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General Patent Info | Patent Bar Dates | Provisional Patent | Utility Patent | Design Plant | Plant Patent

non-provisional, utility patent information

Parts of a non-Provisional, Utility Patent Specification

Prosecution Related Issues
Prosecution History Estoppels
Claim Interpretation
Doctrine of Equivalence
Festo
Document Maintenance

 

Background of the Invention

This section should include a statement of the field of endeavor to which the invention pertains. This section may also include a paraphrasing of the applicable US patent Classification Definitions or the subject matter of the claimed invention. In the past, this part of this section may have been titled "Field of Invention" or "Technical Field."

This section should also contain a description of information known to you, including references to specific documents, which are related to your invention. It should contain, if applicable, references to specific problems involved in the prior art (or state of technology) which your invention is drawn toward. In the past, this section may have been titled "Description of the Related Art" or "Description of Prior Art."  

Brief Summary of the Invention

This section should present the substance or general idea of the claimed invention in summarized form. The summary may point out the advantages of the invention and how it solves previously existing problems, preferably those problems identified in the BACKGROUND OF THE INVENTION. A statement of the object of the invention may also be included.

Brief Description of the Several Views of the Drawing

Where there are drawings, you must include a listing of all figures by number (e.g., Figure 1A) and with corresponding statements explaining what each figure depicts.

Detailed Description of the Invention

In this section, the invention must be explained along with the process of making and using the invention in full, clear, concise, and exact terms. This section should distinguish the invention from other inventions and from what is old and describe completely the process, machine, manufacture, composition of matter, or improvement invented. In the case of an improvement, the description should be confined to the specific improvement and to the parts that necessarily cooperate with it or which are necessary to completely understand the invention.

It is required that the description be sufficient so that any person of ordinary skill in the pertinent art, science, or area could make and use the invention without extensive experimentation. The best mode contemplated by you of carrying out your invention must be set forth in the description. Each element in the drawings should be mentioned in the description. This section has often, in the past, been titled "Description of the Preferred Embodiment."

Claim or Claims

The claim or claims must particularly point out and distinctly claim the subject matter which you regard as the invention. The claims define the scope of the protection of the patent. Whether a patent will be granted is determined, in large measure, by the choice of wording of the claims.

A nonprovisional application for a utility patent must contain at least one claim. The claim or claims section must begin on a separate sheet. If there are several claims, they shall be numbered consecutively in Arabic numerals, with the least restrictive claim presented as claim number 1.

The claims section must begin with a statement such as "What I claim as my invention is: . . ." or "I (We) claim: . . ." followed by the recitation of the particular matter which you regard as your invention.

One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. All dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable. Any dependent claim that refers to more than one other claim ("a multiple dependent claim") shall refer to such other claims in the alternative only. Each claim should be a single sentence, and where a claim sets forth a number of elements or steps, each element or step of the claim should be separated by a line indentation.

The fee required to be submitted with a nonprovisional utility patent application is, in part, determined by the number of claims, independent claims, and dependent claims.

Abstract of the Disclosure

The purpose of the abstract is to enable the USPTO and the public to determine quickly the nature of the technical disclosures of your invention. The abstract points out what is new in the art to which your invention pertains. It should be in narrative form and generally limited to a single paragraph, and it must begin on a separate page. An abstract should not be longer than 150 words.

Information Disclosure Statement 

The USPTO requires the filing of an Information Disclosure Statement (IDS) with copies of all relevant publications (patents or otherwise) known to the inventor. The IDS is usually filed after receiving the official filing receipt from the USPTO, about three months after filing the application.  Attorneys generally charge an IDS preparation fee, and there might be additional fees from document suppliers, if you cannot supply a copy of a reference and your practitioner needs to procure it elsewhere.  It is usually recommended that you provide your practitioner with copies of all publications you know about before they file your application (ideally, before the first draft is prepared). Note that if you become aware of any references which are relevant to patentability during the pendency of the patent, for example if a foreign patent office cites patents against a foreign counterpart of the US application, a Supplemental IDS should be filed with the references. 

Prosecution Related Issues

There are many actions that occur during the prosecution of a patent application that can significantly affect the resulting patent after being granted.  Many of these issues show up during patent infringement litigation in the courts.  What follows, is a highlight of some of these pertinent issues. 

Prosecution History Estoppels

Traditionally, the doctrine of prosecution history estoppels has been defined as an equitable tool for determining the scope of patent claims. The doctrine bars the patentee from construing its claims in a way that would resurrect subject matter previously surrendered during prosecution of the patent application, and thus prevents a patentee from enforcing its claims against otherwise legally equivalent structures if those structures were excluded by claim limitations added to avoid prior art. The traditional view that depending upon the nature and purpose of an amendment, the doctrine may have a limiting effect within a spectrum ranging from great to small to zero was recently changed by the federal circuit.  Accordingly, all amendments made for the purpose of patentability are now deemed to have the effect of depriving the inventor of a claim interpretation that includes equivalent structures.

Claim Interpretation 

For a patent to be enforced, the claims must be interpreted by the courts during infringement lawsuits.  The case law governing claim interpretation is very complex; however, some important aspects are discussed below. 

Doctrine of Equivalence  

The constitutional purpose of patent law is to “promote the Progress of Science and useful Arts” by granting inventors exclusive rights to their inventions for a limited period of time.  The judicially created doctrine of equivalents has long played an important, albeit controversial role in the realm of patent law.  It strives to strike a balance between the two competing policies behind the enforcement of patent rights: (1) to protect the inventor’s right to exclude others who might steal the product of his work, and (2) to provide clear notice to the public of the invention’s boundaries. 

