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PLIREF-PATAPP Author FOR EDUCATIONAL USE ONLY How to Write Pat. Application Author (Cite as: PLIREF-PATAPP AUTHOR)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19, October 2006 About the Author *v About the Author JEFFREY G. SHELDON is the founding partner of Sheldon & Mak, a leading West Coast intellectual property law firm with offices in Pasadena, Riverside, and Ventura, California. Mr. Sheldon is a summa cum laude graduate of Loyola Law School. He has a Bachelor of Science degree in Chemical Engineering from the Carnegie Institute of Technology, and a Master of Science degree in Biomedical Engineering from the University of Strathclyde, Glasgow, Scotland. His studies in Scotland resulted from receiving the Marshall Scholarship from the United Kingdom government. Mr. Sheldon has been litigating patents and prosecuting patent applications since 1975. He has been adjunct professor in intellectual property law and patent law at Southwestern University Law School and advanced patent law at Loyola University, both in Los Angeles. He is a frequent lecturer for the Practising Law Institute and other organizations. He is a member of the American Bar Association and the American Intellectual Property Law Association and was chairman of the Los Angeles Intellectual Property Law Association. Mr. Sheldon is a frequent author and was a columnist for the Los Angeles Daily Journal on intellectual property law. He has been the author of the Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit (PLI). He is a past chairman of the Intellectual Property Law Section of the State Bar of California and was identified by California Lawyer magazine as one of the top patent lawyers in the state of California. Mr. Sheldon has been responsible for the training of many patent practitioners and has been requested by many in-house patent counsel to prepare and prosecute their more challenging patent applications. PLIREF-PATAPP AUTHOR END OF DOCUMENT

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PLIREF-PATAPP § 1.1 How to Write Pat. Application s 1.1 (Cite as: PLIREF-PATAPP s 1.1)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 1: Introduction and When to File *1-1 § 1.1 Need for This Book There are few tasks more difficult than that of preparing a patent application for an important invention. The U.S. Supreme Court, more than a century ago, wrote that a U.S. patent application is among the most difficult to draft of all legal documents, saying: *1-2 The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy; and, in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the patentee, and err either in claiming that which the patentee had not in fact invented, or in omitting some element which was a valuable or essential part of his actual invention. [FN1] To prepare a perfect patent application the practitioner must be all-knowing in the relevant technology, in patent law, and be able to predict future developments. A perfect patent application needs to realize many objectives, including: 1. Describing the invention so that those of ordinary skill in the art to which the invention pertains can understand it. 2. Teaching how to practice the invention. 3. Explaining the invention in such terms that a judge and a jury will be impressed by the value of the invention. 4. Claiming the invention sufficiently broadly so that the most talented experts in the field cannot design around the claims for the next twenty years, even when millions of dollars in sales and royalties are at stake. 5. Claiming the invention sufficiently narrowly so that all prior art is not encompassed by the claims. This includes the prior art already known to the patent *1-3 practitioner, and unknown prior art. The unknown prior art can include existing documents not found by a novelty search and "incubating" prior art such as pending United States patent applications and inventions by others under 35 U.S.C. § 102(g). 6. Claiming the invention so that those elements that render the invention "nonobvious" are set forth in the claims. 7. Claiming the invention so that a patent will be issued by the Patent Office, and its validity will be sustained by the courts, even though the Patent Office will give the claim language its "broadest reasonable interpretation" and the courts will not. [FN2] 8. Including only truthful and accurate statements in the application, so that none of the statements could possibly mislead the examiner, and the inventors will not be embarrassed by cross-examination during litigation. 9. Describing all features of the invention that may be needed to obtain allowance of the claims, even when the inventor does not appreciate the importance of those features.

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10. Describing the best mode contemplated by the inventor of carrying out the invention. 11. Preparing an application suitable as a vehicle for foreign filing. 12. Last, but not least, having the application issue as a valid patent. It is no wonder that skilled patent attorneys and patent agents are so much in demand. [FN2.1] It is no wonder that the *1-4 ability to write a good application is considered by many practitioners to be an "art." How is this art taught? At present, by a combination of the "mentor" system and osmosis. It is necessary to learn the hard way, by writing applications. Typically, a new attorney or agent is handed a stack of prior art, an invention disclosure, and starts writing. Many law schools provide a course in patent law. The purpose of most of these courses is not to teach how to write a patent application, but rather to understand the substantive law of patents. It is, of course, necessary to know patent law to write a good patent application. The requirements of 35 U.S.C. §§ 101, 102, 103, and 112 need to be fully appreciated in order to write a good specification. However, knowledge of the substantive law of patents is not the same as knowing how to write a competent patent application. In fact, there are many excellent patent lawyers who litigate patent issues with great skill. Many of those lawyers, if pressed into service to write patent applications, would be lost. It typically takes at least six months, and usually about two years, before a practitioner can write a competent application. One purpose of this book is to substantially reduce that amount of time. It is hoped that a new practitioner, through use of this book, and the assistance of a skilled practitioner, will be able to prepare a competent patent application on the second or third try. However, this book is not limited to use by the new practitioner. If the experience of all of the practitioners who contributed to this book is considered, this book reflects the wisdom of over 100 person-years of drafting patent applications. The helpful suggestions and tips of the seasoned practitioners who contributed to this book will be useful for anyone practicing in the field. [FN1]. Topliff v. Topliff, 145 U.S. 156, 171, 12 S. Ct. 825, 831 (1892); see also Kayton & Gardner, Crafting and Drafting Winning Patents: An Overview, J. PAT. & TRADEMARK OFF. SOC'Y, June, 2003, at 473-81 (1892 was "child's play" compared to the present). [FN2]. In re Morris, 127 F.3d 1048, 44 U.S.P.Q.2d 1023 (Fed. Cir. 1997). [FN2.1]. According to the Patent Office, the generic term for patent attorneys and patent agents is "patent practitioner." 37 C.F.R. § 1.32(a). PLIREF-PATAPP s 1.1 END OF DOCUMENT

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 1: Introduction and When to File *1-5 § 1.2 How to Use This Book This book should not be used alone to learn how to write a patent application. No one can expect to read this book and be able to sit down and write a satisfactory patent application. The guidance, assistance, and tutelage of a skilled practitioner will be needed. Writing a patent application is similar to learning how to play the piano. The aspiring pianist can read book after book on how to play the piano, but reading alone will not make that pianist competent. The aspiring pianist needs to actually play the piano and benefit from the comments, suggestions, and teachings of a skilled mentor. Even the most experienced and skilled practitioners bounce ideas off other patent attorneys and agents, particularly when it comes to writing the claims of a patent application. After this book is reviewed, the aspiring practitioner can sit down and try to write a patent application. As discussed below, start with the claims. When problems are incurred, refer to the claims chapter in the book, and if problems occur with other portions of the application, refer to the appropriate portion of the book. Inevitably, some people will never be able to write a high-quality patent application, no matter how hard they try. To a large extent, the ability to write good claims and clearly and succinctly describe the invention is an art. Just as some people, including the author of this book, will never be competent at painting a picture, some people, no matter how hard they try, will not be competent at writing a patent application. A warning must be included in this book for the "do-it-yourselfers." Inevitably, some inventor will get a copy of this book and attempt to write his or her own patent application. A word of warning to those people: do not file that application until it has at least been reviewed by a skilled practitioner. *1-6 It is extremely unlikely that a do-it-yourselfer can write a reasonably good patent application on his or her own, just based on the teachings of this book. It has been the experience of this author that even attorneys with advanced degrees in engineering who have graduated at the top of their class in law school require at least six months of intensive training to be able to write a competent patent application. This author is no exception to that rule. Therefore, Mr. or Ms. Do-it-yourselfer, if your invention is worth filing a patent application, it is worth hiring a skilled practitioner to make certain that the application adequately claims the invention and meets the statutory requirements for a patent application. A poorly written and inadequate patent application will provide a false sense of security and in the long run probably cost much more money in prosecution costs than if a skilled practitioner were engaged up front. PLIREF-PATAPP s 1.2 END OF DOCUMENT

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PLIREF-PATAPP § 1.3 How to Write Pat. Application s 1.3 (Cite as: PLIREF-PATAPP s 1.3)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 1: Introduction and When to File *1-6 § 1.3 Organization of This Book This book is organized logically to follow the steps recommended for preparing a patent application. First, in chapter 2, the various parts of a patent application are described, including the formal papers, drawings, specification, information disclosure statement, and a checklist for verifying the contents of the application. Chapter 3 describes working with the most important person, namely the inventor. This chapter discusses how to obtain the information needed to prepare a patent application from the inventor. Chapter 4 discusses novelty searches, which are generally conducted before preparing a patent application. The novelty search forms an integral part of the application process, and its advantages and disadvantages are discussed. The next three chapters, chapters 5, 6, and 7, present the meat of this book, namely preparing the drawings, claims, and specification, respectively. *1-7 Typically, an information disclosure statement is filed with an application, and preparation of that document is described in chapter 8. Much of the discussion of the application preparation process is with regard to applications for utility patents for mechanical inventions, since most patent practitioners at some time need to write a mechanical application. However, applications for inventions other than mechanical ones have unique features that should be discussed separately. Thus, chapters 9, 9A, and 10 are directed to different types of applications, namely design patent applications (chapter 9), provisional patent applications (chapter 9A), and plant patent applications (chapter 10). Moreover, applications directed to different technologies have their own special features and requirements. Thus, chapters 11 through 14 are directed to special technological fields, namely electrical (chapter 11), computer software (chapter 12), chemical inventions (chapter 13), and biotechnology (chapter 14). Since many patent applications are filed overseas, much money can be saved and better foreign patents can be obtained if the original United States application is prepared with a view to eventual foreign filing. Chapter 15 provides many hints and suggestions for writing an application that will serve as a good vehicle for obtaining foreign patents. Procedures are available for correcting defects in patents. One of these procedures, a reissue application, is discussed in chapter 16. PLIREF-PATAPP s 1.3 END OF DOCUMENT

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PLIREF-PATAPP § 1.4 How to Write Pat. Application s 1.4 (Cite as: PLIREF-PATAPP s 1.4)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 1: Introduction and When to File *1-7 § 1.4 Terminology Used in This Book Certain terminology used in this book needs to be explained. First, the term "patent practitioner" is used to refer to both patent attorneys and patent agents. Occasionally, the term "patent attorney" may have been used rather than the more generic term "patent practitioner." Unless specifically indicated otherwise by the context, when the term *1-8 "patent attorney" is used, it is meant also to include patent agents. The term "patent application" is used to refer to all papers generally included in the initial filing with the Patent Office. This includes the drawings, specification, claims, information disclosure statement, application cover sheet, and formal papers. The formal papers include such papers as the declaration, power of attorney, assignment, and small entity form. There are papers that are only occasionally included when filing a patent application, such as petitions to make special under 37 C.F.R. § 1.102. These papers are not considered part of a patent application for the purpose of this book. Thus, petitions to make special are not discussed. The term "specification" technically includes all of the parts of the application that satisfy the requirements of 35 U.S.C. § 112, including the description of the invention and the claims. [FN3] The term "specification" is used both ways in this book; sometimes it includes the claims and sometimes does not, depending on the context. The Patent Office is officially the Patent and Trademark Office. These two terms are used interchangeably in this book. [FN3]. See 37 C.F.R. §§ 1.71-1.75. PLIREF-PATAPP s 1.4 END OF DOCUMENT

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PLIREF-PATAPP § 1.5.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 1.5.1 (Cite as: PLIREF-PATAPP s 1.5.1)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 1: Introduction and When to File § 1.5 How Quickly Should the Application Be Filed? *1-8 § 1.5.1 Reasons for Filing Promptly It is important to file a patent application as quickly as possible for many reasons, including the following: 1. If filing the patent application will serve as a constructive reduction to practice of the invention, diligence *1-9 in preparing the patent application could be a critical factor in determining the effective filing date of the application to win an interference proceeding pursuant to 35 U.S.C. § 102(g) and to avoid prior art. In one case, where a patent practitioner required six months to prepare the application, it was determined there was diligence under 35 U.S.C. § 102(g) if the attorney had a reasonable backlog of work that he took up in chronological order and carried out expeditiously. [FN4] However, an unexplained delay by the attorney or unreasonable deference to other business may negate diligence. [FN5] 2. In an interference proceeding in the Patent Office, it is beneficial to be the senior party, that is, the party with the earlier filing date. For example, if no evidence is provided by either party in an interference, the senior party wins. Delay in filing an application may result in an applicant's being a junior party rather than a senior party. 3. The later the filing date, the more potential there is for prior art to be available to be cited against the application. In fast-developing technologies, patents can issue and technical papers can be published with alarming speed. Even a one-day delay in filing can result in the development of new art. If the delay becomes sufficiently long, some of the prior art may become an unremovable statutory bar under 35 U.S.C. § 102(b). 4. An applicant's own publications and commercial activities can be statutory bars under *1-1035 U.S.C. § 102(b) if too much time is taken in preparing a patent application. 5. Most of the world is on a first-to-file priority system rather than the United States' first-to-invent system. If the United States application is to serve as a basis for foreign applications, then the United States filing date can be critical in determining who obtains foreign patent rights. There are situations in which the United States inventor was able to obtain a United States patent under the United States first-to-invent system, but was unable to obtain foreign patent rights because of the foreign first-to-file system. If the United States application had been filed promptly, the United States applicant would have also been able to obtain both the United States and foreign patent rights. 6. Most of the world, including such important countries as Japan and Germany, has an "absolute novelty" system. Under that system, any "prior art" is available as a reference, and there is no one-year grace period as is available in the United States. Thus, a publication by the inventor one day before the United States filing date will not affect United States patent rights because of the one-year grace period under 35 U.S.C. § 102(b). However, the same publication may prevent foreign patents from issuing. Thus, by promptly filing the United States application, foreign priority rights can be saved. Accordingly, it can be very important to file an application promptly. § 1.5.3 presents techniques for speeding up the filing process.

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[FN4]. Rines v. Morgan, 250 F.2d 365, 116 U.S.P.Q. 145 (C.C.P.A. 1957). [FN5]. Scharmann v. Kassel, 179 F.2d 991, 84 U.S.P.Q. 472 (C.C.P.A. 1950); see also Powell v. Poupitch, 167 F.2d 514, 77 U.S.P.Q. 379 (C.C.P.A. 1948). PLIREF-PATAPP s 1.5.1 END OF DOCUMENT

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PLIREF-PATAPP § 1.5.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 1.5.2 (Cite as: PLIREF-PATAPP s 1.5.2)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 1: Introduction and When to File § 1.5 How Quickly Should the Application Be Filed? *1-10 § 1.5.2 Reasons for Not Filing Promptly There are some reasons for a delay in filing. It is unusual that these reasons will overcome the aforementioned reasons for filing promptly. However, they do need to be considered *1-11 in timing the filing. Among the reasons that may make a delay in filing desirable are the following: 1. If the application is to be filed overseas, then the application most likely will be published eighteen months from the filing date, with resultant loss of trade secret protection for any trade secrets in the application. [FN6] Thus, the earlier the filing date, the earlier the loss of trade secret protection. 2. Filing a U.S. application triggers the start of the one-year priority period available for filing overseas. This will accelerate the expenses associated with foreign filing. 3. The author tells clients that any patent application is a balance of quality, cost, and speed, and the client gets to pick two out of three. Since few practitioners are willing to sacrifice quality, the client often may have to pay extra for accelerated filing. [FN6]. See 35 U.S.C. § 122(c). PLIREF-PATAPP s 1.5.2 END OF DOCUMENT

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 1: Introduction and When to File § 1.5 How Quickly Should the Application Be Filed? *1-11 § 1.5.3 Techniques for Speeding Up the Filing Process There are many techniques available for speeding up the process of filing an application. Some of these are as follows: 1. File the inventor's original disclosure document or draft scientific paper as a patent "application" by adding an abstract and a single claim. Although such an application would be nowhere near the quality of an application prepared using the procedures of this book, assuming that the disclosure by the inventor satisfies the basic requirements of 35 U.S.C. § 112, at least a filing date will be obtained. Moreover, even if the application does not satisfy the United States disclosure requirements of 35 U.S.C. § 112, it may be sufficient for many foreign countries. This basic *1-12 application can then be converted into a quality application by filing a continuation-in-part application as promptly as possible. Clearly this approach gets an early filing date. However, one disadvantage is the increased cost of filing two applications. Another disadvantage is that the one-year priority date for filing in foreign countries begins to run on the date of filing of the first application, which means that the decision of whether to file a foreign application needs to be made earlier, and costs associated with filing foreign applications are incurred earlier. 2. During the initial meeting with the inventor, draft at least the broadest claim, and preferably some of the dependent claims. As discussed below, preparation of the claims is the most critical and difficult part of an application. It is efficient and effective to prepare the claims when the inventor is readily available to provide instant feedback and while the patent practitioner's mind is freshly acquainted with the merits and novelty of the invention. 3. Forego a novelty search, or have the novelty search done in parallel with drafting the application. As discussed in chapter 4, novelty searches are often ordered before preparing a patent application. However, when time is of the essence, it may be necessary to forego the novelty search, or conduct it in parallel with preparation of the application. When the novelty search is conducted while the application is being prepared, once the search results are available, the application can be polished and the claims modified as required, based on the search results. 4. Order the drawings as soon as possible. Preparation of the drawings can be the longest lead-time item due to the schedule of draftsmen. Get the drawings on order promptly. *1-13 5. Do not wait for the drawings to prepare the application. Many practitioners wait until the drawings are available before beginning the application. An advantage of this procedure is that the reference numbers can be placed on the drawings as the specification is prepared. However, when it is important to file promptly, rough sketches of the invention can serve the same purpose for preparation of the application. Although some time is lost when the reference numbers are added to the draftsman's drawings, that lost time can be sacrificed when filing early is important. 6. Use the inventor's drawings or drawings prepared by the patent practitioner for filing. The inventor may have some drawings of the invention, or the patent practitioner may be a sufficiently skilled draftsman

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PLIREF-PATAPP § 1.5.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 1.5.3 (Cite as: PLIREF-PATAPP s 1.5.3)

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to prepare rough sketches. If those sketches are sufficient for filing, they can be used for that purpose when it is important to file early. Formal drawings can be prepared later by a skilled draftsman. 7. File the application without the formal papers, including the declaration. A week or more can be lost while the inventor reviews the application and signs the declaration and other papers. It is possible to file without the declaration and formal papers. [FN7] A disadvantage of this approach is that if the applicant is a small entity and the small entity forms have not been completed, the much higher filing fee for large entities needs to be paid. Although the Patent Office claims it is possible to get a refund by filing the necessary papers, [FN8] often the request for a refund gets lost in the Patent Office bureaucracy, and it is difficult and time-consuming to get the refund. Another disadvantage is *1-14 that the Patent Office charges a surcharge for filing the application piecemeal. [FN9] Another possible disadvantage is that the inventor or inventors may have problems with the application and not like it. If the claims are not satisfactory, it may become necessary to file a preliminary amendment under 37 C.F.R. § 1.115, which adds to the expense of filing the application. If something is incomplete or inaccurate in the specification, then it may become necessary to file a continuation-in-part application. In the latter instance, the original filing date may be lost, and thus the fees incurred for filing the first application would have been for naught. [FN7]. 37 C.F.R. § 1.53. [FN8]. 37 C.F.R. § 1.28(a). [FN9]. 37 C.F.R. § 1.1(e) (the surcharge fee is $65 for small entity applicants). PLIREF-PATAPP s 1.5.3 END OF DOCUMENT

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18, April 2006 Chapter 1: Introduction and When to File *1-14 § 1.6 Conclusion Once a decision has been made to prepare and file a patent application, it is necessary to learn how to do so. The remainder of this book discusses that exact topic. PLIREF-PATAPP s 1.6 END OF DOCUMENT

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19, October 2006 Chapter 2: Parts of a Patent Application *2-3 § 2.1 Introduction This chapter outlines the statutory requirements for the various parts of a patent application and provides the basic forms used to prepare a patent application. The sample forms satisfy the essential statutory requirements. A good source of forms for different purposes can be found in Patent Law Practice Forms by Barry Kramer and Allen D. Brufsky, published by Clark Boardman Company in 1990. PLIREF-PATAPP s 2.1 END OF DOCUMENT

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53(c).2. 37 C. No Claim to Orig.01. [FN1]. An application with *2-4 missing drawings or pages or with an insufficient disclosure is regarded as incomplete. and subtracts the delay associated with this from any delay caused by the Patent Office in calculating any term extension.F. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.1 END OF DOCUMENT © 2008 Thomson/West.2. a filing date will not be awarded if those papers are incomplete or if they fail to meet statutory requirements.1 What Is Needed to Obtain a Filing Date To obtain a filing date.PLIREF-PATAPP § 2. [FN3]. [FN1] These parts of a patent application are indispensable.2.2.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.1 (Cite as: PLIREF-PATAPP s 2.R. the application initially filed with the Patent Office must at the very minimum contain the following: 1. a complete specification with a satisfactory description and at least one claim. [FN2] Even if the indispensable papers are provided. then the filing date will be the date all the indispensable papers are provided. The Patent Office considers filing an incomplete application to be a delay caused by the applicant.E. [FN3] If an incomplete application is filed.53.P.P. § 601.1 FOR EDUCATIONAL USE ONLY How to Write Pat. US Gov. 37 C. Works.F.R. PLIREF-PATAPP s 2. [FN2].2 Parts of a Patent Application *2-3 § 2. Application s 2. any drawing that is necessary to understand the invention. October 2006 Chapter 2: Parts of a Patent Application § 2. the Patent Office issues an office action asking for the missing parts. and 2. § 1. If any of the indispensable papers is not provided with the initial filing. . § 1.2. M. A disadvantage of filing an incomplete application is that the term of any patent that issues could be shortened.

