To obtain a patent in the United States, a patent application must be filed with the United States Patent and Trademark Office. It is possible to start the patent application process overseas, filing what is called an international patent application under the Patent Cooperation Treaty, but even if you begin by filing an international patent application eventually you will need to enter into the United States process. To obtain a U.S. patent an examination of your application must take place in the United States and the application must satisfy all of the patentability requirements established by U.S. law.
The application that you will file, regardless of whether it is filed as a provisional patent application, a nonprovisional patent application or an international patent application, must fully and clearly describe your invention in the manner required by 35 U.S.C. 112(a). The requirement for an adequate disclosure of the invention in the specification ensures that the public receives something in return for the exclusionary rights that will be granted to the inventor in a patent.
This so-called adequate description requirement pertains to the level of description that must be included in the “specification,” which is most typically defined as that part of the patent application that is not a drawing figure and is not a claim. This is the most common definition for the term “specification” because if and when you need to amend an application there are three separate sections for an amendment, one for amendments to the specification, another for amendments to the claims, and a third for amendments to the drawings. When you get to the point of the process where you will need to amend the application (which goes beyond the scope of this article) you will amend anything that is not a claim and not a drawing under amendments to the specification.
What follows are several teaching points relating to specification does and don’ts. For more information about how to draft the text of a patent application please see:
- Tips & Tricks for Describing Your Invention in a Patent Application
- Describing an Invention in a Patent Application
- Thinking Outside the Box Leads to the Best Patent Applications
- Patent Drafting: Identifying the Patentable Feature
- The Key to Drafting an Excellent Patent — Alternatives
Describe how to make and use the invention
The specification is where the rubber meets the road, so to speak. This is the part of the application where the inventor must the manner and process of making and using the invention. The goal, however, is not to describe the invention so that anyone could make and use the invention, in an increasingly complicated and specialized world that would be both practically and realistically impossible for many, if not most inventions. Instead, the specification must be in such full, clear, concise, and exact terms as to enable a person skilled in the relevant technology field to which the invention pertains to make and use the invention.
Do not include superfluous information
The written description must not include information that is unrelated to applicant’s invention. If such information is included in the written description, the examiner will ordinarily object to the specification and require applicant to take appropriate action to remove the information that does not specifically relate to describing the invention.
Similarly, the specification does not require a date. Resist the temptation to turn the specification into a diary about the invention. There are primarily three sections that make up the specification: (1) a discussion of the prior art; (2) a summary of your invention; and (3) a detailed description of the drawings included. The discussion of the prior art should ordinarily be brief. The summary of the invention is not generally a direct, somewhat brief overview of the invention. The detailed description discusses what is shown in the drawings and is used also as a vehicle to describe the invention in greater detail. None of these sections are or should be treated as a history of how you came up with your invention.
Before embarking on writing any of the three above mentioned sections it is imperative that you also read Beware Background Pitfalls When Drafting a Patent Application and Working with Patent Drawings to Create a Complete Disclosure.
What you file must be reproducible
When filing a patent application care must also be taken to make every effort to ensure that what is filed is clear and reproducible. If the papers are not of the required quality, substitute papers of suitable quality will be required before the application can move forward. Therefore, filings must be legibly written either by a typewriter or mechanical printer in permanent dark ink or its equivalent. Since application papers are now maintained electronically, the type of paper used is unlikely to be an issue so long as the Office is able to scan and reproduce the papers that were filed. Of course, if you file electronically none of this will be an issue given that no tangible papers will be produced for filing. Having said that, the recent power outage that crippled the electronic filing system at the USPTO reminds everyone in the industry of the importance of always having a suitable backup filing option that relies on paper, mail and/or facsimile filings, particularly when a filing date is absolutely essential.
