Intellectual Property Law for Engineers, Scientists, and Entrepreneurs. Howard B. Rockman
your application prior to filing, and in furnishing your patent attorney with information about your invention, is that once the application is filed with the USPTO, amendments can be made to the application during the examination process only within the framework of the material in the application as originally filed. There is a very strict rule that prohibits the introduction of “new matter” into any pending patent application. New matter is defined as any subject matter that is not described, shown‚ or suggested in the four corners of the patent application as first filed. Thus, by way of example, if the inventor develops a new embodiment or an additional improvement to the invention covered by the filed patent application, that new material covering the new embodiment or additional improvement cannot be placed in the pending patent application. A new patent application, designated a “continuation‐in‐part application,” which will be described in Chapter 11, can be filed to cover the new material related to the invention. As such, the inventor will ultimately end up with two or possibly more patents. Therefore, it is important when assisting the patent attorney preparing your patent application, that all of the subject matter relating to your invention, including all new material, improvements‚ and new advantages, be disclosed to him or her for inclusion in the originally filed application, to the extent possible.
It is also important that you provide the patent attorney with full knowledge of a completely conceived invention, the best mode contemplated for practicing the invention, and sufficient information to enable one skilled in the art to practice the invention without undue experimentation upon expiration of the patent. As stated previously, it is also important to provide your patent attorney with all prior art of which you are aware. The attorney may introduce some of the prior art in the body of the patent application itself in describing prior attempts at solutions to the same problem which your invention is directed toward solving.
9.6 CONTENT OF A REGULAR NON‐PROVISIONAL PATENT APPLICATION
When working with your patent attorney, you will be asked to assist in the preparation of the application by initially furnishing all information relating to the structure, operation‚ and advantages of your invention. There are many ways of describing an invention; however, over the years and aided by court decisions as to what the content of a patent application should be, and having the USPTO codify rules as to what they expect in a patent application, a somewhat definitive content of a patent application has developed over the last 225 years or so of the U.S. Patent System. As a result, most patent attorneys today use a similar “format” in preparing their patent applications. While this format may vary from case to case, the following sets forth the most acceptable way of presenting your material to the Patent Examiner in the judgment of the author.
9.6.1 Title of the Invention
The title of the invention should broadly describe the purpose of the invention, or the structure of the invention. Thus, the title could be “Apparatus for Preheating Engine Blocks” or “Process for Detasseling Corn,” or something similar. Note that the USPTO website lists patents owned by inventors, corporations‚ and other entities by their title and patent number, which enables easier searching for relevant patents if the title is descriptive of the disclosed invention to a certain degree.
9.6.2 Cross‐Reference to Other Applications
In many instances, your patent application will be a continuation, continuation‐in‐ part‚ or division of a previously filed related patent application, discussed in Chapter 11, or claiming priority to previously filed provisional patent application. To properly establish the chain of the parent patent application(s) in your present application, it is necessary to place a statement in your current patent application referring to these earlier applications of which the present application is a family member. This sets forth the continuity of these patent applications, and allows later filed patent applications to rely upon the earlier filing date of the parent application as a priority filing date for commonly disclosed subject matter.
It is important to note that patent applications that have not issued as patents are maintained in secrecy for 18 months after filing. After 18 months from filing of the earliest application, such as a provisional, for example, the patent application, as originally filed is published on the USPTO website. If the applicant does not want the application published, they must advise the USPTO that they will not be filing foreign patent applications directed to the same invention, and the application is not published. If the applicant changes its mind about filing corresponding foreign patent applications, the USPTO is so notified, and the patent application is published on the USPTO website shortly thereafter. When a patent does issue, any abandoned or previously identified patent application mentioned in the specification of that issued patent becomes available for public scrutiny.
9.6.3 Background of the Invention
9.6.3.1 Definition of the Field of the Invention
This portion of the specification comprises a very brief statement of the area of technology of the invention in general terms. Usually, a broad statement of the related art, followed by a specific statement identifying a particular branch or subdivision of the art to which the invention relates‚ is set forth. A statement as to the utility of the invention is usually also included.
9.6.3.2 Brief Description of the Problems That Exist in the Prior Art That the Invention is Directed Toward Solving
This portion of the patent application describes the problems which your invention is directed toward solving, followed by statements describing the content of a few closely related known prior art references that represent attempts by others to solve the same or similar problems in the past. The prior art is described, in brief terms, as what is disclosed in the reference patents or literature, followed by brief statements as to specific limitations or disadvantages of the prior art in terms of your invention, that is, what the prior art does not disclose. This indicates to the reader of the patent the specific problems in the related prior art that were not solved, and which your invention is directed toward solving.
The discussion of prior art in this portion of the application is in addition to any prior art statement (Information Disclosure Statement or IDS) that is submitted to the USPTO pursuant to Rule 56 (37 C.F.R. 1.56). The IDS lists prior art that the Patent Examiner is required to consider during examination, and should not be substituted for the portion of the patent application specification setting forth the content and shortcomings of specific prior art references. The language chosen in this portion of the patent application should emphasize the advantages of your invention over the prior art, and set forth the problems that remain unsolved by the prior art and which problems your invention solves.
9.6.3.3 The Results, Objectives‚ and Advantages of the Invention Not Achieved by the Prior Art
The next portion of the patent specification sets forth the results, advantages‚ and objectives sought to be obtained by your invention. At this stage of the application, these objectives, advantages‚ and results are stated without describing the structure or elements of the invention by which these results are obtained, or the function of the invention. As discussed in Chapter 10, the claims of the patent application are directed to defining the structure, steps‚ or elements of your invention, and the function of these elements; the portion of the specification referred to now sets forth the objectives, advantages‚ and results of using the elements, steps‚ and functions set forth in the claims. Conversely, the claims do not recite results. While the claims are intended to describe what the invention is, your statement of objects, advantages‚ and results is intended to describe what the invention accomplishes. These are statements of the broad aims to be achieved by the invention that are not achieved