set forth what it was they were urging as novel over the prior art. The requirements of the system today are basically the same as established in 1836, even as the level of technology has increased approximately one hundred fold. One of my favorite tests to measure advances in technology between 1836 and the present is to determine how fast a human being could possibly travel in 1836 using any means possible, for example, a horse, and how fast a human being can travel today using any means possible, for example, an orbiting space shuttle. The answer may stagger your imagination.
9.3 GOAL OF A PROPERLY PREPARED PATENT APPLICATION
On the basis of historical development, the patent application today must clearly and completely include a specification that sets forth a complete and proper description of the invention, and claims that specifically define the scope of patent protection sought by the inventor. The patent application also must result in an issued patent that will advise and inform the public of the strict definitions of the metes and bounds of the technology protection you have obtained from the government. Competitors must be able to easily ascertain what they can produce and what they cannot produce in view of the patent fence that has been erected through your patent. The patent application specification must also describe each important detail of the structure and at least one cycle of operation of your invention. The claims must also define your invention beyond the state of the prior art. Your patent is ultimately a technical paper advising posterity of the advance in technology embodied in your invention. Remember, the history of the patent laws stresses that the 20‐year exclusive position in your invention is granted as consideration for the full and complete disclosure of your invention to the public for use after your patent rights expire.
In my law school course, where I teach students on track to become patent attorneys, I begin my lecture on patent application preparation by indicating that the application is basically a sales document, where you are selling the concept to the Patent Examiner that the application defines an invention, without question, and that the only issue for examination is to ensure that the invention has been adequately defined over the prior art in the claims.
The patent application itself, in general terms, consists initially of a statement of the field or art to which the invention pertains. This is followed by setting forth the problem which the invention is directed toward solving and a statement of how others have attempted to solve the same problem and failed. This is followed by stating that your invention will achieve certain advantages and results that are not achieved by the technology shown in the prior art, and this is followed by a statement, in summary form, of the specific structure, elements‚ and/or function of your invention which provide these advantages, objectives‚ and results.
Following the above in a patent application is a brief description of the various drawing views, where applicable, followed by a complete description of the invention, which sets forth in concise detail a description of the complete interrelated structure of the invention, referring only to important elements of the invention, followed by a description of at least one cycle of operation. This is followed by the all‐important claims, which will be discussed separately in Chapter 10.
The above general “outline” for a patent application usually varies among some patent attorneys. For example, some patent applications are drafted without reference to advantages, results‚ or objectives. Whatever preparation technique was used to prepare your application, satisfy yourself upon your review that all aspects of your invention are clearly covered in the patent application.
9.4 PROVISIONAL PATENT APPLICATIONS
The U.S. Patent Laws were amended several years ago to allow the filing of provisional, or partially complete, patent applications to secure to the inventor a filing date prior to the time a complete patent application could be prepared, and requiring that the complete application be filed within one year from filing the provisional patent application. The purpose of the change in the law was to allow an inventor to establish a priority date as to his or her invention, without depending upon the workload, or the speed of preparation, of a patent attorney.
A provisional patent application can be filed without any claims, without any declaration of inventorship by the inventor or inventors, and without a disclosure of prior art know by the inventor. The provisional application is basically a “shorthand” way of filing your novel technical information with the USPTO, indicating that within one year you expect to file a regular, non‐provisional patent application covering the same technology. The purpose of the provisional application is to “save the date.” However, the provisional patent application cannot be too threadbare, since 35 U.S.C. §112 requires that the completeness of the invention described in a provisional application must also meet the standard of completeness of a regular, non‐provisional application.
To place a provisional patent application on file with the USPTO, the inventor and/or his or her attorney file, among other things, a cover sheet that identifies the application as a provisional application, the identity of all the inventors usually in the form of an unsigned declaration setting forth the names and addresses of the inventors, and materials, usually furnished by the inventor, consisting of a description and drawings of the invention, which need not necessarily be in the form of a normal patent application. The description and the drawings must be sufficient to allow the Patent Examiner and the public to fully understand the invention, since within one year a regular patent application will be filed, and the provisional application will become part of the prosecution history available to the public upon issuance of the patent from the regular patent application. The provisional application material must include all of the technology you include in the claims of your regular, non‐provisional patent application when the latter is filed.
I challenge the definition of a provisional patent application as being an “application,” because the rules clearly state that no provisional application will be examined for patentability, nor will it ever be issued as a U.S. patent. It is more of a “statement” that provides an early priority date if a regular, non‐provisional patent application is subsequently filed within one year. Also, the priority period provided by the provisional application is not included in the 20 year term of enforceability of the patent counting from the date of filing the regular application. Note further that provisional patent applications cannot be filed for design inventions.
The term “Patent Pending” may be used in connection with inventions that are the subject of provisional patent applications. Since 12 months after the filing of the provisional application the application and your priority date automatically lapse if a non‐provisional application is not filed, it is important to file the regular non‐provisional patent application within that 12‐month period or you will lose your priority filing date. It is possible to file a second provisional patent application describing the same invention as the first one, but the second provisional application cannot claim the priority date of the first provisional patent application.
9.5 REGULAR, NON‐PROVISIONAL PATENT APPLICATION; NO NEW MATTER
As you probably have discerned by now, a patent application is a series of documents filed with the USPTO with the objective of ensuring that the application proceeds successfully through an examination process and ultimately is issued as a patent.