. can be found and downloaded from the PTO website at <www. an application data sheet containing bibliographic data. [FN6]. 8. a cover sheet. § 1. claim or claims.R. a typical patent application includes all the following papers: 1.2.PLIREF-PATAPP § 2. a fee payment.F. the patent application may require several supplementary formal papers. A small entity form is not required if the small entity basic filing fee is paid. 2. failure to disclose relevant prior art (known to the applicant) may be inequitable conduct. Application s 2. [FN4]. a specification. a small entity form (if applicable). See § 2.R. [FN6] PTO approved forms. 11. 6.2. a complete patent application also contains an oath or declaration by the applicant and the requisite filing fee. [FN5. an information disclosure statement. and 12. § 1. but it is recommended that the form be filed. 37 C.R. Thus. [FN5.2. an assignment (if applicable). some of which are reproduced herein as Exhibits. 10.76. [FN5] if the indispensable papers are provided in the initial filing. a power of attorney.1]. § 1. a postcard. US Gov. 37 C.3. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.2 END OF DOCUMENT © 2008 Thomson/West. No Claim to Orig. PLIREF-PATAPP s 2. [FN4] The declaration and filing fee may be submitted later (within two months of the date of notice given by the Patent Office) without affecting the filing date.C.1] 5. October 2006 Chapter 2: Parts of a Patent Application § 2. 3. 37 C. a declaration.53(d).uspto. The optional application data sheet and software for filling it out are available at the Patent Office website.2 Parts of a Patent Application *2-4 § 2.51.4. § 111.2 Papers Filed in a "Typical" Application Besides the specification.S.gov/web/forms>. Works.2 (Cite as: PLIREF-PATAPP s 2.2. including at least one claim and drawings (when necessary). 7.2 FOR EDUCATIONAL USE ONLY How to Write Pat.F. *2-5 4. drawings (if necessary). In addition to the statutory requirements.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Although an information disclosure statement is not required per se. 9. [FN5].F. See 35 U.2.

PLIREF-PATAPP s 2.3) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. These are (1) an oath or declaration by the inventor.3 Formal Papers There are four types of formal papers that may be submitted with a patent application. Application s 2. US Gov.3 END OF DOCUMENT © 2008 Thomson/West. Works. No Claim to Orig. October 2006 Chapter 2: Parts of a Patent Application *2-5 § 2. . (3) an assignment.3 How to Write Pat. The substantive requirements of these formal papers are discussed below. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. with sample forms that satisfy the statutory requirements. (2) a power of attorney. if the applicant qualifies. and (4) a small entity form.PLIREF-PATAPP § 2. if the application is assigned.3 (Cite as: PLIREF-PATAPP s 2.

and country of citizenship.S. and current status.56. as shown by Exhibit 2-1.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. § 1. and always while the application is pending.S. § 119. or foreign priority--during the pendency of the application. § 111(a) claiming domestic priority and/or PCT application © 2008 Thomson/West.S. the person making the oath or declaration must attest to the truth of all matters described in the patent application.3 Formal Papers *2-6 § 2. the declarant must acknowledge his or her duty to disclose information that is material to the prosecution of the application under the provisions of *2-737 C. in the case of new applications. First.1 (Cite as: PLIREF-PATAPP s 2. each inventor must state whether he or she is a sole or joint inventor of the invention claimed. The oath or declaration must also state that the declarant reviewed and understood the contents of the specification and claims. as long as they are made during the applicable time limits. [FN14] Further.C. date of filing. However. [FN12] As will be discussed in greater detail in following sections. Additionally.3.3. country.63 and can be categorized into three areas.1 FOR EDUCATIONAL USE ONLY How to Write Pat. [FN8] Joint inventorship may be implied by the listing of several inventors on the same form. [FN11] Further. § 1. the declarant has a duty to disclose all information material to the novelty or nonobviousness of the application under 35 U. month.C. [FN9] Second.R. The oath or declaration must identify the specification to which it is directed. [FN10] This requirement is usually satisfied by stating the title of the application in the declaration and. if the declarant claims the benefit of prior United States applications under 35 U. Each inventor must declare his or her name.3.F. It is not necessary that these claims of priority from earlier foreign or PCT or domestic applications be made at the time of the initial filing. the oath or declaration should also identify any foreign or United States documents on which the benefit of an earlier filing date is claimed. An application that has been already filed with the Patent Office is identified from the filing date and serial number assigned by the Patent Office. the declarant must identify any foreign application having a filing date before that of the application on which priority is claimed. Works. [FN13] The provisions of these statutes may be printed on the back of the declaration. No Claim to Orig. and year of its filing. §§ 102 and 103.3. The applicable time limits are: [FN16] (1) Design application claiming U.R.F. by attaching the application to the declaration. US Gov. (2) Utility application filed under 35 U. Third. the documents must identify the inventors and the specification.1 Oath or Declaration Either an oath or a declaration must be filed as part of the application.S. day.S. The declarant is also required to attest to his or her belief that the inventor or inventors named are the original inventors of the invention described. he must identify the prior application by its application number. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Application s 2. [FN15] Similarly. When the benefit of an earlier filing date in a foreign country is claimed under 35 U. October 2006 Chapter 2: Parts of a Patent Application § 2. it is recommended that the claim be made with the initial filing to avoid forgetting to do so in time. .C. [FN7] The essential requirements of the oath and declaration are defined in 37 C. § 120.C. place of residence. the declaration must identify the foreign application on which such priority is claimed by specifying the application number.PLIREF-PATAPP § 2.

S. the inventors can make the changes and then initial and date the changes. the declaration must be provided in a language the inventor can read and understand. [FN10]. § 1. [FN20] The declaration must also contain language to the effect that all statements made in the declaration are true to the declarant's knowledge.R.63(b)(2). © 2008 Thomson/West. 37 C. If the inventors need to make relatively minor changes in prepared application papers. Works. If the inventor cannot read and understand English. such as a notary public or a consular officer.R. 37 C.1 (Cite as: PLIREF-PATAPP s 2.C. No Claim to Orig. An oath must be executed before an authorized official of the United States.1) Page 2 designating the U.1] The application cannot be amended after the oath or declaration is signed by any inventor except according to the provisions of 37 C. (3) Nonprovisional application which entered the national stage from an international application after compliance with 35 U. 37 C.S. The declaration must contain additional language in its body to the effect that the applicant is aware of the criminal penalties for wilfully attesting to false statements within a declaration.R.uspto.C. [FN9].3. simply replace the "declaration" section with a section that reports the date and place of the oath and bears the seal and signature of the notary officer. § 1. [FN17.2] One exception to this rule. § 1. § 371 claiming domestic priority and/or priority from PCT application designating the U.3.PLIREF-PATAPP § 2.51(a)(2). .3] [FN7]. rather than creating a new document. § 1.F.S. § 1. the oath or declaration must be accompanied by an English translation together with a statement that the translation is accurate.F.17(iv). [FN21. The translation can be filed after receiving a notice from the PTO to file the translation. and/or foreign priority-. which is not applicable to an original application.R. there are two major differences.within *2-8 the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application.121. [FN21.F. Id.gov>.63(a). § 371(b) or (f) in the later-filed international application or sixteen months from the filing date of the prior-filed application. [FN8]. [FN17] Declarations in the most often-used foreign languages can be found at the PTO website <www.F.3.-. § 1. [FN18] The first difference relates to the manner of execution of the documents.1] While the essential requirements of an oath and a declaration are the same.R. To convert this declaration into an oath.63(b). [FN21] A sample declaration form is provided in Exhibit 2-1. oaths are rarely used today. and (ii) the change does not introduce any new matter. [FN19] *2-9 The second difference between an oath and a declaration lies in the prescribed contents of each document.R.F. For that reason. is that such changes can be made if (i) the oath or declaration is a copy of an oath or declaration from a prior application. before executing the oath or declaration.S. [FN21.63(b)(3). 37 C.1 FOR EDUCATIONAL USE ONLY How to Write Pat.within the later of four months from the date on which the national stage commenced under 35 U. [FN12]. If the text of the oath or declaration is not in English and is not in a form provided by the PTO or in accordance with PCT Rule 4. and because the additional language required in declarations is easily automated. US Gov. 37 C.F. [FN11]. Application s 2. or are believed by the declarant to be true.

52(c)(2). Application s 2. imprisonment. US Gov. [FN20]. [FN19].1 FOR EDUCATIONAL USE ONLY How to Write Pat. [FN14].2]. § 602.F. Under 37 C. M.R. [FN17. 37 C.63(d).R.F.F.3.F. § 1.R.C.E. Id. No Claim to Orig.S.R. [FN16]. [FN21. §§ 1. § 1. 37 C.69.1 (Cite as: PLIREF-PATAPP s 2. § 1. § 1.3.R. 37 C.1].F.1) Page 3 [FN13]. .R.F.68. § 1. 37 C. § 1.1].55.F. [FN15].1 END OF DOCUMENT © 2008 Thomson/West. [FN21].63(c).3. § 1001 and may also jeopardize the validity of the application.68. 37 C. 37 C.R.PLIREF-PATAPP § 2.F. PLIREF-PATAPP s 2. wilful false statements on the patent application are punishable by fine. § 1.F.52(c)(1).R.F.F. § 1.F. See 37 C.69(b).R. [FN18]. 37 C. § 1.78 [FN17].R. 1.R. 37 C. Works.3. § 1. [FN21. [FN21.68. or both under 18 U.68. § 1.3].P.52(c)(3).R. 37 C. A separate paper instructing the PTO to make the amendment is required. See 37 C.P.

The full *2-11 names. Works. and not the inventor or inventors.R. [FN26. [FN26] This allows prompt correspondence between the Patent Office and the attorney or agent.F. using for example PTO Form SB/96. .73(b). it is generally considered good form and allows the principal attorney or agent designated to appoint a junior attorney or agent to expedite prosecution. [FN24] Although the filing of a power of attorney is not absolutely required.3. addresses. a power of attorney should be filed to authorize the attorney or agent to act on behalf of the applicant. It states that the signer authorizes the named attorneys to conduct all business regarding the application within the Patent Office. However. and it grants the attorney or agent power to appoint associate attorneys or agents. US Gov. This makes it clear that the attorney or agent represents the assignee. it is necessary to file it accompanied by an application specific statement under 37 C. © 2008 Thomson/West.3. Whenever an invention is assigned and the attorney or agent represents the assignee.3 Formal Papers *2-10 § 2. [FN22] If an applicant is represented by a patent attorney or agent. No Claim to Orig. An advantage of using this form is that separate Power of Attorney form need not be prepared and filed. October 2006 Chapter 2: Parts of a Patent Application § 2. and country of citizenship of the patent owners are also listed.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. This distinction can become important if a conflict of interest arises between the assignee and the inventor or inventors. Since the inventor or inventors generally sign both documents.3. [FN23] In such cases. as Form PTO/SB/80.3. a power of attorney is not required if the practitioner specifies his or her registration number on the document. It identifies the owners of the patent application and the application itself. then the PTO Customer Number must be used. whenever a registered attorney or agent signs and files a document in an application pending before the Patent Office. a combined document is more expedient.2 Power of Attorney An applicant for a patent may either prosecute his or her own application or be represented by an attorney or agent registered to practice before the Patent and Trademark Office. Further proof of the practitioner's authority is not necessary but may be required at the discretion of the Patent Office. The form is available at the PTO website. the attorney or agent's signature constitutes a representation to the Patent Office that he or she is authorized to represent the particular party in whose behalf the practitioner ostensibly is acting. it is strongly recommended that the power of attorney be executed by the assignee rather than by the inventor or inventors.PLIREF-PATAPP § 2. Application s 2. The power-of-attorney statement can also be combined with the oath or declaration.1] The Patent Office now accepts as a Power of Attorney one executed by an assignee that provides a power to all registered practitioners associated with a customer number for all applications assigned to the assignee. [FN25] A sample power-of-attorney statement is shown in Exhibit 2-2.2 (Cite as: PLIREF-PATAPP s 2. To use the form. § 3. The attorney's name and Patent Office registration number are provided along with the full postal address and telephone number of the firm.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. If the Power of Attorney is to more than ten registered patent attorneys or registered patent agents.

37 C.3.34(b). § 403 for a description of Customer Number Practice.3.P.R. § 601.2) Page 2 [FN22].2 END OF DOCUMENT © 2008 Thomson/West. [FN23]. .34(a).P.31. No Claim to Orig. M.2 FOR EDUCATIONAL USE ONLY How to Write Pat. [FN26].P.02. US Gov. [FN25].1]. [FN26.PLIREF-PATAPP § 2.F.3.E. See M.2 (Cite as: PLIREF-PATAPP s 2. Works. Application s 2.F. § 1.3.P.R. 37 C. PLIREF-PATAPP s 2. Id. [FN24].R. § 1.F. 37 C.E. § 1.

because an assignment that is not recorded is void against a subsequent purchaser or mortgagee for value who did not have actual notice of the prior assignment. an *2-12 inventor assigns away his or her rights in a patent application at the time the application is filed. In this regard. an assignment of rights to the application and to any issuing patent is generally filed at the time the patent application is filed. Each document relating to title submitted to the Patent Office for recording must be accompanied by a cover sheet referring to those patent applications and patents against which the document is to be recorded.3 (Cite as: PLIREF-PATAPP s 2. or any interest therein. provided the inventor assigns the entire interest in the invention and application to the assignee." which means that the assignment and application were executed by the inventor on the same date. is assignable by an instrument in writing.3 Assignment Patents have the attributes of personal property [FN27] and can be bought. or an indication that the document is filed together with a patent application. (3) a description of the interest conveyed or transaction to be recorded. For example. patent applications are generally treated in the same way as patents. and the date of execution of the application. if necessary.3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.3 Formal Papers *2-11 § 2.PLIREF-PATAPP § 2. Accordingly. [FN28] Providing the assignment with the application also allows the Patent Office to secure the recordation of the assignment at the earliest possible date. Frequently. the date of execution is referred to as "on even date herewith. Application s 2. © 2008 Thomson/West. It also allows the patent to be issued in the name of the assignee.3. (4) each application number of patent number against which the document is to be recorded. [FN30] A patent application.3. Filing the assignment with the patent application notifies the Patent Office that the inventor and the owner of the patent rights are not the same entity.3. Works. an employee often assigns to his or her employer a patent application invented within the scope of his employment. [FN34] The cover sheet should contain (1) the name of the party conveying the interest. The assignment identifies the patent application assigned by the title of the invention. [FN29] This can be very important. US Gov. to allow the Patent Office to communicate with the assignee. . [FN31] A sample assignment form is shown in Exhibit 2-3. [FN32] Typically.3 FOR EDUCATIONAL USE ONLY How to Write Pat. October 2006 Chapter 2: Parts of a Patent Application § 2. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. and when representing the assignor. The assignment should also identify the name and address of the *2-13 assignee.3. or licensed to another person in exchange for valuable consideration. it is better to use the Exhibit 2-3 assignment. [FN33] Exhibit 2-3A is an assignment form available from the USPTO website. the name of the inventor. The assignment of Exhibit 2-3 places more obligations on the assignor than does the assignment of Exhibit 2-3A. In such cases. sold. (2) the name and address of the party receiving the interest. when representing the assignee. it is better to use the Exhibit 2-3A assignment. No Claim to Orig.

[FN35]. The Patent Office has a history of losing such assignment documents.F.S. (7) the date the document was executed.S. § 261. No Claim to Orig. [FN34].334. [FN32]. § 3. § 3.03. § 1.E. [FN35] A sample cover sheet is provided as Exhibit 2-3B.332. that practice is highly recommended.S.P.E.F. Works.C.3. § 302.C. some foreign countries require notarized assignments. US Gov. that the first assignment is valid if it is recorded in the Patent Office within three months from its date or prior to the date of the second assignment. Note. 37 C. and then submit the assignment documents separately. (6) the number of applications identified in the cover sheet and the total fee. 37 C. Although an assignment does not have to be notarized.3. A notarized assignment is prima facie evidence that the assignment was executed. the information contained from the cover sheet is true and correct and any copies submitted is a true copy of the original document. [FN28]. and (9) the signature of the party submitting the document. to the best of the person's knowledge and belief. In addition. § 261. M. [FN27].F. *2-14 (8) a statement by the party submitting the document that. [FN30].R.R. 37 C.S.P. .05.3 END OF DOCUMENT © 2008 Thomson/West. 35 U. 37 C.3. The original patent assignment should not be submitted to the Patent Office. Application s 2.3. § 261.C. [FN36].11. [FN33].P. 35 U. [FN31].F. 35 U.C.3) Page 2 (5) the name and address of the party to whom correspondence regarding the request to record the document should be mailed. It is best to wait until an official filing receipt is received. only a copy should be submitted. PLIREF-PATAPP s 2. It is also recommended that the assignment documents not be submitted at the time of filing the original application. § 1. [FN36] The presumption of validity that attaches to notarized assignments gives the assignee a legal advantage in subsequent actions concerning patent ownership.R. § 302.PLIREF-PATAPP § 2.P. [FN29]. 35 U.3 FOR EDUCATIONAL USE ONLY How to Write Pat. § 261. M.31. however.3 (Cite as: PLIREF-PATAPP s 2. This is because the Patent Office does not return submitted assignment documents after they are scanned into the Patent Office's electronic assignment database.R.

[FN41.1] if the small entity is in a foreign country and fails to make a significant contribution to the U.3. § 1. Three classes of applicants can claim small entity status: (a) independent inventors. No Claim to Orig. As a practice tip.3. [FN37] An independent inventor is one who has not assigned or licensed his or her legal rights on the invention to any entity that does not have small entity status.3 Formal Papers *2-14 § 2. except that the federal government may be assigned or licensed rights without loss of small entity status. usually the attorney or © 2008 Thomson/West.4 FOR EDUCATIONAL USE ONLY How to Write Pat. without default.27 and are explained in more detail in Manual of Patent Examining Procedure § 509. to a large entity. (b) small business concerns.4 Small Entity Form Patent prosecution fees are 50% lower for persons or organizations that meet a statutory test of "small entity" status. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. as long as no ownership rights are granted. [FN41.02.PLIREF-PATAPP § 2. and (c) nonprofit organizations. [FN40] However. it is not recommended that an attorney or agent execute a written assertion or rely on payment of a basic filing fee as an implicit assertion of utility. [FN39] That number is computed as the average number of part-time and full-time employees employed by the entity over the fiscal year. First.3.3. that is.3] *2-16 To benefit from the fee reduction. [FN42] Thus it is not necessary to submit a small entity form. [FN41] Small entity status is not lost if there is a grant of a security interest. all that is needed is to pay the small entity basic filing fee.2] or if there is a license to a large entity under a patent application or patent to use a product. October 2006 Chapter 2: Parts of a Patent Application § 2. only one is needed from any person entitled to assert small entity status.S. There is no requirement that the small entity be located in the United States to claim reduced fees. It applies to all Patent Office fees during the prosecution of a patent application and to any *2-15 required issue fees. Works. If a small entity form is to be submitted. or an assignee of an undivided part interest. . there must be an assertion of small entity status.F. [FN38] A small business entity is any business with fewer than 500 employees. which are listed in 37 C. It also applies to maintenance fees required of any resulting patent. [FN41. software.R. or 2. too numerous to be listed here. an assertion in writing by an attorney or agent registered with the Patent Office. economy. Application s 2.4) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Nonprofit organizations comprise several categories of organizations. The assertion can be effected by: 1. The small entity can be located in any country. There are two reasons. an inventor.4 (Cite as: PLIREF-PATAPP s 2. That fee reduction is granted as an incentive for a small entity to obtain a patent. by payment of the basic filing or basic national fee. US Gov. any claim to small entity status is lost if the small entity assigns or licenses its rights to a person or entity that does not qualify as a small entity.