No hyperlinks in the text
Today, in both formal and informal communications it is commonplace to include hyperlinks. That is not appropriate in a patent application. In fact, patent examiners are instructed by the USPTO to review patent applications to make certain that hyperlinks and other forms of browser-executable code, especially commercial site URLs, are not included in a patent application. See 37 CFR 1.57(e). If hyperlinks and/or other forms of browser-executable code are embedded in the text of the patent application, examiners will object to the specification and require the hyperlink or browser code to be removed. This is true even if the inclusion of the hyperlink was for the purpose of attempting to incorporate by reference what appears at that URL into the patent application. The attempt to incorporate subject matter into the patent application by reference to a hyperlink and/or other forms of browser-executable code is considered to be an improper incorporation by reference.
Order of a patent application
The Patent Office does not require a particular order for the specification or for a patent application, but there is a preferred order to be sure. The order preferred for a patent application by the Patent Office is:
- Title of the invention, which may be accompanied by an introductory portion stating the name, citizenship, and residence of the applicant (unless included in the application data sheet).
- Cross-reference to related applications.
- Statement regarding federally sponsored research or development.
- The names of the parties to a joint research agreement.
- Reference to a “Sequence Listing,” a table, or a computer program listing appendix submitted on a compact disc and an incorporation-by-reference of the material on the compact disc. The total number of compact discs including duplicates and the files on each compact disc shall be specified.
- Statement regarding prior disclosures by the inventor or a joint inventor.
- Background of the invention.
- Summary of the invention.
- Brief description of the drawings.
- Detailed description of the invention (or drawings).
- A claim or claims.
- Abstract of the disclosure.
- “Sequence Listing,” if on paper.
Additional Information for Inventors
For more tutorial information please see Invention to Patent 101: Everything You Need to Know. For more information specifically on patent application drafting please see:
- Can You Refile a Provisional Patent Application?
- Ten Common Patent Claim Drafting Mistakes to Avoid
- It’s All in the Hardware: Overcoming 101 Rejections in Computer Networking Technology Classes
- Two Key Steps to Overcome Rejections Received on PCT Drawings
- Drafting Lessons from a 101 Loss in the Eastern District of Texas
- From Agent to Examiner and Back Again: Practical Lessons Learned from Inside the USPTO
- Understand Your Utility Patent Application Drawings
- Getting a Patent: The Devastating Consequences of Not Naming All Inventors
- Getting A Patent: Who Should be Named as An Inventor?
- Make Your Disclosures Meaningful: A Plea for Clarity in Patent Drafting
- Avoid the Patent Pit of Despair: Drafting Claims Away from TC 3600
- A Tale of Two Electric Vehicle Charging Stations: Drafting Lessons for the New Eligibility Reality
- Background Pitfalls When Drafting a Patent Application
- Eight Tips to Get Your Patent Approved at the EPO
- What to Know About Drafting Patent Claims
- Beyond the Slice and Dice: Turning Your Idea into an Invention
- Examining the Unforeseen Effects of the USPTO’s New Section 112 Guidelines
- Anatomy of a Valuable Patent: Building on the Structural Uniqueness of an Invention
- Software Patent Drafting Lessons from the Key Lighthouse Cases
- Patent Drafting Basics: Instruction Manual Detail is What You Seek
- How to Write a Patent Application
- Admissions as Prior Art in a Patent: What they are and why you need to avoid them
- Patent Drafting: The most valuable patent focuses on structural uniqueness of an invention
- Patent Drafting: Proving You’re in Possession of the Invention
- Patent Drafting: Understanding the Enablement Requirement
- Patent Drafting 101: Say What You Mean in a Patent Application
- Patent Drafting 101: Going a Mile Wide and Deep with Variations in a Patent Application
- Learning from common patent application mistakes by inventors
- Defining Computer Related Inventions in a post-Alice World
- Patent Application Drafting: Using the Specification for more than the ordinary plain meaning
- Patent Strategy: Advanced Patent Claim Drafting for Inventors
- Patent Drafting 101: The Basics of Describing Your Invention in a Patent Application
- Patent Drafting for Beginners: The anatomy of a patent claim
- Patent Drafting for Beginners: A prelude to patent claim drafting
- The Inventors’ Dilemma: Drafting your own patent application when you lack funds
- Patent Drafting: Describing What is Unique Without Puffing
- 5 things inventors and startups need to know about patents
- Drafting Patent Applications: Writing Method Claims
- An Introduction to Patent Claims
- Patent Drafting: Define terms when drafting patent applications, be your own lexicographer
- Patent Language Difficulties: Open Mouth, Insert Foot
- Patent Drafting: The Use of Relative Terminology Can Be Dangerous
- Patent Drafting: Distinctly identifying the invention in exact terms
- Patent Drafting: Understanding the Specification of the Invention
- Tricks & Tips to Describe an Invention in a Patent Application
- Invention to Patent 101 – Everything You Need to Know to Get Started
- Patent Drafting 101: Beware Background Pitfalls When Drafting a Patent Application
- Describing an Invention in a Patent Application
- The Key to Drafting an Excellent Patent – Alternatives
- The Cost of Obtaining a Patent in the US
Join the Discussion
4 comments so far.