The doctrine of equivalents is an equitable doctrine established by the courts to protect patented inventions.  In order to find that a patent has been infringed (literal infringement), every element of the patented claim must be found in the infringing device.  Thus, a copyist can avoid literal infringement by making changes so that his or her device does not have the exact elements disclosed in the patented claim.  Any discrepancy between the patented claim and the accused device will negate a finding of literal infringement. 

However, in order to protect patent owners from copyists stealing the patented invention by making small or insubstantial changes to the invention, the Supreme Court established the principle of infringement under the doctrine of equivalents.  This doctrine allows a court to find infringement if the elements of the accused device are "insubstantially" different from those disclosed in the patent. 

Because of the inherent uncertainty in the doctrine of equivalents, courts have exercised their equitable powers to limit the doctrine. An important limit is the principle of prosecution history estoppels. This doctrine relates to the amendments, statements, arguments, and representations made by the patent applicant during the course of obtaining a patent. Any statement that limits the scope of the patent made for "a reason related to patentability" is binding and the applicant will be forbidden (estopped) from later attempting to argue that the limitation does not exist. 

The courts are continually struggling with the crucial issue of when should the doctrine of equivalents be applied, and at what point is the claim language of a patent stretched too far; Festo is only the latest case of many on this issue. 

Festo 

A court case of Festo Corp. v. Shoketsu Kinzoki Kogyo Kabushiki Co (SMC Corp.), referred to as “Festo”, has recently challenged prior doctrine of equivalence practice.  In this case Festo’s patent claimed a device with a pair of sealing rings and the defendant’s device only employed one sealing ring. In the court’s view, such differences were insubstantial, and thus the court found the defendant liable for patent infringement under the doctrine of equivalents. 

Although both infringement under the doctrine of equivalents and prosecution history estoppels appear to complement one another, there are interesting questions regarding the interface between the two doctrines. For example, if an element has been limited by an amendment, is prosecution history estoppel a complete bar on all possible equivalents to this element, or is there a range of equivalents still available in an infringement analysis?  Moreover, is an equivalent structure discovered after the submission of the amendment also barred by prosecution history estoppel, or does the estoppel apply only to those equivalents specifically disclaimed in the amendment?  

Generally, practitioners should try to obtain allowance of claims that not only will satisfy a patent examiner, but also will be found both valid and infringed (and enforceable) in litigation.  The practitioner therefore should consider how courts likely will construe claims and what impact actions taken during patent prosecution likely will have on that construction.  In particular, Festo has placed a premium on obtaining valid and enforceable claims with a minimum of prosecution history.  In other words, practitioners should now also strive to draft original claims that are in condition for allowance without need for amendment.  This patent practice is in stark contrast to prior approaches that advised clients not to search too hard for prior-art, and started with weak initial claims that were expected to be amended to good form during prosecution. 

Document Maintenance 

The best way to avoid these potential litigation problems is to keep a clean and simple file wrapper in the same or similar format as that used by the Patent Office and your practitioner.  We generally use a tri-fold file, and two-hole punch each document at the top, and place them in reverse chronological order.  In this manner, all the latest documents are on top, and it is easy to add new documents, and refer to the "latest" developments in your file quickly and easily. 

You can construct a similar file using a legal size manilla folder available from most office supply stores, with a two prong fasteners located at the top of each side.  Or, you could ask your practitioner if he has an extra file wrapper he could give you.  If you do not already have one, procure a two-hole paper punch. 

On one side of the folder, put all the papers as-filed with the Patent Office, in reverse chronological order.  The first papers (on the bottom) should be the Patent application as-filed (no drafts, or other versions allowed!) followed by the filing receipt papers and other documents in the order they are filed (or received) by the Patent Office. 

Another reason for having this "as filed" section is sometimes the Patent Office loses entire files.  It doesn't happen often, but it has been known to happen.  In such instances, the Patent Office may reconstruct their files from your copies.  If you have an incomplete or inaccurate record, it may be impossible to reconstruct the file.  A clean accurate copy of the papers as-filed and received from the Patent Office makes reconstruction a snap. 

On the other side of your file folder, put copies of correspondence between you and your practitioner, again, in reverse chronological order, oldest papers on the bottom, newest on the top.  If you put your practitioner invoices in here you may find it much easier to figure out what exactly your practitioner is charging you for (and make sure you are not being charged twice for the same service!).  There is no requirement that you keep all practitioner correspondence, and it is a good idea to get rid of anything that might later be construed as interpreting the scope of the Patent in any way. 

Finally, any Prior Art references can be placed underneath the Patent section of the file.  However, make sure that all the references in your file are cited to the Patent Office in an Information Disclosure Statement.  If you believe a reference is irrelevant -toss it.  There is no requirement in the law that you cite irrelevant Prior Art.  Keeping irrelevant Prior Art gives your litigation opponent a time-consuming issue to litigate, and they will try to make the jury think you were trying to conceal something. 

If you set up your file this way, you'll find it much easier to "follow" what is going on during prosecution of your Patent Application.  When you have to discuss matters regarding the Patent with your practitioner (or the Examiner), you'll find you are both "reading from the same book" so to speak. 

But more importantly, you'll have a "clean" file that won't get you into trouble should your Patent later be litigated.  Once you enter litigation, it is too late to "clean up" your Patent file.  At that point, everything in your possession is potential evidence, and destroying evidence could not only cost you the lawsuit, but could subject you to criminal sanctions as well.  Thus, it is best to keep your Patent file organized and clean from the start.

 


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