§ 1.02. 902.2d 1754 (N. Sterba. cf. § 202(c)(4). 37 C. Exhibit 2-5 for a small business concern.F.R. § 1.R. Me.P. § 1. An improper claim. [FN41]. DH Tech. it is recommended that a notice defining "small entity" be provided in writing to the client to avoid any confusion..3.3d 1139 (Fed. 42 U. § 1..4 END OF DOCUMENT © 2008 Thomson/West. v.3.27(a)(2)(ii). 4 at 425 (Fall 1997). Jewish Hosp.27. comment 36. Cir. 951 F.Q. Idexx Lab. Supp. Works.E. 1287 OG 67. Id. [FN42]. Lex Computer & Mgmt.3. No.D. 37 C. It is important to check carefully any claim for small entity status. 35 U. Inc. an undesirable situation. can result in a patent's being unenforceable. *2-17 Small entity forms originally sanctioned by the Patent Office are shown in Exhibit 2-4 for an independent inventor. [FN39]. [FN40]. Small Entity Status: Who's Small.3. 937 F. [FN41. Ulead Sys.3]. 1996). [FN43] [FN37].P.2d 1720 (D.P.S. and Exhibit 2-6 for a nonprofit organization. 40 U. US Gov. 351 F. Inc. 2. No Claim to Orig.R.4 FOR EDUCATIONAL USE ONLY How to Write Pat. and preferably from all the inventors and any organization with an interest in the patent application.27(a)(2)(ii). 37 C. 1996). 2003). . [FN41. Synergystex Int'l.F. The second reason is that if the small entity status claim is incorrect and that becomes an issue in litigation. Corp. [FN38].27(a)(5).. 37 C.4) Page 2 agent does not have personal knowledge of whether or not the assertion is correct. Cal. M.J. there may be a license that the attorney does not know about.. Who Isn't.R.F.R. it is recommended that at least one written assertion of small entity status be obtained. the attorney may be subject to a disciplinary proceeding before the PTO.2]. [FN41.S. Supp. Exhibit 2-3C is an example of a definition that can be included with such a notice. Inc. the attorney can end up being a witness.27. § 1. Application s 2.F.F.Q. Id. For example.27(a)(4)(i).R.1].. 37 C. with deceptive intent. Thus for safety.C. and in a worst-case scenario.P.S. Who Should Be. v. see Richard A. As another practice hint. § 509. [FN43]. Louis v..4 (Cite as: PLIREF-PATAPP s 2. § 1. 37 C.PLIREF-PATAPP § 2. PLIREF-PATAPP s 2. It is not intuitive for most inventors that a non-exclusive license to a large entity eliminates small entity status for the inventor. and Why? 25 AIPLA Q.F. of St.

02. § 608. § 608. then the application will be rejected as incomplete. 37 C.E. These classes of inventions are listed in M.4 END OF DOCUMENT © 2008 Thomson/West. including perspective. that drawing must be included in the patent application or the application will be deemed incomplete and a filing date will not be granted.P. if their detailed illustration is not essential to understand the invention. and no filing date will be granted until a drawing is provided. 37 C. be replaced with a formal drawing (which does not add new matter) before any resulting patent will issue.F. when drawings are needed. § 1.4 (Cite as: PLIREF-PATAPP s 2.02. .R. M. and how to prepare them is presented in chapter 5. Drawings are subject to numerous and strict formal requirements found in 37 C. Only a brief introduction is provided in this section.53(c). The purpose of these strict requirements is to standardize the form of the drawings so that the public can understand the invention with a minimum of effort. § 1.F. Works. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. An informal drawing must. 37 C.84 and described in detail in M. [FN48] Conventional features may be illustrated by graphical drawing symbols or labeled representations. If a drawing is deemed necessary to understand the application. October 2006 Chapter 2: Parts of a Patent Application *2-17 § 2.P. [FN46].4 How to Write Pat. The Patent Office inspects applications that are submitted without drawings to determine if a drawing is necessary to understand the subject matter sought to be patented.P.F. [FN44] A detailed discussion of drawings.S. however. § 113.F.PLIREF-PATAPP § 2.R.02. § 608. 35 U. Application s 2. like process *2-18 patents or composition-of-matter patents. [FN45] Moreover. [FN45]. and cutaway views. US Gov. No Claim to Orig.4) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.E. side.R.C. [FN46] Certain classes of inventions.83(a). however.83(c). [FN44]. a drawing that does not meet these strict standards (an "informal drawing") may sufficiently satisfy the requirement of a "drawing" to afford the applicant a filing date. [FN48].E. PLIREF-PATAPP s 2.P. Examples of drawings are shown in the exemplary patent of Exhibit 2-7. § 1. Note the several views provided for each article.4 Drawings Drawings of the invention must be filed with the application when they are necessary to understand the subject matter sought to be patented. Significantly.P. are recognized as often not requiring drawings.R. § 1. [FN47] A drawing must show every feature of the invention specified in the claims.P. [FN47]. when a patent application refers to a drawing.

the applicant has a great deal of discretion as to the form and contents of the application. The translation. For example. specifies the contents of a model patent application. The pages of the specification." a table. [FN51] (A) Title of the Invention (B) Cross-Reference to Related Applications (C) Statement Regarding Federally Sponsored Research or Development (D) The names of the parties to a joint research agreement (E) Reference to a "Sequence Listing. or preferably below.P. and a processing fee as set forth in 37 C. the Patent Office will issue an office action and allow a given period of time to provide the translation. US Gov. the numbers being centrally located above. Although the M. [FN49] The specification must also set forth the best mode of making and using the invention. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.5) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.F.P. A more detailed discussion is provided in chapter 7. [FN52] © 2008 Thomson/West. most applications do not include a microfiche appendix or a compact disc. must be accompanied with a statement that the translation is accurate.R. . A brief summary of the statutory requirements for each section of the specification is presented below. the text. it is not recommended that all of these titles be used verbatim.17(i).1] The following arrangement of the specification is generally provided as a guideline. Application s 2.E. whenever filed. starting with 1.5 How to Write Pat.5 Specification The specification is a description of the invention that is of sufficient detail to allow a person skilled in the art of the invention to make and use the invention. This discretionary power is necessary to maintain the flexibility required for the many different types of patentable inventions.5 (Cite as: PLIREF-PATAPP s 2. Works. stating the total number of compact discs including duplicates. No Claim to Orig. § 1.PLIREF-PATAPP § 2. Not all applications have all of these sections. or a computer program listing submitted on a compact disc and an incorporation-by-reference of the material on the compact disc. The specification must be filed in or translated into the English language and must be legibly written either *2-19 by a typewriter or mechanical printer in permanent dark ink or its equivalent. must be numbered consecutively. October 2006 Chapter 2: Parts of a Patent Application *2-18 § 2. including the claims and the abstract. the files on each disc their date of creation. [FN50] If the translation is not filed with the application. [FN50. and their size in bytes (F) Background of the Invention (G) Brief Summary of the Invention (H) Brief Description of the Several Views of the Drawing (I) Detailed Description of the Invention (J) Claims (K) Abstract of the Disclosure (L) Drawings (M) Sequence Listing *2-20 As discussed in chapter 7.

needs to be plainly and legibly written by a typewriter or machine printer in permanent dark ink or its equivalent.R.71(f). US Gov.52(b)(6).5 cm (1 inch).F. [FN54] This helps in amending the specification during prosecution of the application. including the abstract and claims. § 1. A more detailed description can be found in chapter 6 for the claims and chapter 7 for the remainder of the specification.R. must be the same size and must be either size A4 or 8 1/2 x 11 inches.71. including the claims. [0003].R. etc. 37 C. All sheets of paper. [0001]. § 1.R. There can only be a single column of text.F. Times Roman or Courier).08 inch high.5) FOR EDUCATIONAL USE ONLY Page 2 Each page must be single-sided only.21 cm (0. a left margin of at least 2.F. §§ 1. Very large tables can be provided on archival electronic media rather than in a paper specification. The papers cannot be permanently bound. § 1. 37 C.R.R.1].0 cm ( 3/4 inch).1].2]. [FN53.0 cm ( 3/4 inch). Each sheet must have a top margin of at least 2. [FN51]. 37 C.52(d)(1).52(b)(2). There should be no holes in the sheets as submitted. [FN53.5 (Cite as: PLIREF-PATAPP s 2. § 1.F. for *2-21 example. 37 C. [FN50. [FN49].77(a). .PLIREF-PATAPP § 2. and a bottom margin of at least 2. 37 C. [FN50].F.F. The text needs to have sufficient clarity and contrast with the paper to permit direct reproduction. that is. [FN53]. § 1. An individual table more than fifty pages in length.5 How to Write Pat. Application s 2. [FN53. [FN52]. [FN55] The text.R. [FN53] The specification. or if the total number of pages of all the tables in the application exceeds 100 pages in length. but may be no smaller than 0. [FN55].3175 cm (0.P. can be submitted on a finalized compact disk. [FN56] The following provides a general description of the parts of the specification.2] The paragraphs of the specification can be numbered at the beginning of each paragraph. but binder clips and standard office staples are generally acceptable. 1.R. except for drawings. 37 C. Works. and text written in a nonscript-type font (for example. Id. Arial. except for pre-printed forms provided by the Patent Office.or double-spaced.F. [FN54]. must have lines that are 1 1/2 .52(c).P. [FN53. [0002]. § 1. No Claim to Orig. M. a right margin of at least 2. § 1. with applicants being encouraged to use consecutive four-digit Arabic numerals in bold and enclosed in brackets.1] The first page of the specification must commence on a new sheet. a font size of 6).58(b). 37 C. 37 C. and no sheet including part of the text of the specification is to include any other material.125 inch high) (preferably a font size of 12). § 601. The title is considered part of the specification.52.0 cm ( 3/4 inch).E. a lettering style having capital letters that should be at least 0. © 2008 Thomson/West.F.

5 How to Write Pat.5) FOR EDUCATIONAL USE ONLY Page 3 [FN56].5 (Cite as: PLIREF-PATAPP s 2.PLIREF-PATAPP § 2.F.52(a).R. PLIREF-PATAPP s 2. 37 C. § 1. US Gov. Application s 2. .5 END OF DOCUMENT © 2008 Thomson/West. Works. No Claim to Orig.

October 2006 Chapter 2: Parts of a Patent Application § 2. is the single word "VIVARIUM.1 (Cite as: PLIREF-PATAPP s 2. Such descriptive terms as "Improved Electrophoresis of Biological Fluids" and "Safety Improved Car Seat" can be used to tell the reader what the invention is about.1 FOR EDUCATIONAL USE ONLY How to Write Pat. generally ranging in length from two to seven words. Application s 2. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. however.5. The title is a brief. the applicant can use the title to pitch the invention to the general public. US Gov. and it is placed at the top of the patent application.PLIREF-PATAPP § 2.1 END OF DOCUMENT © 2008 Thomson/West.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. . technically accurate description of the invention.5." PLIREF-PATAPP s 2. Although the title is not used to interpret the scope of the invention. The title of Exhibit 2-7.5.5. No Claim to Orig.1 Title of the Invention The title of the invention serves to identify the nature of the invention for indexing and classification of the patent. Works. It is only a few words in length.5 Specification *2-22 § 2.5.

37 C.78(a).R. PLIREF-PATAPP s 2. [FN57] The cross reference section can also contain reference to an international application entitled to a filing date in accordance with PCT Article 11 and designating the United States. 37 C.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.2 (Cite as: PLIREF-PATAPP s 2.R. [FN59. 37 C. § 1.1] [FN57]. and continuation-in-part applications must contain a specific reference to the original application in order to benefit from the earlier filing date of the original application. it is necessary to file a copy of an English translation of the provisional application to claim the benefit of the provisional application. [FN59] If a provisional application is in a foreign language. [FN58] It can also contain a reference to any provisional application from which priority is claimed.F. § 1. October 2006 Chapter 2: Parts of a Patent Application § 2.5 Specification *2-22 § 2.R.2 END OF DOCUMENT © 2008 Thomson/West.1]. . US Gov.F.5.F.2 Cross-References to Related Applications Cross-references are not generally used for an original application but are used primarily for continuation applications.5. Continuation. § 1.F. divisional applications. [FN59.R. divisional. Works. § 1.2 FOR EDUCATIONAL USE ONLY How to Write Pat.78(a)(5)(iv). [FN59]. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Application s 2.5. or continuation-in-part applications. No Claim to Orig.78(a)(1). [FN58].PLIREF-PATAPP § 2.5.5.78(a)(3). 37 C.

Application s 2. [FN60] Since the vivarium was not conceived using federal funds. No Claim to Orig.5.3 (Cite as: PLIREF-PATAPP s 2. § 310. US Gov. a statement concerning the extent of governmental rights in the invention must be inserted in the specification.5.5 Specification *2-23 § 2. M.3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.PLIREF-PATAPP § 2.P. such a statement was not included in Exhibit 2-7. Works.5.E.5. October 2006 Chapter 2: Parts of a Patent Application § 2.3 Statement As to Invention Rights Under Federally Sponsored Research If the invention was conceived or developed as a result of expenditures of funds obtained from the federal government.P.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. [FN60]. . END OF DOCUMENT © 2008 Thomson/West.

a notice of claim of copyright can appear (see section 7. Application s 2.5.C. Works.4 END OF DOCUMENT © 2008 Thomson/West.F.2]. PLIREF-PATAPP s 2. the specification needs to disclose the names of the parties to the joint research agreement. US Gov.PLIREF-PATAPP § 2.14).5.4 (Cite as: PLIREF-PATAPP s 2. [FN60.4) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.5.1] because of the presence of a joint research agreement.4 Miscellaneous Statements A variety of miscellaneous statements can be included in the specification as filed.5 Specification *2-23 § 2. No Claim to Orig. if certain prior art is to be avoided under the CREATE ACT [FN60.5. .5. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.2] Also. October 2006 Chapter 2: Parts of a Patent Application § 2.10.5.1].71(g)(1). § 103(c). 37 C. For example.4 FOR EDUCATIONAL USE ONLY How to Write Pat. [FN60.R.S. [FN60. 35 U. § 1.

An advantage of using compact discs is that any sequence listing and any computer program listing on a compact disc or other electronic medium are excluded when determining the application size filing fees based on the application size.5 Compact Disc References Compact discs optionally can be used. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. October 2006 Chapter 2: Parts of a Patent Application § 2.5. 37 C.52(f)(1). US Gov.PLIREF-PATAPP § 2.3] [FN60. § 1. and computer program listings. END OF DOCUMENT © 2008 Thomson/West. .5 Specification *2-23 § 2. tables.F. Works.5. No Claim to Orig.3].5. [FN60.5 (Cite as: PLIREF-PATAPP s 2.5 FOR EDUCATIONAL USE ONLY How to Write Pat. and in some circumstances must be used for materials such as sequence listing. Application s 2.5) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.R.5.

[FN62]. No Claim to Orig. PLIREF-PATAPP s 2.PLIREF-PATAPP § 2. The "field of the invention" must describe the technical field that encompasses the claimed invention. [FN61] These requirements are discussed in detail in chapter 7.E. Id. US Gov. The "description of the related art" is one or more paragraphs briefly describing the state of the prior art. because such language can be interpreted as admissions of prior art.6 END OF DOCUMENT © 2008 Thomson/West. [FN61].P.5. Works. It is important to avoid descriptions of applicant's invention or portions thereof that might not be part of the prior art in the background section. October 2006 Chapter 2: Parts of a Patent Application § 2. this is found in the fourth paragraph of the background section. In Exhibit 2-7.01(c). Id.6) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. [FN63].5. the field of the invention relates to the art of making vivariums.5 Specification *2-24 § 2. and terrariums. § 608.P.6 (Cite as: PLIREF-PATAPP s 2. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Application s 2. [FN63] In Exhibit 2-11. .5.6 Background The content of the background section usually includes two distinct parts: the technical field of the invention and a brief description of the art related to the invention.5.6 FOR EDUCATIONAL USE ONLY How to Write Pat. [FN62] It should be directed to the subject matter of the claimed invention and may include a paraphrasing of the applicable United States patent classification definitions. aquariums.5. M.

37 C. Application s 2.P.F.5.5.5. PLIREF-PATAPP s 2. For example. US Gov.7 (Cite as: PLIREF-PATAPP s 2.01(d).E.7 FOR EDUCATIONAL USE ONLY How to Write Pat. Works. [FN65] The advantages of the invention or how it solves current problems may also be elaborated.7 END OF DOCUMENT © 2008 Thomson/West.5.73. § 608. October 2006 Chapter 2: Parts of a Patent Application § 2.R. [FN64].7 Summary A brief summary precedes the detailed description of the invention.PLIREF-PATAPP § 2.5 Specification *2-24 § 2.5.7) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. M. . [FN64] The summary briefly describes the essence of the inventive concept.§ 1.P. [FN65]. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. the various patentable elements of the vivarium structure are described in the summary of Exhibit 2-7. No Claim to Orig.

01(g). § 1. US Gov.5.5.E.5. 37 C.8 END OF DOCUMENT © 2008 Thomson/West. § 608. Application s 2. No Claim to Orig. a reference to the drawings and a brief description of the several views of the drawings are necessary. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. [FN67]. .8 (Cite as: PLIREF-PATAPP s 2. Works.R.5 Specification *2-25 § 2.8) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.74.8 Description of the Drawings If the application contains drawings.P.5. [FN67] The description should concisely and accurately reflect the drawings themselves.8 FOR EDUCATIONAL USE ONLY How to Write Pat.F.PLIREF-PATAPP § 2. as shown in Exhibit 2-7. PLIREF-PATAPP s 2.5. [FN66] All the drawings should be correctly labeled and described.P. M. It is also important to make sure that all figures mentioned in the specification are correctly labeled and included with the application. October 2006 Chapter 2: Parts of a Patent Application § 2. [FN66].

148 U. . the description can be satisfactory even in the absence of a specific working example. [FN71]. Co. such as structures or process steps that are commonly known in the field.5 Specification *2-25 § 2. 351 F.. October 2006 Chapter 2: Parts of a Patent Application § 2. [FN68] The description should distinguish the invention from the existing art and point out the novel aspects of the invention. [FN72]. Hydro-Line Mfg.2d 881 (Fed.E. the applicant can use his or her own terminology to describe the invention. Moreover. need not be described in detail. v. § 112.Q. [FN68]. v.5.01(h). Works. The description must also present the best mode of operation of the invention that is contemplated by the inventor at the time of filing the application. 1965). unless a detailed description is necessary to adequately and accurately describe the invention.P.S.9 (Cite as: PLIREF-PATAPP s 2.S.5.9 FOR EDUCATIONAL USE ONLY How to Write Pat. Flick-Reedy Corp. 694 (7th Cir.9 END OF DOCUMENT © 2008 Thomson/West. No Claim to Orig. [FN69].. Application s 2. [FN72] Elements of the invention. M.C.9 Description The specification must include a sufficiently detailed description of at least one embodiment of the invention to enable any person skilled in the art of the invention to make and use the invention without undue experimentation. 733 F.5. The description should be as short and specific as possible to adequately and accurately describe the invention.P. 1984).PLIREF-PATAPP § 2. 958. [FN70] However. Cir. In the body of the description.5. cert. 383 U. PLIREF-PATAPP s 2. [FN71] The "best mode" requirement is discussed in detail in chapter 7.5. Inc. 35 U. [FN69] This is to ensure that the public learn of the best method of using or operating the invention without having to conduct extensive experiments. 771 (1966). denied. 146 U.S. See Lear Siegler.P. Id.Q. [FN70]. so long as the words are implicitly or expressly defined within the specification and so long as the definitions used are not contrary to the ordinary meaning of those words.S.2d 546. any evidence of concealment of the best mode of operation can invalidate the issued patent in subsequent litigation proceedings.9) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Aeroquip Corp. § 608. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. US Gov. so the applicant should make sure that a sufficient disclosure is *2-26 provided.P. The patent examiner will generally accept any operative example of the invention as the best mode.

