The specification provides a written description of the invention. The specification is required to describe the invention in sufficient detail that “one of ordinary skill in the art” can make and use the invention from the description and supporting drawings. The specification may assume that one of ordinary skill in the art understands the technology so that your description needs to explain how the invention operates so that anyone reading the patent will understand it.
The drawings provide support for the specification and use reference numbers on the drawings and in the text to allow a reader to associate the written description with the drawing elements to gain the needed understanding.
The abstract is a short paragraph (no more than 150 words) that provides someone reviewing the patent with a basic statement identifying the technology in the invention.
The claims provide a legal definition of the invention. They are the one thing that can be changed during patent prosecution (the process of the patent examiner reviewing your patent and your response to the examiner). Each claim recites a number of limitations that are required to create the invention. For example, a claim for a hammer may recite a handle and a head attached to one end of the handle; and the head may possess a pounding surface positioned perpendicular to the handle on a first end of the head and a nail removing claw positioned on the opposite end of the head. A patent attorney’s main task is to draft the claims using the example level of detail while providing the broadest coverage of potential infringing devices permitted by the prior art.
The examiner attempts to show that all of the recited limitations are shown in the prior art to argue that your invention as defined by the claims is not new or an unobvious improvement over the prior art. A patent attorney responds on your behalf to argue why the limitation, whether alone or in combination with the other recited limitations, is new and unobvious. A patent attorney may amend the claims to recite additional details described in the specification to assist in arguing that the claimed invention is new and unobvious. An examiner allows an application to be issued when he or she agrees that the claims, as possibly amended, are new.
The claims in an issued patent then may be used to determine if a competing product infringes the patent. In order to infringe, the competing product must include each recited limitation. If the competing product does not contain one of the limitations, the product does not infringe. As a result, you want to include only enough detail in the claims to be different from the prior art. If a limitation is not needed to have an examiner determine that the invention is new and unobvious, the addition of the limitation provides a competitor one feature that may be omitted from the competing product to avoid infringement.
In order to prepare a patent application, a patent attorney needs enough detailed technical information that allows the creation of the specification and drawings. You need to provide as much of this information as possible before drafting starts. Additionally, the information you provide should describe the problem that the invention is attempting to solve, describe what about the prior art examples of similar products needs improvement and why the improvement is beneficial, and describe the invention in enough detail to permit someone to create and use the invention. This information may be provided in many forms such as written text, sketches, photographs, audio or video demonstrations of the invention in operation, and any other form that would help to describe the invention.
Most attorneys conduct a disclosure interview with inventors to discuss the invention and any necessary information. You are asked whatever questions the attorney may have about what the invention is and how the invention works. Many attorneys also ask questions regarding parts of the invention that may be implemented more than one way. Providing these alternative embodiments and the reasoning for selection of one embodiment over others allows the application to cover as many different versions of the invention as possible. The inclusion of these alternate embodiments also may force a competitor to come up with one more alternate embodiment in an attempt to avoid infringement.
An invention disclosure form is available at the website under Resources which aids you in providing as much of the needed information as you can in a first submission. Additional information may be requested while the application is being prepared. If you have questions regarding the information needed or the information you can provide, please feel free to contact me and I can attempt to guide your creation of the initial description.
The process of preparing a patent application may appear to be daunting. However, I help clients navigate the process by acting as your partner in the patenting process. I strive to make the process of drafting and prosecuting a patent application as painless as possible. If you have an idea for an invention, you can start the process by contacting me. I look forward to hearing from you.