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
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
Summary of the Invention
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.
Description of the Several Views of the Drawing
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.
Description of the Invention
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.
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 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
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
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
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.
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.
of the Disclosure
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.
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.
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
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
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.
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.
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
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
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.
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.
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.
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.
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
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.
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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