[FN76] Claims are generally presented in order of scope with the first claim presented being the broadest. Also. [FN75] Otherwise. and claim 2 is an example of a dependent claim. Id. The claims section should begin with the words "I claim" or "We claim" or "What is claimed is. PLIREF-PATAPP s 2.E.R.PLIREF-PATAPP § 2. The claims must commence on a separate sheet of paper and should appear after the detailed description of the invention.10 (Cite as: PLIREF-PATAPP s 2. 37 C.5.F. the claim will be rejected on the ground that it claims more than it discloses to the public.F. US Gov. No Claim to Orig. § 1. An independent claim claims the invention without reference to any other claim.R. § 1.75(f). [FN73] The claims define the extent of patent protection for the invention. 37 C.75(g).5.10 END OF DOCUMENT © 2008 Thomson/West. [FN74].10 FOR EDUCATIONAL USE ONLY How to Write Pat." [FN74] Claims are of two varieties: independent and dependent claims.P.5 Specification *2-26 § 2. 37 C. M. [FN77].10 Claims The specifications must end with one or more claims that particularly point out and distinctly claim the subject matter of the invention.01(m). to the extent possible. *2-27 claim 1 is an example of an independent claim.75(a). October 2006 Chapter 2: Parts of a Patent Application § 2. Application s 2. 37 C.10) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. When there are several claims. A claim can only encompass subject matter disclosed in the specification.F. § 608. 37 C. the meaning of unusual terms and phrases used in the claims must be clearly defined in the description.75(d)(1). § 1. they are numbered consecutively in Arabic numerals. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.F.5.R. [FN77] Dependent claims should be grouped with the claims from which they depend. [FN75]. Chapter 6 discusses the form and content of the claims in detail. . Works.5. [FN78] [FN73]. § 1.R.75(h). [FN78]. § 1.5.F.R. A dependent claim refers to and includes the limitations of some other claim. In Exhibit 2-7. [FN76].P.

Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Application s 2. PLIREF-PATAPP s 2.72(b). § 1.11 Abstract A brief abstract summarizing the technical disclosure in the specification must commence on a separate sheet and should be placed after the claims section under the heading "Abstract of the Disclosure. and the public in general. The abstract is presented in narrative form and is limited to a single paragraph of fewer than 150 words. October 2006 Chapter 2: Parts of a Patent Application § 2." The paper presenting the abstract cannot include any other portions of the application or other material." *2-28 The abstract should mention the novel aspect of the invention." or just "Abstract. cursory inspection of the patent. as shown in Exhibit 2-7. [FN81] [FN79].5. [FN80] It should be clear and concise. nor should it compare the invention with the prior art.5. M. No Claim to Orig. [FN81]. the abstract should not discuss the merits or speculative applications of the invention.5. [FN79] The abstract is actually printed by the United States Patent Office on the cover page of the patent.5 Specification *2-27 § 2. and it should avoid using "patentese.P. Id.11) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. The purpose of the abstract is to allow the Patent Office examiners.01(b).11 (Cite as: PLIREF-PATAPP s 2. to determine the nature and essence of the invention from a quick.P.F. US Gov. 37 C. However.11 FOR EDUCATIONAL USE ONLY How to Write Pat. . § 608.5.11 END OF DOCUMENT © 2008 Thomson/West.R. Works.PLIREF-PATAPP § 2.5.E. [FN80].

it is best to file such a preliminary amendment with the original application rather than waiting until a filing receipt is received. § 1. § 2. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.6 END OF DOCUMENT © 2008 Thomson/West. A preliminary amendment is considered part of the original disclosure. Shoketsu Kinzoku Kogyo Kabushiki Co.6 How to Write Pat.F. [FN81. One reason for this is a potential prosecution history estoppel issue. depending upon other multiple dependent claims and omnibus claims are frequently used overseas. For example. [FN81. See Festo Corp. A preliminary amendment that cancels all claims will not be entered. 722 (2002).115(b)(1).6) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.3] [FN81.3]. October 2006 Chapter 2: Parts of a Patent Application *2-28 § 2.15(a).PLIREF-PATAPP § 2. Multiple dependent claims. PLIREF-PATAPP s 2. it may be possible to avoid prosecution history estoppel which would result if the claims are narrowed by a preliminary amendment submitted after the application is filed. [FN81.R. Application s 2..2].6 Preliminary Amendments There are circumstances in which a preliminary amendment is filed with an original application.R. applications originating overseas may not conform to U.1].1] Therefore. . [FN81. [FN81.6 (Cite as: PLIREF-PATAPP s 2. Works.F. If a preliminary amendment filed with the original disclosure contains new matter.2] By amending the claims by a preliminary amendment that is considered part of the original application.F. claim standards. No Claim to Orig. US Gov. see also 37 C. the preliminary amendment needs to be referenced in the oath. 37 C.S.R.S. 535 U. but are not acceptable in the United States. v. § 1.115(a). 37 C.

other related United States and foreign patents. [FN83]. No Claim to Orig. A sample form for listing publications cited to the Patent Office is provided in Exhibit 2-8. October 2006 Chapter 2: Parts of a Patent Application *2-29 § 2. Failure to comply with the duty of disclosure can have severe consequences. The information disclosure statement should disclose all information that is material to the application. Application s 2. antitrust liability. although it is not necessary to submit that document at the time of application for the patent.R. [FN82]. An intentional withholding of material prior art can result in unenforceability of the entire patent.R.7) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. and possible suspension or disbarment of the prosecuting attorney. and published technical articles.7 END OF DOCUMENT © 2008 Thomson/West. [FN85] Such information includes material information found in publications and patents belonging to the inventor. an award of attorney's fees.56(a). If there is doubt as to the materiality of a particular reference. .PLIREF-PATAPP § 2. Information disclosure statements are generally filed with the patent application. The submission is considered timely if made within ninety days of the application filing date. it is safer to cite the reference in the disclosure and let the examiner determine whether or not the information is material.F. US Gov.F. [FN84]. § 1. 37 C. applicants are encouraged to file an information disclosure statement. 37 C. [FN85].7 How to Write Pat. [FN84] A detailed discussion of the contents of the information disclosure statement is provided in chapter 8. Works.F. commercial activity relating to the invention. [FN82] Under that duty. [FN83] As a means of complying with that duty of disclosure. Information is material if it establishes by itself or in combination with other information a prima facie case of unpatentability of a claim.56(b). Filing a complete disclosure with the application benefits the applicant by immediately bringing all references to the attention of the examiner before the application is first examined.7 (Cite as: PLIREF-PATAPP s 2. Such information also includes information known to the applicant and others involved in the prosecution of the application regarding prior disclosures. Id. § 1. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.R. 37 C.7 Information Disclosure Statement The inventor and every other person who is substantially involved in the preparation or prosecution of the application have a duty of good faith and candor towards the Patent Office. and the *2-30 like.97(a). PLIREF-PATAPP s 2. § 1. such individuals must disclose to the Office all information that is known by them and that is material to the application.

country. [FN91] An English translation of *2-32 the non-English language foreign priority document is not required except when the application is involved in an interference or when it is necessary to overcome the date of a reference relied upon by the examiner. US Gov. month. The claim must identify the foreign application from which priority is claimed. day. and year of filing. [FN88] However.S. [FN90] A claim for priority must be presented during the pendency of the application.P. and (4) the invention was not patented or described in a printed publication in any country or in use or for sale within this country more than one year prior to the *2-31 actual United States application date in the United States. § 119. § 201. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.13. [FN92] [FN86]. the oath or declaration of the application must identify the foreign application on which priority is claimed and any foreign application having a filing date earlier than the foreign application on which priority is claimed. October 2006 Chapter 2: Parts of a Patent Application *2-30 § 2. a United States patent application may be entitled. Foreign priority may also be claimed based on a foreign application for an inventor's certificate. Application s 2.PLIREF-PATAPP § 2. and no later than four months from the actual filing date of the application. §§ 119 and 365. (3) the United States application is filed within twelve months (six months for design patents) of the first or earliest filing date in a reciprocating foreign country. as well as any foreign application for the same subject matter and having a filing date before that of the application for which priority is claimed. © 2008 Thomson/West. [FN87] The applicant must file a claim with the Patent Office to obtain foreign priority. Works.C. a sworn or certified translation is required.8 Claiming Foreign Priority Under 35 U. When the foreign documents are filed for the purpose of overcoming some prior art reference.8 How to Write Pat. . [FN86] A list of foreign countries that recognize the right of priority is provided in M.C. 35 U. The earlier filing date may be obtained if (1) the foreign application is for the same invention and identifies the same inventor or inventors. There is no special form or language for the claim for priority.8 (Cite as: PLIREF-PATAPP s 2. whichever period is longer. (2) the foreign country at issue grants reciprocal rights to United States applicants.E. The claim should also include a copy of the original foreign application certified by the patent office of the foreign country. or sixteen months from the filing date of the prior foreign application. A certified copy of the foreign application must be filed before the patent is granted. for some purposes. but subsequent to the date of filing the foreign application.P. [FN89] All foreign applications should be identified by specifying the application number. No Claim to Orig. or specifically requested by the examiner. to the benefit of the filing date of an earlier patent application in a foreign country or an international application that designates at least one foreign country.S. Establishing an earlier filing date can be crucial to overcome an intervening reference with an effective date prior to the United States application filing date.8) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.

[FN90].55.P. Certificates of inventorship are provided by Communist countries as an alternative to patent grants.R. Id.R. § 1. [FN91]. US Gov. § 1.55(a)(2).8 How to Write Pat.F. § 1. No Claim to Orig. .8) FOR EDUCATIONAL USE ONLY Page 2 [FN87].PLIREF-PATAPP § 2.E. § 201.F. Works.15.P. [FN88].8 END OF DOCUMENT © 2008 Thomson/West.E. M.14(b).P. 37 C. 37 C. 37 C. M.P. PLIREF-PATAPP s 2. § 201.63. Application s 2. [FN92].R. [FN89].F.8 (Cite as: PLIREF-PATAPP s 2.

E. .102 and M.1 END OF DOCUMENT © 2008 Thomson/West.P. [FN92.9.P.R. Works. entitling the application to be taken up out of turn and examined ahead of other applications. Since utility patents generally expire twenty years from the effective filing date. see 37 C. Application s 2. § 1504.9. See 37 C. A Petition to Make Special is a request that a patent application be given "special" status.PLIREF-PATAPP § 2.P. [FN92.9.F.155 and M.9. No Claim to Orig.1 (Cite as: PLIREF-PATAPP s 2. § 1.P. US Gov.9 Petition to Make Special *2-32 § 2.1]. PLIREF-PATAPP s 2.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. early issuance of a patent as a result of special status does not adversely affect the end of the term.F. October 2006 Chapter 2: Parts of a Patent Application § 2. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. A petition to make special can increase the effective term of a patent by adding to the front end of the term.1] In general.9. a grant of such "special" status means that the time required in the overall Patent Office examining process may be shortened by as much as 60%.E.30 for petitions to make special for design patent applications.R § 1.1 Introduction Patent applications are ordinarily examined in the order in which they are received by the Patent and Trademark Office. § 708 for Petitions to Make Special for utility patent applications.1 FOR EDUCATIONAL USE ONLY How to Write Pat.

9. 3.9. corresponding claims in the U. If the Applicant's health is such that he or she might not be able to assist in the prosecution of the application. the development of the technology will be significantly impaired if examination of the patent application is delayed. 1308 OG 106. No Claim to Orig.9 Petition to Make Special *2-32 § 2.S.9. § 708. If actual infringement is occurring. [FN92. 5. If the applicant complies with the accelerated examination program.2]. If the invention relates to counterterrorism. If the invention is capable of countering terrorism.2 Grounds for Requesting a Petition to Make Special A utility application can be made "special" under any of the following circumstances: 1. If the application relates to biotechnology and is filed by a small entity where the subject of the patent application is a major asset of the small entity. 7. If the invention relates to the safety of research in the field of recombinant DNA.R. a petition.2 FOR EDUCATIONAL USE ONLY How to Write Pat. US Gov. 9. § 1. [FN92.F. Application s 2. If the invention relates to superconductivity. 10. 6. If the Applicant is sixty-five years of age or more.F. PLIREF-PATAPP s 2.E. 13. If the invention will materially enhance the quality of the environment. applications can receive fast track examination).9. 4. *2-33 2. If the invention will materially contribute to the development or conservation of energy resources. If the invention relates to HIV/AIDS and cancer.P. M. Works. 14. 12.P. 8. 37 C.2 END OF DOCUMENT © 2008 Thomson/West.02.2] *2-34 Design applications can be made special if the application is accompanied by the requisite petition fee.9. Reissue applications (automatically treated as special pursuant to 37 C. § 1. and 15. If the applicant qualifies for the Patent Prosecution Highway (PPH) (where the applicant has received a ruling from the Japanese Patent Office that at least one claim in a corresponding Japanese patent application is patentable.2 (Cite as: PLIREF-PATAPP s 2.176). October 2006 Chapter 2: Parts of a Patent Application § 2. 11. If the invention is ready to be manufactured but cannot be manufactured unless a patent is granted.102. .2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. a statement that a pre-examination search was conducted and an Information Disclosure Statement.R.PLIREF-PATAPP § 2. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.

Application s 2. the petition must include a statement to that effect. including an interview before a first office action.R. 6. class and subclass and the date of the search. 3. . search *2-35 fee. The requirements to qualify for accelerated examination are daunting. the application must be complete under 37 C. The preexamination search must involve U. If a petition is based on the applicant's health or age or is under the PPH program (categories 1. and required fees must be filed electronically (with an exception if the electronic filing system is not available). The application.9. the reason for the Petition to Make Special does not matter except for categories 1. Applicant must provide a statement that a preexamination search was conducted.3 (Cite as: PLIREF-PATAPP s 2. and 15 in § 2. foreign patent documents. It is only necessary to submit a petition in writing that identifies the application (by application number and filing date) and to pay any petition fee. US Gov. and an executed oath or declaration.9. No Claim to Orig.51 and in condition for examination. 7. including an identification of the field of search by U. and the date of search.2).9 Petition to Make Special *2-34 § 2. petition. October 2006 Chapter 2: Parts of a Patent Application § 2. the procedure is straightforward. 5.9. Dependent claims cannot be argued separately for patentability. the applicant must make an election without traverse in a telephone interview. or counterterrorism. § 1. All other categories have the same requirements as the requirements for the accelerated examination program. The application has to be filed with a Petition to Make Special. The petition must include a statement that the applicant will agree to have an interview. with the intention of clarifying and possibly resolving all issues with respect to patentability at that time.9. Thus it must include the basic filing fee. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. The claims must be directed to a single invention. Therefore. or a statement that the claimed subject matter is directed to environmental quality.R. energy. The application needs to be accompanied by the fees set forth in 37 C.3 Procedure There are now two different procedures for Petitions to Make Special. application size fee. For database searches. examination fee. 4. and nonpatent literature. and 15 above. the applicant must provide the search logic or chemical structure sequence used as a query.S. and include the following: 1.F. 2. 2. and the petition must include a statement to that effect.S.3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. 8. The goal for the accelerated examination program is to complete examination of the application within twelve months of the filing date.3 FOR EDUCATIONAL USE ONLY How to Write Pat. If the Patent Office decides they are not. Works. At the time of filing. the name of the files searched in.PLIREF-PATAPP § 2. patents and patent application publications.9.F.17(h). unless the applicant can justify with reasonable certainty that no references more pertinent than those already identified are likely to be © 2008 Thomson/West. and no multiple dependent claims. 2. 9. § 1. to discuss the prior art and any potential rejections or objections. The application must contain three or fewer independent claims and twenty or fewer total claims. for practical purposes.

or acts in the specification that correspond thereto.R. § 1. e. A search report from a foreign patent office will not satisfy the preexamination search requirement unless the search report satisfies the above requirements.3) Page 2 found in the eliminated source and includes such a justification. amendments to claims. the identity of each means. A detailed explanation of how each of the claims is patentable over the references cited.9.98 citing each reference deemed most closely related to subject matter of each of the claims.9. An information disclosure statement in compliance with 37 C. PLIREF-PATAPP s 2. material. No Claim to Orig.9. For each reference cited. During prosecution. . A form to use is PTO/SB/25. c. Application s 2. d. *2-37 g.PLIREF-PATAPP § 2. h. and the document must include the following: a.3 END OF DOCUMENT © 2008 Thomson/West.3 (Cite as: PLIREF-PATAPP s 2.or step-plus-function claim element and the structure.C.S. The preexamination search must be directed to the claimed invention and encompass all features of the claims. 10. If applicable. giving the claims their broadest *2-36 reasonable interpretation.9. f. which is available at the PTO website. Works. b. identification of all the limitations in the claims disclosed by the reference.3 FOR EDUCATIONAL USE ONLY How to Write Pat. that are not encompassed by the preexamination search or an updated accelerated examination support document will be treated as not wholly responsive and will not be entered. Identify any cited references that may be disqualified as prior art under 35 U. including any new claims. 11. A concise statement of the utility of the invention as defined in each independent claim (unless the application is a design application). § 103(c) as amended by the Cooperative Research Technology Enhancement Act.F. US Gov. a showing where each limitation of the claims finds support in each such prior application. An accelerated examination support document must be provided in support of the petition. The search must also encompass the disclosed features that may be claimed. specifying where the limitation is disclosed in the cited reference. A showing where each limitation of the claims finds support in the specification. If the application claims the benefit of priority of one or more applications.

2. Therefore.4 END OF DOCUMENT © 2008 Thomson/West. Application s 2. US Gov.4 (Cite as: PLIREF-PATAPP s 2. Works. No Claim to Orig. examination time is usually reduced and a patent will generally issue sooner. the Patent and Trademark Office examines the application on an expedited basis.9 Petition to Make Special *2-37 § 2. . the granting of a Petition to Make Special generally means that any resulting patent has a longer effective term. PLIREF-PATAPP s 2.4 FOR EDUCATIONAL USE ONLY How to Write Pat. Shorter Prosecution Time--If a Petition to Make Special is granted. and a Petition to Make Special usually decreases the examination time of the application. October 2006 Chapter 2: Parts of a Patent Application § 2.4) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.9. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.4 Potential Advantages of a Petition to Make Special Filing a Petition to Make Special has the following potential advantages: 1.9.9.9.PLIREF-PATAPP § 2. Longer Patent Term--Since the term of a United States patent expires twenty years from the filing date of the application.9.

2.9 Petition to Make Special *2-37 § 2.9.5 Potential Disadvantages of a Petition to Make Special Filing a Petition to Make Special has the following potential disadvantages: *2-38 1. To what extent the costs are increased depends upon the basis for requesting the Petition. .5 END OF DOCUMENT © 2008 Thomson/West. and the inability to traverse restriction requirements greatly reduce the value of the accelerated examination program. No Claim to Orig. Miscellaneous Disadvantages--The inability to argue dependent claims.5 (Cite as: PLIREF-PATAPP s 2.PLIREF-PATAPP § 2. US Gov. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.9.9.5) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.9. the limited number of claims. The cost of complying with the accelerated examination procedure is huge. October 2006 Chapter 2: Parts of a Patent Application § 2. 3. Application s 2. PLIREF-PATAPP s 2. Prosecution History Estoppel--The likelihood of creating prosecution history estoppel with the accelerated examination procedure is very high. Higher Initial Costs--Preparing and filing a Petition to Make Special increases the cost of prosecuting the application.9.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Works.

