Intellectual Property Law for Engineers, Scientists, and Entrepreneurs. Howard B. Rockman
9.6.7 Claims Distinctly and Precisely Pointing Out the Definition of the Invention
As a preface to Chapter 10, which discusses patent claims in detail, it suffices to say that the claims of a patent application should be written broadly enough to cover any competing device or process that may be marketed in the future, and at the same time narrowly enough so they do not cover, or “read on,” the prior art. The construction of the claims usually turns on the combined efforts of the inventor and the patent attorney, working in conjunction to ensure that the fine line of invention over the prior art is adequately and precisely defined.
9.6.8 The Abstract
The USPTO rules require that the patent application include an “Abstract of the Invention” of not more than 150 words, briefly describing the novel features of the invention. The Abstract is reprinted on the first page of the issued patent, which is normally called the Information Page. The purpose of the Abstract is to provide the reader with the “heart” of your invention in a few concise sentences. Usually, the patent attorney will divide the broadest claim of the patent application into a series of short sentences, which eliminate the “legalese” of the broad claim. By reading the Abstract, one reviewing the issued patent should be able to decide if they desire to read further.
It is important that the Abstract be worded with the same degree of care as the rest of the patent application. In at least one reported decision, the Court of Appeals of the Federal Circuit (CAFC) has referred to the Abstract in deciding to limit the scope of claim coverage of a patent.
9.7 YOUR REVIEW OF THE PATENT APPLICATION
Once the patent application is prepared by the patent attorney, the application is forwarded to the inventor for the inventor’s review and comment. Once the application is correct in all details, the inventor signs a Declaration or Oath, wherein the inventor declares that he or she believes himself or herself to be the first original and sole or joint inventors of the subject matter of the application.
Upon reviewing your completed patent application, you must ensure that the invention has been adequately and broadly described, and that the claims adequately cover the invention to the extent permitted by the content of the prior art. If, upon your review, you determine that a competitor can “design around” your broad claims, advise your patent attorney, who will suggest adding even broader claims to the application to cover your “design around” embodiment. I refer to this analysis as having the inventor assume the role of “devil’s advocate” vis‐à‐vis the claims of the patent application.
I advise my clients that we, as patent attorneys, have no pride of authorship, and therefore the inventor can make any and all additions, changes‚ or comments they deem necessary. If the patent attorney concludes that certain of these recommended changes by the inventor may add limitations to the patent application rather than broadening the scope, he or she will then discuss these proposed changes with the inventor. Ultimately, once the patent application is approved by both the inventor and the patent attorney, the formal documents supporting the application are signed, and the application is filed with the USPTO to await examination.
9.8 EXECUTION OF THE DECLARATION, POWER OF ATTORNEY, AND ASSIGNMENT UPON COMPLETION OF THE PATENT APPLICATION
Upon completion of the review of your patent application, including the claims, which are covered in detail in Chapter 10, documents commonly known as the “formal papers” are completed and furnished to the USPTO along with the application. These papers constitute a Declaration (or Oath) that the inventor or inventor(s) sign, as described in Section 9.7.
Where the patent application has been prepared by a patent attorney or agent who will be responsible for the continued prosecution of the application through examination by the USPTO, a Power of Attorney form is executed by the inventor(s), providing the attorney or agent with the power to prosecute the application further on behalf of the inventor(s) or the applicant, such as the inventor’s employer.
If the invention is to be owned by a corporation or other entity or group of entities other than the inventor or inventors, an Assignment document is also signed by the inventors, granting all rights, title and interest, or portions thereof, of the invention and patent application to the assignee. The Assignment document, the formal papers, and the patent application are then submitted to the USPTO with the appropriate government filing fee. The Assignment document is recorded by the USPTO, and returned to your attorney.
An Application Data Sheet (ADS) is also filed with the application, identifying the title of the invention, the names and mailing address and country of residence of each inventor, correspondence information of the attorney or agent representing the inventor(s), prior patent applications related to the application being filed or upon which priority is based, foreign priority information, if applicable, and other information regarding the application. In addition, under the AIA and 37 CFR §1.605, it is now possible to designate as the applicant in the ADS the employer or other entity to whom the inventor(s) have assigned the invention, or to whom the inventor(s) are obligated to assign the invention pursuant to a contract or an employment agreement (the employment agreement is considered as a contract) or to a person who otherwise shows sufficient proprietary interest in the invention. The ADS is signed by the patent attorney or agent when completed.
In addition, to comply with the provision of the USPTO rules that the inventor and the inventor’s attorney must submit all material prior art that they are aware of to the Patent Examiner, it is normal practice for the patent attorney to prepare and file with the patent application, or shortly thereafter, an IDS, which lists all prior art known by the applicant and the attorney, for consideration by the Patent Examiner. The IDS consists of:
1 A list of all relevant U.S. patents and U.S. patent application publications known by the applicant and attorney for consideration by the Patent Examiner.
2 A legible copy of each foreign patent or patent application publication or portions thereof, and a legible copy of other literature information identified in the IDS.
3 An explanation of the relevance of any patent publication or other information not in the English language, and a copy of any translation of same if in the inventor(s) or attorney’s possession.
All the above formal documents are submitted to the USPTO along with the completed patent application to initiate the examination process. The IDS can also be submitted to the Patent Examiner at any time prior to the initial examination, without monetary penalty. Also, the inventor and the inventor’s attorney have a continuing obligation to submit material prior art they become aware of to the Patent Examiner up to the date the patent issues. This is an important point to remember, and cannot be stressed enough.
Your patent attorney will advise you that certain applicants may qualify for reduced government filing fees as “small entities” or “micro entities,” and what the criteria are for qualifying for the reduced fees. If the applicant(s) so qualify, the status of the applicant is provided with the initial information furnished to the USPTO when the patent application is filed.
INVENTORS AND INVENTIONS
George Eastman
PRACTICAL PHOTOGRAPHY
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