Night WriterJanuary 4, 2016 08:29 am
Just as another simple example, explain to an inventor that “module” has been held to convey no structure. Etc. I could list 10 cases that are just as ridiculous.
Do a search of elance and you will see the word module used in the description of the specification of what is wanted 1000’s and 1000’s of times. So, how in the world does it make sense that a word that is supposedly a nonce word is used repeatedly to specify computer software?
So, before you could work with an inventor and probably not have to talk to them about these issues. Now, when I talk to an inventor I inform them of the risks of invalidation from Alice, Williamson, etc. The more time I put in the more I can put things in that will make it harder for the Fed. Cir. to invalidate the claims, but that work’s only benefit is to head off the judicial activists.
Night WriterJanuary 4, 2016 08:19 am
Yes I am exaggerating. My point was more for practitioners than newbie inventors. The principles you laid out are good ones and the ones that should apply. The newbie inventor, though, should realize that case law at the Fed. Cir. has been progressively moving more and more towards not taking into consideration what is known in the art. It means that a patent attorney with experience often adds many things that may not make a lot of sense to a newbie.
The reality is that patent drafting has become perilous because the Fed. Cir. keeps tightening the requirements. Williamson is a good example. There is no doubt in my mind that any newbie needs to understand this. I have to discuss 101 and 112 with clients because of the uncertain case law. This often adds time and cost to the patent application process.
Frankly, the patent applications I write now because of cases like Williamson and Alice are very different than they were three years ago. And, the claims are very different as well. In fact, for one large client the claims are a constant moving target being adapted almost monthly for all the weird cases coming out of the Federal Circuit.
I think the big picture is that what you wrote was the law and should be the law, but unfortunately patent law is now dominated by judicial activists that are almost monthly coming out with painful new case law. The patent applications we write have to try to cope with this, and one of the ways of coping with this is putting in extra known material (and with Alice contextualizing the invention to try to head off abstract.)
As a final note, I am not entirely certain that incorporating by reference the entire undergraduate and graduate curriculum in the art would be a bad idea. I know it sounds ridiculous, but some of the recent cases could not have been decided the way they were had the Fed. Cir. included what was known in the art at the time of the patent application.
Anyway, Gene, great post. I deal with this nonsense everyday and have to deal with inventors all the time explaining why I added a load of nonsense to their application to head off the judicial activists.
Gene QuinnJanuary 2, 2016 08:35 pm
What you suggest is not a productive way to draft patent applications. To suggest that you need to incorporate by reference, or include every text ever written is absurd. You are indeed exaggerating and on a post clearly intended for newbie inventors, which makes your comment not at all helpful or appropriate.
Night WriterJanuary 2, 2016 04:27 pm
>>2. Do not include superfluous information
The problem is that the fed. Cir. keeps making it so they forget to add in what is known in the art. This means to be safe you should include all the course materials through a ph.d. for every patent application. (I am not joking or exaggerating.)