9. PLIREF-PATAPP s 2. .6 FOR EDUCATIONAL USE ONLY How to Write Pat.9. there is a chance that the petition will be misplaced or lost. Application s 2.9. Alternatively. or alternatively by telephoning the Patent Office. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18. petitions for a design application can be directly hand carried to the Design Technology Center.9. Otherwise.6 END OF DOCUMENT © 2008 Thomson/West. April 2006 Chapter 2: Parts of a Patent Application § 2. The USPTO website can be checked to determine who is responsible for making petition decisions and where that person is located. a petition can be mailed to the Patent Office with the appropriate mail stop specified which can be determined through the USPTO website. US Gov.6 (Cite as: PLIREF-PATAPP s 2.9 Petition to Make Special *2-35 § 2. For example. No Claim to Orig. Director's Office.PLIREF-PATAPP § 2.6 Procedure It is recommended that petitions to make special be hand carried to the individual at the Patent Office that is in charge of these petitions.9. Works.6) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.

any claim for small entity status. No Claim to Orig.PLIREF-PATAPP § 2. and nonpublication request. It also lists the application elements that make up the application. as shown in Exhibit 2-9.1 Cover Sheet and Filing Fees The patent application should also include a cover sheet. The cover sheet acts as a transmittal letter from the applicant to the Patent and Trademark Commissioner. including the fee transmittal form (see Exhibit 2-9A). Additional fees are also required if the application contains multiple dependent claims. The applicant can. US Gov. the number of pages in the specification.9A. Additional claims or independent claims require additional fees. shown as Exhibit 2. October 2006 Chapter 2: Parts of a Patent Application § 2. The cover sheet is addressed to the Commissioner for Patents.10.000. the applicant must promptly reimburse the deposit account.10 Filing the Application *2-38 § 2.1 (Cite as: PLIREF-PATAPP s 2. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. and should. The fee schedule shown in Exhibit 2-9A is provided only for illustration and should not be used to calculate actual fees without verification as to its accuracy. Any person can start a deposit account in the Patent Office by paying a minimum deposit of $1. The schedule requires a basic filing fee for general applicants and a reduced basic fee for small entity applicants.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. It is strongly recommended that this action be taken to avoid abandonment of an application for the inadvertent failure to pay a fee. The Patent Office no longer accepts credit cards. Power *2-39 of Attorney. serves as a table of contents for the patent application. the accompanying oath or declaration. with a maximum of three of those claims presented in independent form. The cover sheet also allows for identification of any accompanying application parts such as assignment papers. It identifies the applicant. grant the Patent Office the broad authority to charge any additional fees incurred under *2-40 the same application to the deposit account. Works. The filing fees calculated on the fee transmittal form can be paid directly from a deposit account with the Patent Office.10. the number of sheets of drawings.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2. return receipt postcard. the optional application data sheet.10. The fee schedule for patents is periodically revised by the PTO. On billing by the Patent Office. It is desirable to include a customer number on the cover sheet. [FN94] This account can be used to pay any fee or to order any service of the Patent Office so long as the account contains sufficient funds to cover the requisite fee amount. Information Disclosure Statement. and shows the fees due with the application. The Patent Application Information Retriev- © 2008 Thomson/West.gov>. .uspto. Updated information can be obtained from the PTO website <www. and any CD-ROMs or CD-Rs. [FN93] The fee can be calculated using a Fee Transmittal form. The fee must be paid either by a check or through a deposit account. It identifies the application by the name of the first named inventor and the title of the patent application. The present schedule entitles the applicant to present up to twenty claims. The cover sheet must report the correct deposit account number to allow assessment of the fees.10.

§ 122(b)(2)(B)(iii). If the application is not to be filed overseas.25. and the applicant does not want the application to be published. No Claim to Orig.10. 35 U. Works.F. the applicant must notify the United States Patent and Trademark Office within forty-five days after the filing. Although at one time the Patent Office wanted the customer number provided as a bar code. Customer numbers can be obtained by downloading and filling out the appropriate form from the Patent Office website. See text below regarding the advisability of submitting a nonpublication request. § 122(b)(2)(B)(i).PLIREF-PATAPP § 2.10. [FN95]. Failure to do so results in abandonment of the application. [FN93]. and patent agents to securely access their own patent application status if they have a customer number and if the patent application is associated with the customer number.S. PLIREF-PATAPP s 2. 37 C. If the applicant subsequently files an application directed to the invention in another country.1 FOR EDUCATIONAL USE ONLY How to Write Pat. [FN95] Submission of a request for nonpublication can be risky. .gov/web/forms>.uspto.10. form PTO/SB/35 or its equivalent needs to be submitted.1) Page 2 al (PAIR) project allows independent inventors. Application s 2. it should be included on the cover sheet.R. [FN96].1 END OF DOCUMENT © 2008 Thomson/West. [FN94].com/>.C. 2003).S. that should be requested on the cover sheet under 35 U. that requires publication of applications eighteen months after filing. 1272 OG 22 (July 1. [FN96] If a customer number is available. or under a multilateral international agreement. In addition. US Gov. This will allow access to online information about the status of the application through the PTO PAIR system. the Patent Office presently does not accept bar codes because of difficulties in accurately reading them.1 (Cite as: PLIREF-PATAPP s 2. the customer number must be typed. § 1. Forms that are easy to fill in can be obtained as a subscription service from Legal Star <http://www. That form and other PTO forms can be obtained at <http:// www.10.C. registered attorneys.legalstar.

The postcard is important because it serves as prima facie evidence of receipt of the papers identified at the Patent Office on the date stamped by the Patent Office. [FN98] The postage on the postcard should be either a stamp or nondated meter postmark. The postcard thus provides an acknowledgment by the Patent Office of receipt of the application. The application package should also include a stamped. [FN100] A typical form for this certificate is provided in Exhibit 2-11. If it is critical to obtain the earliest possible filing date. stating the date of mailing and signed by the person mailing the application. Virginia 22313-1450 The application can be mailed or hand delivered to the Patent Office by any method.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. should be placed unfolded in an envelope and addressed to: *2-42 Commissioner for Patents PO Box 1450 Alexandria. the Post Office may not deliver the postcard because of the discrepancy between the meter date and when the Patent Office actually deposits the postcard in the mail. Sunday. October 2006 Chapter 2: Parts of a Patent Application § 2. must be included with the application. No Claim to Orig.PLIREF-PATAPP § 2. and specify the number of drawing sheets. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.2 (Cite as: PLIREF-PATAPP s 2. .10. [FN97] The person receiving the papers in the Patent Office checks the listing on the postcard against the filed papers. including all papers and drawings. It should list all of the formal papers included in the application package.2 Postcard and Mailing A notice acknowledging receipt of the application is desired. The postcard should identify the application by the applicant's name or names and the title of the application.10. US Gov. [FN99] A certificate of express mailing. If any of the listed papers are not filed. the postcard will be stamped with the date of receipt and the application's tentative serial number and placed in the return mail. Works.2 FOR EDUCATIONAL USE ONLY How to Write Pat. the applicant gets the benefit of the next working day. self-addressed return postcard addressed to the applicant or the applicant's attorneys identifying the papers included in the application.10. state the filing fee check number. An application that is filed using the Express Mail Service of the United States Postal Service is considered to have been filed in the Office on the date of deposit with the Postal Service (as shown on the Postal Service's receipt of deposit). they will be crossed out and initialed by the person receiving the papers. then the application should be hand-carried to the post office and an express mail receipt obtained on the spot.10. or federal holiday. If it is a metered postmark.10 Filing the Application *2-41 § 2. Application s 2. When the application package is received by the Patent Office. Depositing an express mail application in a mailbox can result in a one-day (or more) delay between the date of deposit and the date that the Postal Service acknow- © 2008 Thomson/West. The application. If the application is express mailed on a Saturday. An example of such a postcard is shown in Exhibit 2-10. indicate the total number of pages of the application.

US Gov.2 FOR EDUCATIONAL USE ONLY How to Write Pat. .F. The Patent Office uses the Postal Service date rather than the applicant's certificate-of-mailing date as the filing date. No Claim to Orig. § 1.R. [FN97].10(a).10. [FN98].E. Application s 2.2 END OF DOCUMENT © 2008 Thomson/West.2 (Cite as: PLIREF-PATAPP s 2.10. § 1.PLIREF-PATAPP § 2. 37 C.10. 37 C.R. M. Works.10.P. PLIREF-PATAPP s 2. § 503.F.P. Id. [FN99].10(b). [FN100].2) Page 2 ledges receipt.

3 Checklist A comprehensive checklist for a patent application is provided in Exhibit 2.3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. .10 Filing the Application *2-42 § 2.12.10.10. PLIREF-PATAPP s 2.3 END OF DOCUMENT © 2008 Thomson/West.PLIREF-PATAPP § 2. The checklist lists the components of a patent application and procedural steps calculated to avoid errors in the preparation and filing of the application.10. US Gov. Works.10. Application s 2. No Claim to Orig.3 (Cite as: PLIREF-PATAPP s 2.3 FOR EDUCATIONAL USE ONLY How to Write Pat. October 2006 Chapter 2: Parts of a Patent Application § 2. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.10.

4(d). Smith/ John T. Kanji etc.) and/or Arabic numbers and appropriate spaces and commas. 37 C. and be reasonably specific so that the identity of the signor can be readily recognized.11 S-Signatures An S-Signature is a signature between forward slash marks. The S-Signature must consist of only letters (including English and non-English alphabet. but not a handwritten signature. the practitioner prints out the document. 4. 11111 [FN101]. § 1. The signor's name must be presented in a printed or typed form immediately below or adjacent to the S-Signature. No. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. A number sign (#) may precede the supplied registration number. Reg. 3. Application s 2. A registered practitioner must supply his/her registration number. full or legal name be used. 2. the S-Signed declaration or affidavit is electronically sent to the practitioner through email.R. and should retain evidence of authenticity of the signature. The requirements for an S-Signature are as follows: 1. *2-44 5. PLIREF-PATAPP s 2.11 How to Write Pat. There is no requirement that the signor's actual. script fonts. The person signing must insert his/her own S-Signature with a first single forward slash mark before and a second single forward slash mark after the S-Signature. 6. . apostrophes. Works. 7. A person submitting a document signed by another with an S-Signature is obligated to have a reasonable basis to believe that the person whose signature is present on the document actually inserted that signature.11 END OF DOCUMENT © 2008 Thomson/West. [FN101] Exemplary of a situation where an S-Signature can be used is after the practitioner creates a document.11 (Cite as: PLIREF-PATAPP s 2.PLIREF-PATAPP § 2. US Gov. The person inserting an S-Signature in a document submitted to the Patent Office certifies that the inserted signature appearing in the document is his or her own signature.11) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. and then mails or has it hand-carried to the Patent Office. or hyphens for punctuation. either as part of the S-Signature or immediately below or adjacent thereto. such as Hebrew.F. Another example is when a declaration or affidavit is signed by an inventor on a PC. Smith/ John T. Smith. An example of an appropriate S-Signature of an inventor is as follows: /John T. October 2006 Chapter 2: Parts of a Patent Application *2-43 § 2. Smith An example of an S-Signature of a person acting in a representative capacity is as follows: /John T. No Claim to Orig. and the document is then mailed or hand-carried to the Patent Office. and then SSignator signs it on his/her PC. but the Patent Office suggests that the full name be used. and text characters.

2-1 (Cite as: PLIREF-PATAPP 2 Exh. US Gov. No Claim to Orig. Application 2 Exh. Works.PLIREF-PATAPP 2 Exh. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18. . 2-1 END OF DOCUMENT © 2008 Thomson/West. 2-1 FOR EDUCATIONAL USE ONLY How to Write Pat. April 2006 Chapter 2: Parts of a Patent Application *2EX-1 Exhibit 2-1: Declaration for Utility or Design Patent Application TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 2 Exh. 2-1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.

2-2 (Cite as: PLIREF-PATAPP 2 Exh. 2-2 FOR EDUCATIONAL USE ONLY How to Write Pat. 2-2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. 2-2 END OF DOCUMENT © 2008 Thomson/West. No Claim to Orig. Works.PLIREF-PATAPP 2 Exh. Application 2 Exh. April 2006 Chapter 2: Parts of a Patent Application *2EX-3 Exhibit 2-2: Power of Attorney and Correspondence Address Indication Form TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 2 Exh. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18. . US Gov.

NOW. substitutions. AND I HEREBY covenant that I have full right to convey the entire interest herein assigned. April 2006 Chapter 2: Parts of a Patent Application *2EX-5 Exhibit 2-3: ASSIGNMENT WHEREAS. continuation. I hereunto set my hand this ____ day of _______. transfer and set over to Assignee the entire right. and all patents (including all extensions. 2-3 FOR EDUCATIONAL USE ONLY How to Write Pat. and testify in any legal proceeding. make all rightful oaths and generally do everything possible to aid Assignee to obtain and enforce proper patent protection for said improvements in all countries. © 2008 Thomson/West. substitute and reissue applications. continuations-in-part. together with any successors. AND WHEREAS _____________. called "Assignee"). No Claim to Orig. any agreement in conflict herewith. and do hereby sell. assign. ________________ STATE OF CALIFORNIA COUNTY OF ) ) ) SS. assigned. transferred and set over. 2-3 (Cite as: PLIREF-PATAPP 2 Exh. and executed by us. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18. Works. AND I HEREBY further covenant and agree that I will communicate to Assignee any facts known to me respecting said improvements. title and interest in and to said improvement and application. the receipt of which is hereby acknowledged. have invented certain new and useful improvements disclosed in an application for United States Letters Patent titled _______________________. and all applications for patents (including related rights such as utility-model registrations. 19 ___. and any officials of foreign countries whose duty it is to issue patents on applications as aforesaid. renewals and reissues thereof) granted for said improvements in any foreign countries. and all United States Letters Patents which may be granted thereon and all reissues and extensions thereof. and that I have not executed. on even date herewith. I have sold. and said application and all divisions. Application 2 Exh. legal representatives of assign thereof. . sign all lawful papers. and will not execute. I. execute all divisional. IN TESTIMONY WHEREOF.PLIREF-PATAPP 2 Exh. to issue all patents for said improvements to Assignee in accordance with the terms of this assignment. and the like) heretofore or hereafter filed for said improvements in any foreign countries. THEREFORE. wants to acquire the entire right. US Gov. continuations and continuations-in-part thereof. _______________________________________________________ respectively. and all priority rights under the International Convention for the Protection of Industrial Property for every member country. title and interest in and to said improvements. and we hereby authorize and request the United States Commissioner of Patents and Trademarks. inventor's certificates. for good and valuable consideration. a _____ corporation (hereafter. 2-3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.

known to me or proved to me on the basis of satisfactory evidence to be the person whose name is subscribed to the above assignment. before the undersigned. US Gov.PLIREF-PATAPP 2 Exh. 19 ___. Works. 2-3 (Cite as: PLIREF-PATAPP 2 Exh. and acknowledged that he executed the same. No Claim to Orig. . a Notary Public for the State and County aforesaid. 2-3) Page 2 On __________. personally appeared ____________. 2-3 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. ________________ Notary Public PLIREF-PATAPP 2 Exh. 2-3 END OF DOCUMENT © 2008 Thomson/West.

2-3A) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. ___________ of ___________ herein referred to "assignee" whose mailing address is ___________________ is desirous of acquiring the entire right. Works. the receipt whereof is acknowledged. and for the use and behoof of his legal representatives. Application 2 Exh. therefore. title. April 2006 Chapter 2: Parts of a Patent Application *2EX-7 Exhibit 2-3A: Assignment of Application Sample Form (former PTO/SB/15) (08-03) ------------------------------------------------------------------Docket Number (Optional) ASSIGNMENT OF APPLICATION ------------------------------------------------------------------- Whereas. . If applicable Before me personally appeared said __________________ and acknowledged the foregoing instrument to be his free © 2008 Thomson/West.S. Application Number ___________. 20 ___. __________ of _____________. of __________. Executed this ________ day _________________________________________________. in consideration of the sum of ___________ dollars ($ ___ ).PLIREF-PATAPP 2 Exh. and other good and valuable consideration. as fully and entirely as the same would have been held by me had this assignment and sale not been made. title and interest in and to any and all Patents which may be granted therefore in the United States. of the entire right. and interest in and to the same. I/We. by these presents do sell. to the full and of the term for which said Patent may be granted. [ ] for which an application for a United States Patent was executed on _____. I/We. 2-3A (Cite as: PLIREF-PATAPP 2 Exh. and Whereas. for his sole use and behoof. Now. at State of ______ ) SS: County of ______ ) _____________ Signature _____________ Printed Name/Registration No. No Claim to Orig. assign and transfer unto said assignee the full and exclusive right to the said invention in the United States and the entire rights. I/We hereby authorize and request the Director of the U. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18. 2-3A FOR EDUCATIONAL USE ONLY How to Write Pat. the applicant(s). US Gov. hereafter referred to as applicant.. Patent and Trademark Office to issue said United States Patent to said assignee. have invented certain new and useful improvements in _________________________________________________________ [ ] for which an application for a United States Patent was filed on __________. title and interest in the same.

2-3A END OF DOCUMENT © 2008 Thomson/West. 2-3A) Page 2 act and deed this ________ day of _____ 20 ___. Works. Seal Note. 2-3A FOR EDUCATIONAL USE ONLY How to Write Pat. No Claim to Orig. This sample form is not an OMB officially approved form. Signature of all the inventors or assignees of record of the entire interest or their representative(s) are required. Application 2 Exh. Submit [ ] Total of _____ forms are submitted. This form offers a sample or suggested format for an assignment document.PLIREF-PATAPP 2 Exh. US Gov. 2-3A (Cite as: PLIREF-PATAPP 2 Exh. . PLIREF-PATAPP 2 Exh.

. No Claim to Orig. Works. 2-3B END OF DOCUMENT © 2008 Thomson/West. US Gov. 2-3B (Cite as: PLIREF-PATAPP 2 Exh. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18. 2-3B) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Application 2 Exh.PLIREF-PATAPP 2 Exh. April 2006 Chapter 2: Parts of a Patent Application *2EX-9 Exhibit 2-3B: Recordation Form Cover Sheet TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 2 Exh. 2-3B FOR EDUCATIONAL USE ONLY How to Write Pat.

For the purpose of this definition. 1. or to any concern which would not qualify as a small business concern or a non-profit organization. convey or license. No Claim to Orig. directly or indirectly.PLIREF-PATAPP 2 Exh. The number of employees of the business concern is the average over the fiscal year of the persons employed during each of the pay periods of the fiscal year. (2) a non-profit organization as defined under the Internal Revenue Code. (3) any non-profit scientific or educational organization qualified under the non-profit organization statute of any state of this country. 37 C. one concern controls or has power to control the other. 2-3C FOR EDUCATIONAL USE ONLY How to Write Pat. 121. conveyed or licensed. PLIREF-PATAPP 2 Exh. Application 2 Exh. 3. and is under no obligation under contract or law to assign. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18.F. does not exceed 500 persons and (2) which has not assigned. A "small business concern" is defined as: Any business concern (1) whose number of employees. granted. grant. (2) a small business concern or (3) a non-profit organization. [FNa1]. 2-3C (Cite as: PLIREF-PATAPP 2 Exh.9 and 13 C.R. part-time or temporary basis during the previous NSfiscal year of the concern.F.3-18. Employees are those persons employed on a full-time. or a third party or parties controls or has the power to control both. concerns are affiliates of each other when either. US Gov. including those of its affiliates. April 2006 Chapter 2: Parts of a Patent Application *2EX-11 Exhibit 2-3C: Definition of Small Entity Status 1 A "small entity" is defined in the federal patent law [FNa1] as an (1) independent inventor. or (4) any non-profit organization located in a foreign country which would qualify as a non-profit organization under the Internal Revenue Code or under the laws of any state were it located in this country. A non-profit organization is defined as: (1) a university or other institution of higher education located in any country. any rights in the invention to any person who could not be classified as an independent inventor if that person had made the invention. . 2-3C) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Works. 2-3C END OF DOCUMENT © 2008 Thomson/West. 2.R.

[ ] the patent identified above. concern or organization exists.9(c) for purposes of paying reduced fees under section 41(a) and (b) of Title 35. concern or organization is listed below.27(b)) .9(c) if that person had made the invention. Issue Date -------------------------------------------------------Applicant/Patentee: -------------------------------------------------------Invention: -------------------------------------------------------- As a below named inventor. . April 2006 Chapter 2: Parts of a Patent Application *2EX-13 Exhibit 2-4: Verified Statement Claiming Small Entity Status-. 2-4 (Cite as: PLIREF-PATAPP 2 Exh. Filing Date Patent No. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18. 2-4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh.9(e).Independent Inventor --------------------------------------------------------------------VERIFIED STATEMENT (DECLARATION) CLAIMING SMALL ENTITY Docket No. [ ] Each such person. No Claim to Orig. grant. US Gov. STATUS (37 CFR 1. United States Code. Each person. or licensed or am under an obligation under contract or law to assign.INDEPENDENT INVENTOR --------------------------------------------------------------------- Serial No. or license any rights in the invention is listed below: [ ] No such person. conveyed or licensed and am under no obligation under contract or law to assign. I have not assigned. convey. I hereby declare that I qualify as an independent inventor as defined in 37 CFR 1. "NOTE: Separate verified statements are required from each named person.27) © 2008 Thomson/West. to the Patent and Trademark Office with regard to the invention entitled above and described in: [ ] the specification to be filed herewith. or to any concern which would not qualify as a small business concern under 37 CFR 1. 2-4) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. granted. granted. Works. concern or organization having rights to the invention averring to their status as small entities (37 CFR 1. convey or license. [ ] the application identified above.9(d) or a nonprofit organization under 37 CFR 1. concern or organization to which I have assigned. grant. conveyed.PLIREF-PATAPP 2 Exh. any rights in the invention to any person who could not be classified as an independent inventor under 37 CFR 1.9(f) AND 1.

the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longer appropriate. notification of any change in status resulting in loss of entitlement to small entity status prior to paying.28(b)) I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information and behalf are believed to be true: and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment.PLIREF-PATAPP 2 Exh. in this application or patent. any patent issuing thereon. . or any patent to which this verified statement is directed. Application 2 Exh. or at the time of paying.S. US Gov. or both. DEPARTMENT OF COMMERCE *2EX-14 I acknowledge the duty to file. 2-4 (Cite as: PLIREF-PATAPP 2 Exh. NAME OF INVENTOR _______________ SIGNATURE OF INVENTOR ______________ NAME OF INVENTOR _______________ SIGNATURE OF INVENTOR ______________ NAME OF INVENTOR _______________ DATE: ______ DATE: ______ © 2008 Thomson/West. Works. 2-4) Page 2 FULL NAME ADDRESS ______________________________ ______________________________ [ ] Individual [ ] Small Business Concern ______________________________ ______________________________ [ ] Individual [ ] Small Business Concern ______________________________ ______________________________ [ ] Individual [ ] Small Business Concern ______________________________ ______________________________ [ ] Individual [ ] Small Business Concern [ ] Nonprofit Organization FULL NAME ADDRESS [ ] Nonprofit Organization FULL NAME ADDRESS [ ] Nonprofit Organization FULL NAME ADDRESS [ ] Nonprofit Organization ------------------------------------------------------------------------------- Copyright 1994 Legisoft P03/REV01 Patent and Trademark Office-U. and that such willful false statements may jeopardize the validity of the application. (37 CFR 1. 2-4 FOR EDUCATIONAL USE ONLY How to Write Pat. No Claim to Orig. under Section 1001 of Title 18 of the United States Code.

