Defining the exclusive right granted to the applicant is a key part of the process
It is essential to file any nonprovisional patent application with drawings and advisable to file NPAs with claims.
BY GENE QUINN
In order to get exclusive rights on an invention, you must file for and obtain a patent. Many inventors initially opt to file a provisional patent application to initiate the application process, which is perfectly reasonable; this results in a “patent pending” that can even produce a licensing deal. Ultimately, if a patent is desired, a nonprovisional patent application must be filed—and it is this NPA that matures into an issued patent.
U.S. patent laws require that the patent applicant points out and distinctly claims the subject matter that the inventor regards as his or her invention. Any patent, or patent application, contains a variety of different sections that contain different information.
Generally speaking, a patent is divided into a specification, drawings and patent claims. Only the patent claims define the exclusive right granted to the patent applicant; the rest of the patent is there to facilitate understanding of the claimed invention. Therefore, patent claims are in many respects the most important part of the patent application because it is the claims that define the invention for which the United States Patent and Trademark Office has granted protection.
When an NPA is filed, a patent examiner reviews it to determine whether a patent can be allowed. The examiner does not review the entire patent application and does not evaluate the invention described in the application. Instead, the examiner spends his or her time evaluating the patent claims submitted in order to determine whether the claimed invention is patent eligible, useful, novel and non-obvious.
Usually for most inventions outside of the computer software and life sciences arena, patent eligibility is not an issue. Usefulness is also not generally problematic. Thus, patent examiners tend to focus their time on whether the claimed invention is novel and non-obvious.
Know your sections
35 USC 112 (Title 35 of U.S. patent code, Section 112) is the statutory requirement for applicants to particularly point out and distinctly claim the subject matter regarded as the invention.
Like most statutes, Title 35 is not very specific about details regarding implementation of its requirements. 35 USC 112 only states that a claim is necessary, but the statute does not provide any information on the structure or format of the claim or claims submitted by the applicant.
So it is necessary to turn to Title 37 of the Code of Federal Regulations, via the USPTO, to expand upon what is actually and formalistically required. The basic section that deals with claim requirements is 37 CFR 1.75.
It is necessary to include a complete description of the invention in the initial filing with the patent office. Rearranging of an application is always allowed, but the addition of new material is never allowed. In determining the scope of what is covered by the initial filing, the applicant may rely on the description contained in the specification, any drawings present at the time of filing, and the originally filed claims.
Today, as the result of the Patent Law Treaty Implementation Act, patent claims and drawings are no longer required in order to obtain a filing date on a nonprovisional patent application.
Although patent claims can always be added to an application if the original disclosure as filed will support the claims, it is exceptionally dangerous to file a patent application without drawings. Drawings are almost always required, and adding drawings later will be difficult if not completely impossible because drawings invariably convey more than the textual description of the drawings.
It is essential to file any nonprovisional patent application with drawings, and advisable to file NPAs with claims.
Those claims filed with an NPA are original claims. They can support themselves, meaning those claims that arrive in a patent application at the time the application is filed are considered a part of the larger, overall disclosure.
Having claims present at the time of filing helps ensure that at least what you are claiming has sufficiently been disclosed in the patent application at the time of filing.
Originally filed claims need not be exhaustive. Throughout prosecution, patent claims can be amended and even added, provided the initial disclosure is broad enough to cover the added or amended matter.
Therefore, when drafting a patent application, it is good practice to spend time drafting quality claims. Do not simply rely upon your ability to add claims later, because invariably you will want to add claims—or elements thereof—that are not described in the specification. Include enough claims with the initial filing to cover the invention and important variations.
Stringent form rules
The claim or claims filed in an NPA must begin on a separate sheet and should appear after the detailed description of the invention. Although there is no set statutory form for claims, the practice in the patent office is to insist that each claim be the object of a sentence starting with “I claim,” “The invention claimed is,” or the substantial equivalent thereof. This is accomplished by stating at the top of a clean sheet of paper after the detailed description: “I claim:” or “The invention claimed is….:”
Notice the colon, which is important because each claim must contain this preliminary phrase. Having the statement present with a colon followed by a series of numbered claims results in each claim starting with the required “I claim” (or equivalent) statement.
Each claim must be a single sentence, so each claim must begin with a capital letter and end with a period. This is true regardless of how tortured the sentence structure is and how incomprehensible the sentence may be to those not trained in patent claim drafting.
When a claim sets forth many elements or steps, each element or step of the claim can be separated by a line indentation. Because of the “one-sentence rule,” patent claims also tend to make heavy use of commas and semicolons.
Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. The reference characters, however, should be enclosed within parentheses to avoid confusion with other numbers or characters that may appear in the claims.
Claims should preferably be arranged in order of scope so that the first claim presented is the broadest (i.e., least restrictive). All dependent claims should be grouped together, with the claim or claims to which they refer. Similarly, product and process claims should be separately grouped.