2-4 FOR EDUCATIONAL USE ONLY How to Write Pat. DEPARTMENT OF COMMERCE PLIREF-PATAPP 2 Exh. . 2-4 END OF DOCUMENT © 2008 Thomson/West.PLIREF-PATAPP 2 Exh. 2-4) Page 3 SIGNATURE OF INVENTOR ______________ NAME OF INVENTOR _______________ SIGNATURE OF INVENTOR ______________ NAME OF INVENTOR _______________ SIGNATURE OF INVENTOR ______________ NAME OF INVENTOR _______________ SIGNATURE OF INVENTOR ______________ NAME OF INVENTOR _______________ SIGNATURE OF INVENTOR ______________ NAME OF INVENTOR _______________ SIGNATURE OF INVENTOR ______________ NAME OF INVENTOR _______________ SIGNATURE OF INVENTOR ______________ NAME OF INVENTOR _______________ SIGNATURE OF INVENTOR ______________ DATE: ______ DATE: ______ DATE: DATE: ______ DATE: ______ DATE: ______ DATE: DATE: ______ -------------------------------------------------- Patent and Trademark Office-U.S. 2-4 (Cite as: PLIREF-PATAPP 2 Exh. No Claim to Orig. Application 2 Exh. Works. US Gov.

in that the number of employees of the concern. does not exceed 500 persons. and (2) concerns are affiliates of each other when either. Issue Date -------------------------------------------------------Applicant/Patentee: -------------------------------------------------------Invention: -------------------------------------------------------- I hereby declare that I am: [ ] the owner of the small business concern identified below: [ ] an official of the small business concern empowered to act on behalf of the concern identified below: NAME OF CONCERN: _________________________ ADDRESS OF CONCERN: ________________________ I hereby declare that the above-identified small business concern qualifies as a small business concern as defined in 13 CFR 121. including those of its affiliates. Works. April 2006 Chapter 2: Parts of a Patent Application *2EX-15 Exhibit 2-5: Verified Statement Claiming Small Entity Status--Small Business Concern ----------------------------------------------------------------------VERIFIED STATEMENT (DECLARATION) CLAIMING SMALL ENTITY Docket No. 2-5 (Cite as: PLIREF-PATAPP 2 Exh. one concern controls or has the power to control the other. STATUS (37 CFR 1. (1) the number of employees of the business concern is the average over the previous fiscal year of the concern of the persons employed on a full-time. part-time or temporary basis during each of the pay periods of the fiscal year.PLIREF-PATAPP 2 Exh.SMALL BUSINESS CONCERN ----------------------------------------------------------------------- Serial No. 2-5) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.3-18. US Gov. or a third party or parties controls or has the power to control both. Application 2 Exh. Filing Date Patent No. .9(f) AND 1. For purposes of this statement.27(c)) .9(d). Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18. United States Code. directly or indirectly. for purposes of paying reduced fees under Section 41(a) and (b) of Title 35. 2-5 FOR EDUCATIONAL USE ONLY How to Write Pat. No Claim to Orig. and reproduced in 37 CFR 1. I hereby declare that rights under contract or law have been conveyed to and remain with the small business concern identified above with regard to the above identified invention described in: © 2008 Thomson/West.

[ ] the application identified above. [ ] each such person. concern or organization exists. concern or organization having rights to the invention averring to their status as small entities. the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longer appropriate. grant. in this application or patent. or licensed or am under an obligation under contract or law to assign. concern or organization to which I have assigned. [ ] the patent identified above. .9(d) or a nonprofit organization under 37 CFR 1. who could not qualify as an independent inventor under 37 CFR 1.28(b)) © 2008 Thomson/West. (37 CFR 1. If the rights held by the above-identified small business concern are not exclusive.PLIREF-PATAPP 2 Exh.9(c) or by any concern which would not qualify as a small business concern under 37 CFR 1. 2-5 FOR EDUCATIONAL USE ONLY How to Write Pat. 2-5) Page 2 [ ] the specification filed herewith with title as listed above. concern or organization is listed below. (37 CFR 1.9(e). each individual concern or organization having rights to the invention is listed on the next page and no rights to the invention are held by any parson.27) I acknowledge the duty to file. or at the time of paying. Application 2 Exh. DEPARTMENT OF Legisoft COMMENCE *2EX-16 Each person. conveyed. ------------------------------------------------------------------------------Copyright 1994 P05/REV01 Patent and Trademark Office-U. Works. convey. No Claim to Orig. FULL NAME ADDRESS ______________________________ ______________________________ [ ] Individual [ ] Small Business Concern ______________________________ ______________________________ [ ] Individual [ ] Small Business Concern ______________________________ ______________________________ [ ] Individual [ ] Small Business Concern ______________________________ ______________________________ [ ] Individual [ ] Small Business Concern [ ] Nonprofit Organization FULL NAME ADDRESS [ ] Nonprofit Organization FULL NAME ADDRESS [ ] Nonprofit Organization FULL NAME ADDRESS [ ] Nonprofit Organization Separate verified statements are required from each named person. US Gov. notification of any change in status resulting in loss of entitlement to small entity status prior to paying.S. other than the inventor. granted. 2-5 (Cite as: PLIREF-PATAPP 2 Exh. or license any rights in the invention is listed below: [ ] no such person.

any patent issuing thereon. Works. or both. NAME OF PERSON SIGNING: TITLE OF PERSON SIGNING: OTHER THAN OWNER: ADDRESS OF PERSON SIGNING: ______________________ ______________________ SIGNATURE: ________________ DATE: ______ Patent and Trademark Office-U. DEPARTMENT OF COMMENCE PLIREF-PATAPP 2 Exh. and that such willful false statements may jeopardize the validity of the application. 2-5 (Cite as: PLIREF-PATAPP 2 Exh. under Section 1001 of Title 18 of the United States Code. or any patent to which this verified statement is directed.PLIREF-PATAPP 2 Exh.S. 2-5) Page 3 I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information and belief are believed to be true. . Application 2 Exh. 2-5 END OF DOCUMENT © 2008 Thomson/West. 2-5 FOR EDUCATIONAL USE ONLY How to Write Pat. and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by line or imprisonment. No Claim to Orig. US Gov.

2-6 (Cite as: PLIREF-PATAPP 2 Exh. Works. .C. 501(a) and 501(c)(3)) if Loc- © 2008 Thomson/West. US Gov.Nonprofit Organization ---------------------------------------------------------------------VERIFIED STATEMENT (DECLARATION) CLAIMING SMALL ENTITY Docket No STATUS (37 CFR 1. 2-6 FOR EDUCATIONAL USE ONLY How to Write Pat. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18. Issue Date -------------------------------------------------------Applicant/Patentee: -------------------------------------------------------Invention: -------------------------------------------------------- I hereby declare that I am an official empowered to act on behalf of the nonprofit organization identified below: NAME OF ORGANIZATION: ADDRESS OF ORGANIZATION.NONPROFIT ORGANIZATION ---------------------------------------------------------------------- Serial No.9(f) AND 1. April 2006 Chapter 2: Parts of a Patent Application *2EX-17 Exhibit 2-6: Verified Statement Claiming Small Entity Status-. Filing Date Patent No.27(d)) .S.C. 2-6) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. No Claim to Orig. _____________________ ______________________ _______________________ ______________________ _______________________ TYPE OF NONPROFIT ORGANIZATION: [ ] University or other institute of Higher Education [ ] Tax Exempt under Internal Revenue Service Code (26 U.PLIREF-PATAPP 2 Exh. 501(a) and 501(c)(3)) [ ] Nonprofit Scientific or Educational under Statute of State of The United States of America Name of State: Citation of Statute: [ ] Would Qualify as Tax Exempt under internal Revenue Service Code (26 U.S. Application 2 Exh.

granted. 2-6 (Cite as: PLIREF-PATAPP 2 Exh. conveyed.9(d) or a nonprofit organization under 37 CFR 1. . or licensed or am under an obligation under contract or law to assign. who could not qualify as an independent inventor under 37 CFR 1. concern or organization exists.9(a) ------------------------------------------------------------------------------Copyright 1994 P04/REV01 Patent and Trademark Office-U.9(c) or by any concern which would not qualify as a small business concern under 37 CFR 1. each individual. 2-6) Page 2 ated in The United States of America [ ] Would Qualify as Nonprofit Scientific or Educational under Statute of State of The United States of America if Located in The United States of America Name of State: Citation of Statute: I hereby declare that the above-identified nonprofit organization qualifies as a nonprofit organization as defined in 37 C. Application 2 Exh. No Claim to Orig. [ ] each such person. US Gov.S.F. I hereby declare that rights under contract or law have been conveyed to and remain with the nonprofit organization with regard to the above identified invention. concern or organization is listed below. DEPARTMENT OF Legisoft COMMENCE *2EX-18 Each person. If the rights held by the above-identified nonprofit organization are not exclusive. [ ] the patent identified above. 1. grent. or license any rights in the invention is listed below: [ ] no such person. FULL NAME ADDRESS ______________________________ ______________________________ [ ] Individual [ ] Small Business Concern ______________________________ ______________________________ [ ] Individual [ ] Small Business Concern ______________________________ ______________________________ [ ] Individual [ ] Small Business [ ] Nonprofit Organization FULL NAME ADDRESS [ ] Nonprofit Organization FULL NAME ADDRESS [ ] Nonprofit © 2008 Thomson/West. concern or organization having rights to the invention is listed on the next page and no rights to the invention are held by any person.R. 2-6 FOR EDUCATIONAL USE ONLY How to Write Pat. convey. other than the inventor.PLIREF-PATAPP 2 Exh. concern or organization to which I have assigned.9(e) for purposes of paying reduced fees to the United States Patent and Trademark Office regarding the invention described in: [ ] the specification to be filed herewith. [ ] the application identified above. Works.

notification of any change in status resulting in loss of entitlement to small entity status prior to paying. the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longer appropriate. any patent issuing thereon. concern or organization having rights to the invention averring to their status as small entities. or at the time of paying.28(b)) I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information and belief are believed to be true.27) I acknowledge the duty to file. or any patent to which this verified statement is directed. 2-6 END OF DOCUMENT © 2008 Thomson/West. NAME OF PERSON SIGNING: TITLE IN ORGANIZATION: ADDRESS OF PERSON SIGNING: ______________________ ______________________ SIGNATURE: _______________ DATE: _______ Patent and Trademark Office-U. 2-6) Page 3 Concern FULL NAME ADDRESS ______________________________ ______________________________ [ ] Individual [ ] Small Business Concern Organization [ ] Nonprofit Organization Separate verified statements are required from each named person. or both. .S. and that such willful false statements may jeopardize the validity of the application. (37 CFR 1. in this application or patent. (37 CFR 1. US Gov. under Section 1001 of Title 18 of the United States Code. 2-6 FOR EDUCATIONAL USE ONLY How to Write Pat. No Claim to Orig. Works. Application 2 Exh.PLIREF-PATAPP 2 Exh. 2-6 (Cite as: PLIREF-PATAPP 2 Exh. and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by line or imprisonment. DEPARTMENT OF COMMENCE PLIREF-PATAPP 2 Exh.

Aquariums and terrariums can be both educational and entertaining. No. uses a double walled. Works. This detracts seriously from the desired visual impression that the terrarium is actually submerged under water Other attempts at submerged terrariums. Terrestrial life forms are placed in the terrarium area surrounded by the annular aquarium. with convenient access provided to the inside of the terrarium. No.PLIREF-PATAPP 2 Exh. for example. terrariums have long allowed convenient viewing of terrestrial plants and animals of exotic origin. 2-7 FOR EDUCATIONAL USE ONLY How to Write Pat. capacially if the terrestrial life forms exhibited appear to be submerged under water. Rearrangement of the terrarium display and the cleaning of the terrarium are both major undertakings in such submerged terrariums. 4. it is visually interesting to see a bird appearing to fare well under water Prior art attempts at such terrarium-aquarium combinations. 296. annular aquarium.153 to Ledig. They allow marine plants and animals to be kept and viewed in a controlled environment. . although as a matter of fact. which maintains as air space underwater by clamping as inverted container under the water. Most terrestrial plants and animals cannot five under water. 2-7) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.aquarium Aquariums have been known for centuries. This can give the illusion of having. Pat. U.S. they are not located in the water in which live fish and the like are kept For example. SUMMARY This invention satisfies the above needs. a bird living under water. typical of such prior art combinations in that the terrarium is open to the atmosphere on the top. What is needed is a vivarium. for example. Likewise. comprising a terrarium which appears to be totally submerged in water in an aquarium. more specifically to a combination terrarium . Pat. Application 2 Exh. has the shortcoming that there is no convention access to the inside of the terrarium. A novel vivarium for the sustenance of both terrestrial and aquatic life is provided. No Claim to Orig. US Gov. However.499 to Leyvs. April 2006 Chapter 2: Parts of a Patent Application *2EX-19 Exhibit 2-7: Sample Patent TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE *2EX-22 VIVARIUM BACKGROUND This invention relates to a vivarium.204. For that reason it is visually stimulating and interesting to see terrestrial plants and animals displayed next to aquatic life forms.S. A preferred version of the vivarium of the present invention comprises: © 2008 Thomson/West. such as U. as shown is Ledig. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18. 2-7 (Cite as: PLIREF-PATAPP 2 Exh.

1. as least some of which are linked together by substantially transparent tubes. 6 is a perspective view of yes another preferred embodiment of the vivarium of the subject invention. A portion of the bottom wall inside at least one of the inner containers has at least one access opening therethrough such that the inside of the inner container is normally in fluid communication with the atmosphere. and a land animal kept in the terrarium could appear to be running through the water in the aquarium. FIG. 2 is a top plan view of the vivarium of FIG. for easy access into the inside of the terrarium through the access opening. The top of the outer side walls in higher than the top wall of the inner container.PLIREF-PATAPP 2 Exh. and FIG. such that the inner container is not in fluid communication with the outer container. Application 2 Exh. US Gov. 1. 4 is a front elevational view of the vivarium of FIG. Therefore a live fish kept in the aquarium could appear to be swimming through the air in the terrarium. There can also be multiple terrariums submerged in the aquarium. generally to be filled with water to a level above the top of the inner container. FIG. 2-7) Page 2 (a) a bottom wall. 2. e. and particularly FIGS. Works. 1. No Claim to Orig. Each inner container is for use as a terrarium. 2-7 (Cite as: PLIREF-PATAPP 2 Exh. To increase visual interest. 1 is an oblique elevational perspective view of a preferred embodiment of the vivarium of the subject invention.. 5 is a front elevational view of another preferred embodiment of the vivarium of the subject invention. © 2008 Thomson/West. or it can be equipped with a removable cover as is conventional in the aquarium art. substantially transparent inner side walls which in cooperation with the bottom wall form at least one inner container. to prevent the escape of the terrestrial animals kept in the terrarium. each inner container also having an enclosing top wall. 2-7 FOR EDUCATIONAL USE ONLY How to Write Pat. a vivarium 10 has a bottom wall 15. aspects and advantages of the present invention will become better understood with reference to the following description. FIG. substantially transparent outer side walls which in cooperation with the bottom wall form an outer container. DESCRIPTION The present invention is directed to a vivarium having a terrarium which appears to be totally submerged in an aquarium With reference to the drawings. legs. 3 is a cross-sectional view at line 2-3 of the vivarium of FIG. Preferably the vivariums further comprises supporting means. such tubes being in fluid communication with either the aquarium or the terrarium. substantially transparent outer side walls 20 cooperate with the bottom wall 15 to form a tank or outer container 25. Preferably there is a door which normally closes the access opening in the bottom wall. FIG. DRAWINGS These and other features. 1. and (c) upstanding. The space between the inner container and the outer container is used as an aquarium. The top of the outer container 25 can be open. (b) upstanding. the walls of the terrarium can be joined by substantially transparent tubes. and 3.g. appended claims. Upstanding. . and accompanying drawings where FIG. supporting the vivarium and spacing the bottom wall of the vivarium apart from the supporting surface. 2. as shown in FIG.

the door means 70 is a hinged grated door which is normally held in the closed position. and normally latched shut by latch 72. © 2008 Thomson/West. such as aquatic plants. so that it would be easy to work with arms and hands beneath the bottom of the vivarium 10. white mice. as is well known in the aquarium art. they need not be either substantially planer or vertical. 2-7 (Cite as: PLIREF-PATAPP 2 Exh. e. Accordingly. such that the inside of inner container 40 can conveniently be accessed from the bottom of the vivarium 10. the adhesive forming a seam 48. the door 70 can also be hinged to that it swivels sideways to open. for preventing ingress and egress to the inside of the inner container 40. etc. 1. The vivarium 10 need not be dismantled and the aquarium 60 need not be drained for performing the day to day chores of maintaining the terrarium. and other conventional aquarium exhibits. as shown in FIG. or of an inverted bowl. Through the access opening 65. The aquarium 60 is generally filled with water to a level sufficient to totally submerge the inner container 40. In the exemplary configuration show in FIG. as shown in FIG. US Gov. It could be filled with exhibits of terrestrial origin. or other suitable transparent material such as plastics.PLIREF-PATAPP 2 Exh. the outer container 25 can be formed to have a bowl shape. their presence is not absolutely necessary. and can serve both decorative and structural purposes. No Claim to Orig. snakes. 35 and 45 can be constructed of glass. Amphibian life forms. . has an access opening 65.g. live fish and other marine animals. 1. preferably the vivarium 10 has support means 75. the walls could also be curved. as shown in FIG. etc. and insects such as ants and spiders. is used as an aquarium 60. Although in is necessary that the side walls 20 and 35 be upstanding. etc. such as miniature landscapes. or it can be smaller The inside of the inner container is used as a terrarium 62. The top and bottom of the outer side walls can be capped with upper fringe 51 and lower fringe 52 respectively. as being formed of substantially continuous walls. A removable door means 70 normally closes the access opening 65. for supporting the vivarium. and through the access opening 65. 3. can also be kept in the aquarium 60. in an area located inside the inner container 40. a space 50 being formed between the inside of the outer container 25 and the outside of the inner container 40. The inner container 40 is sealed at the top by a top wall 45. The access opening 65 can be co-extensive with the entire bottom of the inner container 40. and can be joined together by conventional means such as by the use of a water resistant adhesive suitable for aquarium use. air breathing plants such as bonsai and other exotic plant species. Each inner container 40 can be formed in the shape of a globe.g. 20. The aquarium 60 and thus the water-filled space 50 can be populated with various aquatic life forms. legs. as in well known in the aquarium art. For example. 2-7) Page 3 Upstanding. the top of a table supporting the vivarium). with the seam 48 jointing edges of the walls. Alternatively. as shown in FIG. The bottom wall 15. with the inner and outer containers 25 and 40 being substantially seamless. To further facilitate access through the opening 65. birds. The inner container 40 and the outer container 25 are not in fluid communication. Alternatively. and air breathing animals or pets such as lizards. 3.g. Works. the exhibit within the terrarium 62 can conveniently be rearranged as often a desired The pets can also be fed and the terrarium 62 cleaned through the access opening 65. The walls could be substantially planer. Application 2 Exh. However. and for specing the bottom of the vivarium 10 apart from a supporting surface (e. The door 70 swings downwards to open. *2EX-23 These fringes can have an angle or changed shaped cross-section. hamsters. The door is hinged at hinges 71. newts. 6. frogs. substantially transparent inner side walls 35 cooperate with the bottom wall 15 to form as inner container 40. e. 6. 2-7 FOR EDUCATIONAL USE ONLY How to Write Pat. The outer container 25 and thus the space 50 between the inside of the outer container 25 and the outside of the inner container 40. these walls can have any desired shape and orientation. such as rocks and coral and ceramic figures. as is depicted in FIG. The walls 15.

all within the same aquarium 60. 1 and 2. Multiple terrariums. having substantially transparent walls. and makes can be kept in another. and marine animals such as live fish can swim through the passageway 115. and would appear to be travelling through water. 65 right next to aquatic plants and live fish. The rubes can also be of any shape. expecially where a controlled atmosphere within the terrarium is desired. limited only by creativity. such as by the use of water resistant adhesives suitable for aquarium construction. 1 and 2. but they are not so limited. cross-section. The inside of the dry tube 80 forms a passageway 95. namely a wet tube 100. having substantially transparent walls. the air pump for the aquarium 60 could also be used to blow fresh air into the terrarium 62 through an air tube 77. For example. Thus.PLIREF-PATAPP 2 Exh. namely a dry tube 80. © 2008 Thomson/West. the door means 70 could comprise a grated door. The dry tube 80 connects an opening 85 at one portion of the inner side walls 35. 2-7) Page 4 In use. US Gov. Incompatible exhibits can thus be displayed side by side as long as these terrariums are not interconnected. The tubes can be substantially straight and uniform in diameter. The dry tube 80 extends through the water in the aquarium 60. a tube can branch into two or more tube branches. a powered air-supply could be provided. The tube means 80 and 100 can be constructed of conventional transparent materials. Similarly. In fact it is preferable that it is not. which extends through the bottom of the inner container 40. Each of the terrariums would have its own access opening. Alternatively. such that the inside of the terrarium 62 is in fluid communication with the outside atmosphere. the vivarium can have tube means. and can be joined to the inner side walls by conventional means. Passageways can be provided through some of all of the terrariums for travel therethrough by the marine animals that are kept in the aquarium 60. each as described before. and air breathing pets can travel through the passageway 95. Referring to FIGS. and by suitability for use with the particular pets involved. Fish swimming through such passageways would appear to be swimming through the air in the terrarium. Also. are submerged in water of the aquarium 60. As shown in FIG. That is. to another opening 110 at another portion of the inner side walls 35. such as glass or plastics. configuration and contortion. The inside of the wet tube 100 forms a passageway 115. 1. No Claim to Orig. the vivarium 10 allows terrestrial life forms to be displayed as if they are living under and in water. which is in liquid communication with the aquarium 60. as shown in FIG. birds can be kept in one terrarium. The door means 70 need not be airtight. For example. The number of terrariums is limited generally by the sizes of the aquarium and the terrariums. as shown in the drawings herein. the vivarium 10 can have more than one terrarium 62 being submerged in the water of the aquarium 60 Each terrarium 62 is as described before. The air breathing pets can travel through such passageways. the passageway 115 is water-filled. FIG. 2-7 (Cite as: PLIREF-PATAPP 2 Exh. which allows air to flow in and out of the inner container 40. such passageways extending through the air space in the terrarium 62. 5. Application 2 Exh. . Similar passageways can also be provided for linking the various parts of the aquarium 60. and a rare worm collection can be kept in yet another adjacent terrarium. For example. passageways linking various parts of the terrarium 62 and extending through the water in the aquarium 60 can be provided. and the need for convenient access to each of the terrariums through the bottom of the vivarium *2EX-24 10. size. Works. The wet tube 100 extends through the air space inside the terrarium 62 (the inner container 40). The wet tube 100 connects an opening 105 at one portion of the inner side walls 35. 6 shows another preferred embodiment of the subject invention. as shown in FIG. again referring to FIOS. the passage way 95 is air-filled. 6 To enhance visual interest. which is in fluid communication with the terrarium 62. there can be tube means. such that the air breathing life forms inside the terrarium 62 would be supplied with the air needed. to another opening 90 at another portion of the inner side walls 35. 2-7 FOR EDUCATIONAL USE ONLY How to Write Pat. The terrariums are connected to each other by dry tubes 80.

the background exhibits in each terrarium can be different. A vivarium comprising: (a) a bottom wall. 2. the inside of the said at least one wet tube being in fluid communication with the space between the inner container and the outer container. the said at least one wet tube extending through the inside of the inner container. (c) upstanding. Passageways can also be provided through some or all of the terrariums for swimming therethrough by marine animals kept in the aquarium 60. within the general framework of (a) one or more terrariums submerged in an aquarium. even though only a maximum of two terrarium chambers are shown in each of the drawings. the space between the inner container and the outer container is adapted to for use as an aquarium. For example. the said at least one wet tube connecting an opening at one portion of the inner side walls. (c) upstanding. For example. The vivarium of claim 1.PLIREF-PATAPP 2 Exh. substantially transparent inner side walls which in cooperation with the bottom wall © 2008 Thomson/West. comprising a plurality of the wet tubes. No Claim to Orig. (b) upstanding. 2-7 FOR EDUCATIONAL USE ONLY How to Write Pat. comprising a plurality of the dry tubes. Although certain preferred embodiments of the present invention have been described. substantially transparent inner side walls which in cooperation with the bottom wall form a single inner container. The vivarium of claim 1. such that the inner container is not in fluid communication with the outer container. 5. the inside of the said at last one dry tube being in fluid communication with the inside of the inner container. US Gov. the inner container also having as enclosing top wall. and the inner container being adapted for use as a terrarium. and (d) at least one substantially transparent tube member forming a dry tube. 3. with the said at least one dry tube extending through the space between the inner container and the outer container. and (d) water-filled passageways passing through the air space in the terrarium. all of which are within the scope of the present invention. Again. further comprising at least one substantially transparent tube member forming a wet tube. (b) upstanding. 2-7 (Cite as: PLIREF-PATAPP 2 Exh. wherein the top of the outer side walls extend higher than the top wall of the inner container. . capable of being filled with water to a level above the top of the inner container. the spirit and scope of the invention is by no means restricted to what is described above. there is a very large number of permutations and combinations possible. Application 2 Exh. substantially transparent outer side walls which is cooperation with the bottom wall form an outer container. What we claim is: 1. A vivarium comprising: (a) a bottom wall. the number of terrariums could be much larger than two. 2-7) Page 5 such that the air-breathing pets have access to all of the terrariums. 4. (c) air-filled passageways passing through the water in the aquarium. Works. The vivarium of claim 2. the said at least one dry tube connecting an opening at one portion of the inner side walls to another opening at another portion of the inner side walls. a portion of the bottom wall inside the inner container having at least one access opening therethrough. substantially transparent outer side walls which in cooperation with the bottom wall form an outer container. the inside of the inner container being in fluid communication with the atmosphere. (b) access to the terrariums through openings in their bottom walls.

Works. and (e) at least one substantially transparent tube member forming a wet tube. Application 2 Exh. the space between each of the said at least two inner containers and the outer container is adapted for use as an aquarium. a portion of the bottom wall inside each of the said at least two inner containers having at least one access opening there-through. 2-7) Page 6 form at least two inner containers spaced apart from each other. The vivarium of claim 5. and (d) at least one substantially transparent tube member forming a dry tube. 9. wherein the inner containers are all in fluid communication with each other through the dry tubes. such that each said at least two inner container is not in fluid communication with the outer container. The vivarium of claim 6. The vivarium of claim 14. and each of the said at least two inner container being adapted for use as a terrarium. 2-7 END OF DOCUMENT © 2008 Thomson/West. 8. the said at least one wet tube connecting an opening at one portion of the inner side walls of one of the said at least two inner containers to another opening at another portion of the inner side walls of the same inner container. 2-7 (Cite as: PLIREF-PATAPP 2 Exh. comprising a plurality of the wet tubes. the inside of the said at least one wet tube being in fluid communication with the space between the said at least two inner containers and the outer container wherein the top of the outer side walls extend higher than the top wall of each of the said at least two inner containers. comprising a plurality of the dry tubes 7. US Gov. ***** PLIREF-PATAPP 2 Exh. the said at least one dry tube extending through the space between the said at least one inner containers and the outer container. the inside of each of the said at least two inner container being in fluid communication with the atmosphere. . the inside of the said at least one dry tube being in fluid communication with the insides of said at least two inner containers. at least one wet tube extending through each of two different inner containers. with the said at lease one wet tube extending through the same inner container. wherein there is at least one wet tube extending through each inner container. 2-7 FOR EDUCATIONAL USE ONLY How to Write Pat. the said at least one dry tube connecting an opening at a portion of the inner side walls of one of the said at least two inner containers to another opening at a portion of the inner side walls of another of the said at least two inner containers. No Claim to Orig. The vivarium of claim 5.PLIREF-PATAPP 2 Exh. each said at least two inner containers also having an enclosing top wall. capable of being filled with water to a level above the top of each of the said at least two inner containers. 6.

April 2006 Chapter 2: Parts of a Patent Application *2EX-25 Exhibit 2-8: Information Disclosure Statement by Applicant TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 2 Exh.PLIREF-PATAPP 2 Exh. 2-8 (Cite as: PLIREF-PATAPP 2 Exh. US Gov. No Claim to Orig. 2-8 END OF DOCUMENT © 2008 Thomson/West. Works. 2-8) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18. . Application 2 Exh. 2-8 FOR EDUCATIONAL USE ONLY How to Write Pat.

S. and (3) the principal purpose for which the information is used by the U. General Services.C. or his/her designee. 7.S. pursuant to the Patent Cooperation Treaty. 552a(m). under authority of 44 U. 2-9) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.C. Patent and Trademark Office may not be able to process and/or examine your submission. 552a). pursuant to 5 U. including disclosures to opposing counsel in the course of settlement negotiations.C. 5.S. as a routine use. 2-9 (Cite as: PLIREF-PATAPP 2 Exh. the U.C. as amended. pursuant to the requirements of the Act. April 2006 Chapter 2: Parts of a Patent Application *2EX-27 Exhibit 2-9: Utility Patent Application Transmittal TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE *2EX-28 Privacy Act Statement The Privacy Act of 1974 (P. If you do not furnish the requested information. A record in this system of records may be disclosed. as a routine use. Such disclosure shall be made in accordance with the GSA regulations govern- © 2008 Thomson/West. 2-9 FOR EDUCATIONAL USE ONLY How to Write Pat.C.S. as a routine use. 2904 and 2906. A record related to an International Application filed under the Patent Cooperation Treaty in this system of records may be disclosed. The information on this form will be treated confidentially to the extent allowed under the Freedom of Information Act (5 U. 218(c)). as a routine use. as a routine use. 2(b)(2). to the International Bureau of the World Intellectual Property Organization. to a contractor of the Agency having need for the information in order to perform a contract Recipients of information shall be required to comply with the requirements of the Privacy Act of 1974. Application 2 Exh. 181) and for review pursuant to the Atomic Energy Act (42 U. which may result in termination of proceedings or abandonment of the application or expiration of the patent. The information provided by you in this form will be subject to the following routine uses: 1.S. 552) and the Privacy Act (5 U. or administrative tribunal. to another federal agency for purposes of National Security review (35 U. Records from this system of records may be disclosed to the Department of Justice to determine whether disclosure of these records is required by the Freedom of Information Act.S. to a Member of Congress submitting a request involving an individual. 4.S. 6.PLIREF-PATAPP 2 Exh. No Claim to Orig. 93-579) requires that you be given certain information in connection with your submission of the attached form related to a patent application or patent Accordingly. A record in this system of records may be disclosed. 3. in the course of presenting evidence to a court magistrate.S. 2. as a routine use. to the Administrator. A record in this system of records may be disclosed. Works. Patent and Trademark Office is to process and/or examine your submission related to a patent application or patent. A record from this system of records may be disclosed. please be advised that: (1) the general authority for the collection of this information is 35 U.S. during an inspection of records conducted by GSA as part of that agency's responsibility to recommend improvements in records management practices and programs. (2) furnishing of the information solicited is voluntary.C.L.C. to whom the record pertains. US Gov. A record from this system of records may be disclosed. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18. . when the individual has requested assistance from the Member with respect to the subject matter of the record.

Further. 151. subject to the limitations of 37 CFR 1. as a routine use. .C. 2-9 END OF DOCUMENT © 2008 Thomson/West. and any other relevant (i. to the public after either publication of the application pursuant to 35 U.S. A record from this system of records may be disclosed. US Gov. 9. GSA or Commerce) directive. A record from this system of records may be disclosed.. 2-9) Page 2 ing inspection of records for this purpose. No Claim to Orig. as a routine use.PLIREF-PATAPP 2 Exh. PLIREF-PATAPP 2 Exh. or local law enforcement agency. if the USPTO becomes aware of a violation or potential violation of law or regulation. State. a record may be disclosed.C. as a routine use.S. Application 2 Exh.14. 2-9 FOR EDUCATIONAL USE ONLY How to Write Pat. Works. Such disclosure shall not be used to make determinations about individuals. 2-9 (Cite as: PLIREF-PATAPP 2 Exh. 122(b) or issuance of a patent pursuant to 35 U. an application open to public inspection or an issued patent. to a Federal. 8. to the public if the record was filed in an application which became abandoned or in which the proceedings were terminated and which application is referenced by either a published application.e.

S. during an inspection of records conducted by GSA as part of that agency's responsibility to recommend improvements in records management practices and programs. under authority of 44 U.C. Patent and Trademark Office may not be able to process and/or examine your submission.C. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18.L.S. A record in this system of records may be disclosed. pursuant to the requirements of the Act.C. April 2006 Chapter 2: Parts of a Patent Application *2EX-29 Exhibit 2-9A: Fee Transmittal for FY 2005 TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE *2EX-30 Privacy Act Statement The Privacy Act of 1974 (P. 93-579) requires that you be given certain information in connection with your submission of the attached form related to a patent application or patent. 2(b)(2).S.C. to another federal agency for purposes of National Security review (35 U. or administrative tribunal. pursuant to the Patent Cooperation Treaty.S. No Claim to Orig.S. to whom the record pertains. US Gov.C.C.PLIREF-PATAPP 2 Exh. A record in this system of records may be disclosed as a routine use. A record from this system of records may be disclosed. General Services. 181) and for review pursuant to the Atomic Energy Act (42 U. as a routine use.S. 2-9A FOR EDUCATIONAL USE ONLY How to Write Pat. or his/her designee. magistrate. 5. 4. 6. to a Member of Congress submitting a request involving an individual. which may result in termination of proceedings or abandonment of the application or expiration of the patent. and (3) the principal purpose for which the information is used by the U. as a routine use. as a routine use. The Information on this form will be treated confidentially to the extent allowed under the Freedom of Information Act (5 U. Works.C. to the International Bureau of the World Intellectual Property Organization. 2. including disclosures to opposing counsel in the course of settlement negotiations 3. 2-9A (Cite as: PLIREF-PATAPP 2 Exh. to the Administrator. 552) and the Privacy Act (5 U. A record related to an International Application filed under the Patent Cooperation Treaty in this system of records may be disclosed. 552a(m). when the individual has requested assistance from the Member with respect to the subject matter of the record. in the course of presenting evidence to a court. The information provided by you in this form will be subject to the following routine uses: 1. pursuant to 5 U. Accordingly. as a routine use. A record in this system of records may be disclosed. the U. (2) furnishing of the information solicited is voluntary. as amended. .S.S. A record from this system of records may be disclosed. 7. 552a).S. 218(c)). to a contractor of the Agency having need for the information in order to perform a contract Recipients of information shall be required to comply with the requirements of the Privacy Act of 1974. as a routine use. Patent and Trademark Office is to process and/or examine your submission related to a patent application or patent. please be advised that: (1) the general authority for the collection of this information is 35 U. Such disclosure shall be made in accordance with the GSA regulations govern- © 2008 Thomson/West. Application 2 Exh. 2904 and 2906. 2-9A) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. If you do not furnish the requested information. Records from this system of records may be disclosed to the Department of Justice to determine whether disclosure of these records is required by the Freedom of information Act.

14. 9.C. Works.e. Further. No Claim to Orig. as a routine use. PLIREF-PATAPP 2 Exh.S. 2-9A FOR EDUCATIONAL USE ONLY How to Write Pat. to the public if the record was filed in an application which became abandoned or in which the proceedings were terminated and which application is referenced by either a published application. 2-9A) Page 2 ing inspection of records for this purpose. 2-9A END OF DOCUMENT © 2008 Thomson/West. and any other relevant (i. 8.C. . an application open to public inspection or an issued patent. GSA or Commerce) directive. Such disclosure shall not be used to make determinations about individuals. a record may be disclosed.PLIREF-PATAPP 2 Exh. 151. as a routine use. US Gov. Application 2 Exh. A record from this system of records may be disclosed. subject to the limitations of 37 CFR 1. A record from this system of records may be disclosed. if the USPTO becomes aware of a violation or potential violation of law or regulation. to the public after either publication of the application pursuant to 35 U. State. 2-9A (Cite as: PLIREF-PATAPP 2 Exh. as a routine use.S.. or local law enforcement agency. 122(b) or issuance of a patent pursuant to 35 U. to a Federal.

PLIREF-PATAPP 2 Exh. of Declaration of Power of Assignment Fee Enclosed: Amount Pages ___ Claims ___ Sheets ___ Attorney ___ PLIREF-PATAPP 2 Exh. US Gov. of Drawings: No. No Claim to Orig. Works. Application 2 Exh. 2-10 END OF DOCUMENT © 2008 Thomson/West. . Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18. ______________ Filing Date ____________ • • • • • • • • • • Specification: No. 2-10 FOR EDUCATIONAL USE ONLY How to Write Pat. April 2006 Chapter 2: Parts of a Patent Application *2EX-31 Exhibit 2-10: Postcard The following papers were received in the United States Patent and Trademark Office: Applicant: ___________ Attorney: _____________ Title of Invention: _________________________ Serial No. 2-10 (Cite as: PLIREF-PATAPP 2 Exh. 2-10) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. of Claims: No.

Application 2 Exh. April 2006 Chapter 2: Parts of a Patent Application *2EX-33 Exhibit 2-11: Express Mail Certificate "Express Mail" mailing label No. 20231 _______________________ (Name of person mailing documents) _______________________ (Signature of person mailing documents) PLIREF-PATAPP 2 Exh.C. 2-11 FOR EDUCATIONAL USE ONLY How to Write Pat. .10 on the date indicated above and such envelope is addressed to the Commissioner of Patents and Trademarks.R. Washington. 1. __________ Date of Deposit: ___________________ I hereby certify that the following documents: _______________________________________________________________________________ _______________________________________________________________________________ _______________________________________________________________________________ _______________________________________________________________________________ _______________________________________________________________________________ _______________________________________________________________________________ _______________________________________________________________________________ _______________________________________________________________________________ _______________________________________________________________________________ _______________________________________________________________________________ are being deposited in a single envelope with the United States Postal Service "Express Mail Post Office Addressee" service under 37 C. US Gov. 2-11 END OF DOCUMENT © 2008 Thomson/West. 2-11) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. D. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18.F. No Claim to Orig.PLIREF-PATAPP 2 Exh. Works. 2-11 (Cite as: PLIREF-PATAPP 2 Exh.

INCLUDING CHECK NUMBER. . PRELIMINARY AMENDMENT. April 2006 Chapter 2: Parts of a Patent Application *2EX-35 Exhibit 2-12: Checklist for Mailing Patent Applications INSTRUCTIONS: EVERY BOX MUST BE INITIALED OR LABELED "N/A" (NOT APPLICABLE) FOR EVERY APPLICATION. 2-12) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. NUMBER OF PAGES. [ ] COVER SHEET [ ] FEES CORRECTLY CALCULATED [ ] DEPOSIT ACCOUNT AUTHORIZATION INCLUDED [ ] CUSTOMER NUMBER INCLUDED [ ] CHECK SIGNED BY ATTORNEY (SAME AMOUNT AS FEE CALCULATION) [ ] ASSIGNMENT PRESENT [ ] RECORDATION COVER SHEET [ ] EXECUTED ON SAME DATE AS DECLARATION [ ] TITLE MATCHES APPLICATION TITLE [ ] ASSIGNMENT FILING FEE INCLUDED [ ] DECLARATION OR COMBINED DECLARATION/POWER OF ATTORNEY [ ] ALL ADDRESSES PRESENT [ ] ALL INVENTORS SIGNED AND DATED [ ] TITLE MATCHES APPLICATION TITLE [ ] CUSTOMER NUMBER INCLUDED [ ] POWER OF ATTORNEY BY CORPORATION [ ] EXECUTED BY CORPORATION WHEN ASSIGNED BY APPLICANT [ ] CUSTOMER NUMBER INCLUDED [ ] INFORMATION DISCLOSURE STATEMENT PROVIDED [ ] OFFICE COPIES OF DOCUMENTS IN FILE [ ] WORD "PRIOR" DELETED (BOTH PLACES) © 2008 Thomson/West. No Claim to Orig. 2-12 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 2 Exh. 2-12 (Cite as: PLIREF-PATAPP 2 Exh. US Gov.PLIREF-PATAPP 2 Exh. AND INFORMATION DISCLOSURE STATEMENT. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 18. [ ] SPECIFICATION AND CLAIMS PRESENT (NOT NEEDED FOR FWC) [ ] ALL PAGES PRESENT [ ] ALL PAGES NUMBERED CORRECTLY [ ] ABSTRACT PRESENT [ ] CLAIMS NUMBERED CONSECUTIVELY [ ] DRAWINGS PRESENT [ ] DRAWINGS HAVE FIGURE NUMBERS [ ] DRAWING NUMBERS CORRESPOND TO FIGURE NUMBERS IN SPECIFICATION [ ] POSTCARD PREPARED WITH ALL INFORMATION. Works.

PLIREF-PATAPP 2 Exh. Works. US Gov. . 2-12 END OF DOCUMENT © 2008 Thomson/West. 2-12 FOR EDUCATIONAL USE ONLY How to Write Pat. 2-12 (Cite as: PLIREF-PATAPP 2 Exh. Application 2 Exh. No Claim to Orig. 2-12) Page 2 [ ] ALL DOCUMENTS ENCLOSED [ ] TITLE MATCHES APPLICATION TITLE [ ] SIGNED BY ATTORNEY [ ] EXPRESS MAIL PROPERLY DONE [ ] COPIES OF PAPERS FILED BEING SENT TO CLIENT [ ] DOCKETING NOTIFIED OF FILING PLIREF-PATAPP 2 Exh.

S. (8) Eliminates the possibility of losing applications en route to the Patent Office. national stage applications under 35 U. (6) Allows online payment of fees.S. § 371. including the USPTO assigned application serial number and the receipt date. EFS can be used for continuation.1 (Cite as: PLIREF-PATAPP s 2A. divisional. Electronic filing of patent applications has many advantages. thereby saving the time and effort required to deal with an incomplete application. *2A-3 (9) Allows for a "paperless" office. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. (3) The electronic submission is automatically validated for completeness against USPTO business rules. No Claim to Orig. Works.1 END OF DOCUMENT © 2008 Thomson/West. including: (1) Almost twenty-four-hours-a-day. (2) An electronic acknowledgment receipt is immediately issued upon a successful filing. seven-days-a-week access to the USPTO filing window.1 How to Write Pat.C. Thus. design. which is likely to be the filing date. and for U.1) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. since the data submitted electronically is the data that the USPTO publishes. US Gov. (10) Allows online collaboration among professionals worldwide. (5) Eliminates charges for express mail and couriers. (4) EFS users potentially have greater control over the accuracy of pre-grant publications.1 Introduction The Patent Office Electronic Filing System (EFS) is available for filing utility. . and continuation-in-part applications. and provisional applications. October 2006 Chapter 2A: Electronic Filing in the Patent Office *2A-2 § 2A.PLIREF-PATAPP § 2A. there is very little reason not to file a patent application electronically. Application s 2A. PLIREF-PATAPP s 2A. The acknowledgment receipt is equivalent to a postcard receipt. (7) Provides immediate access to the PAIR system.

Works. PLIREF-PATAPP s 2A. and other formal papers.2 Overview of Electronic Filing The basic steps to file electronically are: (1) Obtain the requisite hardware and software. US Gov. (4) Scan drawings. (2) Obtain authorization from the Patent Office for electronic filing to use secure filing. and (5) Transmit the submission package to the Patent Office.2 How to Write Pat.2 END OF DOCUMENT © 2008 Thomson/West. October 2006 Chapter 2A: Electronic Filing in the Patent Office *2A-3 § 2A. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Application s 2A. declarations.2) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.PLIREF-PATAPP § 2A. (3) Author the patent documents. No Claim to Orig.2 (Cite as: PLIREF-PATAPP s 2A. .

3 END OF DOCUMENT © 2008 Thomson/West. pro se applicants.3 How to Write Pat. Unregistered filers are everyone else.6). Works. including attorneys. US Gov.3 (Cite as: PLIREF-PATAPP s 2A. secretaries. . No Claim to Orig.PLIREF-PATAPP § 2A. October 2006 Chapter 2A: Electronic Filing in the Patent Office *2A-3 § 2A. There are two types of filers: registered filers and unregistered filers. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Registered filers are those who obtain a digital certificate in advance from the USPTO (see § 2A. and paralegals. patent agents.3 Who Can Electronically File Anyone can electronically file. PLIREF-PATAPP s 2A. Application s 2A.3) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.

§ 371. including amendments. Certain documents cannot be filed electronically. provisional.C. Board of Appeals documents. reexamination and reissue applications. Works.4 What Can Be Electronically Filed New patent applications can be electronically filed.4 (Cite as: PLIREF-PATAPP s 2A. PLIREF-PATAPP s 2A. and national stage applications under 35 U. foreign references. . computer readable format (CRF) biosequence listings can be included with the application filing. and extension of time requests.4 END OF DOCUMENT © 2008 Thomson/West. filing fees. October 2006 Chapter 2A: Electronic Filing in the Patent Office *2A-3 § 2A. Follow-on submissions associated with an application *2A-4 can be electronically filed.PLIREF-PATAPP § 2A.S. These are utility.4 How to Write Pat. nonpatent literature. These include new plant applications and color drawings for plant applications. Application s 2A. Also. and secrecy order applications and/or documents. petition fees. Information Disclosure Statements. petitions. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. design. US Gov. No Claim to Orig.4) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.

Application s 2A. PDF writers that have been tested by the USPTO are i. US Gov. A PDF (portable document format) writer is required because the documents need to be submitted to the USPTO as PDF files in version 1. Firewalls must not strip packet header content.5. g.5. and layout of any source document. Microsoft Java Virtual Machine (MSJVM).apple. . currently at http://www. regardless of the application and platform used to create it.3. images. Netscape Navigator 7. Windows OSX 10. Macintosh--Apple JRE 1. TLS--Transport Layer Security (TLS is an upgrade of SSL security protocol) *2A-5 e. or any future Microsoft software ii. Open Office (freeware) iii.0.jsp f.gov/ebc/portal/efs/tutorials_java.com/j2se/1.x.0_06 (SSL and TLS) http:// java. it is acceptable to set an option for "prompt.sun. October 2006 Chapter 2A: Electronic Filing in the Patent Office *2A-4 § 2A.com/downloads/macosx/apple/javaupdate142.htm. SSL--Secure Sockets Layer ii.0_05 http:// www. c. or Linux RedHat 9. Browser settings must: • Accept first. One of the following operating systems is needed: Windows 2000 and XP.5 and 6. d. which is not included with Windows XP SP1a.5. Workstations must run a supported version of Java Runtime Environment (JRE) software.jsp iii. This format preserves the fonts.uspto.0. Adobe Writer (commercial) ii. and Mozilla 1.5) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.5 Hardware and Software Required EFS hardware and software requirements and settings are as follows: a.0/download. No Claim to Orig.sun.0_05 http://java.7.5 (Cite as: PLIREF-PATAPP s 2A. Linux--JRE 1. graphics. Networks infrastructures must allow communication via HTTPS/SSLv3 or TLSv1 i. Windows XP SP2. Windows Server™ 2003." A list of settings for different types of browsers is available on the USPTO website. The EFS supports the following browsers: Internet Explorer 5.6.html iv.1 to 1.5 How to Write Pat.5.0. Works.and second-party cookies • Allow per-session cookies • Enable active scripting • Enable scripting of Java applets • Accept entrust security applets • Disable "warn me before accepting a cookie" With some browsers. Apple Safari 2. The browser must support HTML frames.4.5. Easy Office (adware) © 2008 Thomson/West. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.PLIREF-PATAPP § 2A. Windows--Sun JRE 1.com/j2se/1. b. such as: i.0/download.

Otherwise the USPTO rejects *2A-6 the document. CutePDF (freeware) v. h. US Gov.5 END OF DOCUMENT © 2008 Thomson/West. Primo PDF (freeware) vii. PDF 995 (adware) vi.5 (Cite as: PLIREF-PATAPP s 2A. Adobe Reader 7. . To accomplish embedding with Adobe Acrobat Professional. Application s 2A.7 for optimal performance) for filling in the USPTO online forms (such as the application data sheet and IDS forms). Amyuni PDF Converter Pro (commercial) viii.0. ABXPDF writer (available free from the USPTO) A problem that arises with creation of PDF files is that all fonts used must be embedded. A program that automatically embeds fonts. PLIREF-PATAPP s 2A. a complicated series of steps and settings must be implemented. is preferred. No Claim to Orig.5 How to Write Pat. such as ABXPDF writer or CutePDF.5) FOR EDUCATIONAL USE ONLY Page 2 iv.PLIREF-PATAPP § 2A. Works.0 is required (preferably version 7.

A customer number is issued for each entity such as a law firm or corporate patent department.6 (Cite as: PLIREF-PATAPP s 2A. October 2006 Chapter 2A: Electronic Filing in the Patent Office *2A-6 § 2A.PLIREF-PATAPP § 2A. (2) Generate a high-level security digital certificate. the entire application has to be submitted in one online session.6 Obtaining a Digital Certificate A preferred first step to using the EFS is to obtain the appropriate authorization and password from the Patent Office to receive a high-level security digital certificate. The certificate action form must be notarized and mailed or overnighted with the original *2A-7 signature (a fax or copy is not acceptable) to Mail Stop EBC. Box 1450. Because of its immediate availability and the ability to avoid following the prolix procedures necessary to obtain a full security certificate. The USPTO advises that high-level certificates are preferred for all filings. USPTO Form PTO-2042 (PAIR access form) from the USPTO website. Further. the USPTO registration number must be associated with the entity's customer number. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.O. Form PTO/ SB/125A is used to obtain a customer number and can be obtained from the USPTO website. The EFS contains a built-in low-level security system that does not require a password.) The steps needed to obtain high-level security are: (1) Obtain a customer number from the Patent Office. an authorization code (sent by e-mail) and a reference number (sent by regular mail).6) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. US Gov. (As explained below.6 END OF DOCUMENT © 2008 Thomson/West. there is an obvious advantage to the lowlevel security procedure. You can also receive your reference number by calling the Electronic Business Center at 1-866-217-9197. Alexandria. PLIREF-PATAPP s 2A. Commissioner for Patents. After approving the high-level security digital certificate application. P. The digital certificate is issued separately to each individual. or update an existing customer number. you cannot save an application for later completion. Works. The USPTO gives the applicant the option of using a low-level security process instead. For a registered attorney or patent agent. a low-level security filing can be made. if circumstances require faster action. Application s 2A. This process takes only a few days to complete. VA 22313-1450. very little authentication of the sender takes place during a low-level security filing. No Claim to Orig. the USPTO sends two codes. The foregoing procedure will not work if the deadline to file an application is short. A digital certificate can be obtained by downloading a certificate action form.6 How to Write Pat. . Only those individuals associated with a customer number can be issued a high-level security digital certificate. When using this shortcut.

The file name--including ".pdf". Only single-layer documents can be submitted. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. and cannot use brackets and commas. • Page size is not 8 1/2 x 11 inches or A4 • Nonlicensed fonts © 2008 Thomson/West.can be up to 256 characters long. but the underscore character "___" is acceptable. multipage objects.7) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. . Larger pages need to be reduced *2A-8 to 8 1/2 x 11 inches. There can be no spaces in the PDF file name. The last four characters must be ". For example. Works. a-z. The application documents submitted must be self-contained. For multidocument PDF files. viruses. Application s 2A.7 (Cite as: PLIREF-PATAPP s 2A. All PDF documents must be free of executables. the typical patent filing contains one document with the specification.7 How to Write Pat. It is *2A-9 wise to pre-check the documents to be certain none of these errors is present. The following are possible error messages that can be received when the PDF files are submitted to the USPTO. Files with malicious content will be deleted by the USPTO. The USPTO specifies the file naming conventions that can be used.PLIREF-PATAPP § 2A. Also. attachments. PDF file layers are not permitted. The format of the application must be standard 8 1/2 x 11 inches or A4 (21 x 29. there can be no dependencies on external files or resources. it is necessary that each document section begin on a new page. A multidocument PDF is a single file that contains more than one document description. any paper documents are converted to an electronic document by scanning the document into a PDF format. the application is prepared in the normal way using any word processing program. File sizes are limited to 25MB. and abstract sections separately described when filing. before filing.5 for a list of available PDF writers). For files larger than that size. Then. Electronic documents are printed into PDF format and saved. October 2006 Chapter 2A: Electronic Filing in the Patent Office *2A-7 § 2A.7 Preparing the Application for Electronic Filing To file an application using the EFS. and when submitted to the USPTO. Documents with multiple layers must be flattened prior to submission. or other malicious content. page ranges must be entered for each section. Also. divide them into smaller files. or 0-9. No 3D models. US Gov. Spaces are permitted in the file path.7 cm). claims. No password-protected or encrypted PDF files are permitted. No Claim to Orig. or commenting or reviewing features can be in the document.pdf" -. The file names must start with A-Z. All fonts must be embedded to ensure that they travel with the document and must be licensed and legally embeddable. worms. invisible layers will be lost when processed by the USPTO. the application is "printed" to PDF format for electronic uploading to the USPTO (see § 2A. generally while converting to PDF.

1) • PDF containing OLE (object linking and embedding) files • Malicious and virus embedded files • Not a PDF file type • File size over 25MB (except USPTO fillable forms) PLIREF-PATAPP s 2A.PLIREF-PATAPP § 2A. US Gov. No Claim to Orig.7 END OF DOCUMENT © 2008 Thomson/West. .7 (Cite as: PLIREF-PATAPP s 2A. Works. Application s 2A.7 How to Write Pat.7) FOR EDUCATIONAL USE ONLY Page 2 • An application data sheet or IDS is attached that is not an USPTO fillable form • An application data sheet or IDS fillable form is missing data from key fields • Two or more files with the same name • Secure file (password encrypted) • Nonembedded fonts • Any version of PDF that is not supported (below 1.

in general. drawings are scanned directly into PDF files. black and white is called bitmap mode. or darker areas.PLIREF-PATAPP § 2A. A problem arises when the drawing contains shading. such as Adobe Photoshop. Choices for converting to bitmap may include diffusion dither.8) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. PLIREF-PATAPP s 2A. with unpredictable results. Typically. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. 50% threshold. these images are converted to black-and-white format. Scanner software can be used to save the image in black-and-white format (not grayscale). the file can then be brought into an image-processing program. If desired. No Claim to Orig. It is still best to pre-convert figures to black and white. Works. in order to retain complete control over the figure. however. since that size prints easily in the required margins. One unfortunate characteristic of a diffusion dither converted file. October 2006 Chapter 2A: Electronic Filing in the Patent Office *2A-9 § 2A.8 END OF DOCUMENT © 2008 Thomson/West. A directly produced file may be of greater quality. Application s 2A. There are two techniques available for preparing a drawing: (1) scan the drawing. This results in large files and correspondingly long transmission times. US Gov. and halftone screen. diffusion dither gives the best result for pictures. 5 x 7 inches. The USPTO does not consider color. In some programs. pattern dither. It is acceptable to crop to. for example. Centering is not necessary. pictures. (2) produce the file directly from a graphics application. for touchup and revision.8 (Cite as: PLIREF-PATAPP s 2A. but.8 How to Write Pat. . Since grayscale mode is not supported. Some experimentation is necessary. is that it is relatively uncompressible. The USPTO recommends that drawings be submitted as 300 dpi. such as Adobe Photoshop.8 Preparing the Drawings for Electronic Filing The drawings must be prepared for electronic filing before they are submitted. as that is handled at the USPTO. Further file size reduction can be *2A-10 made by cropping the image so that unnecessary white space is removed.

October 2006 Chapter 2A: Electronic Filing in the Patent Office *2A-10 § 2A.9) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.9 Preparing Additional Parts After preparing the specification and drawings. Works.9 How to Write Pat.9 (Cite as: PLIREF-PATAPP s 2A. These can be treated like other paper documents such as drawings--scanned with a scanner to create a PDF file. declaration and any power of attorney. US Gov. the next step is to prepare the formal papers.PLIREF-PATAPP § 2A. PLIREF-PATAPP s 2A. i.e. No Claim to Orig. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. .9 END OF DOCUMENT © 2008 Thomson/West. Application s 2A.

since the acknowledgment receipt fits the documents filed. This must include the application (including at least one claim) and the drawings. Attach and describe the documents to be filed. 4. The minimum requirements for the application data sheet are the title of the invention. See Exhibit 2A-1 for a simulated acknowledgement receipt.10 Filing the Application This section discusses how to file the application. Submit any assignment of ownership documents. the first and last name of at least one inventor. This is generally not used. and power of attorney documents. October 2006 Chapter 2A: Electronic Filing in the Patent Office *2A-10 § 2A. It is not an official filing receipt. The EFS automatically generates on screen an acknowledgement receipt. *2A-11 and a customer number or correspondence address. Paying later incurs additional fees. 1. but not mandatory.S. each document section must begin on a new page and page ranges must be entered for each section.11 and 2A. if any. The application can be in multiple files. This is available at the USPTO website. If a multidocument file is submitted (a single file that contains more than one document description). Visa. including page counts. 6. A disadvantage of credit cards is that it is not possible to charge underpayments to the card. Discover. The document lists what is being electronically filed. § 371 national stage filing. It serves as evidence of receipt similar to a postcard. Payment can be made from a USPTO deposit account. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Works. or obtain credit for overpayments. Calculate the filing fee. The following steps are performed online: 2. and EFS ID. Fill out the application data sheet (ADS).10 (Cite as: PLIREF-PATAPP s 2A. No Claim to Orig. by electronic funds transfer.PLIREF-PATAPP § 2A. An underpayment may jeopardize a filing date for a 35 U. or elect to pay later. or MasterCard). 7. or credit card (American Express. namely: • Specification • Claims • Abstract 3.12.10) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. information disclosure statements. The same screen also states the total fees due for the filing. Pay the fees. The first step is done offline. © 2008 Thomson/West. 5. The specification needs to be broken out into appropriate sections when filing.10 FOR EDUCATIONAL USE ONLY How to Write Pat. . This acknowledgement *2A-12 receipt evidences receipt on the noted date by the USPTO of the indicated documents as characterized by the applicant. Application s 2A. 8. The EFS automatically generates on screen an application number. as described in MPEP 503. US Gov. where applicable. confirmation number.C. which is done automatically on a fee calculator form that appears while electronically filing. ADI is preferred. Optionally a transmittal letter (PTO/SB/21) can be included with the filing. This is done offline using the free Adobe Reader 7 program. See §§ 2A. "Submit" the application.

• The tabs allow users to move forward and backward to screens already visited. • PDF files receiving a warning notice allow you to continue. you must click Continue to save those changes -.PLIREF-PATAPP § 2A. Application s 2A. If the tabs are used to go back and make changes.if you simply use the tab to go forward. • There is a difference between cancel and logout (cancel does not logout registered eFilers). • PDF files receiving an error notice must be removed.10 END OF DOCUMENT © 2008 Thomson/West.10 FOR EDUCATIONAL USE ONLY How to Write Pat. . the changes will be lost.10 (Cite as: PLIREF-PATAPP s 2A. *2A-13 • Page-level validation messages are displayed at the top of the page and also below the corresponding field. • Asterisks (*) represent required fields. • The tab key can be used to move from field to field. bear in mind: • The "continue" buttons must be used to go forward and to save your information. No Claim to Orig. US Gov. Works." An EFS electronic ID is generated that needs to be printed or saved for later use when completing the filing. PLIREF-PATAPP s 2A. • The section tabs (not the browser buttons) are used to go back and review or make changes. The submission is saved for up to four days. After four days. it is possible to interrupt the process by choosing "Save for Later Submission.10) Page 2 With a digital certificate. When navigating the EFS. saved files are deleted by the USPTO.

11) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. PLIREF-PATAPP s 2A.11 END OF DOCUMENT © 2008 Thomson/West. Using these forms helps to minimize rework and to improve data accuracy by the USPTO.11 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 2A. These include the information disclosure statement forms and the ADS. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. US Gov. No Claim to Orig. because the USPTO extracts data directly out of Form-Fillable PDFs.11 Using USPTO Fillable Forms The USPTO website has Form-Fillable PDFs that are fillable offline. .PLIREF-PATAPP § 2A. Works. October 2006 Chapter 2A: Electronic Filing in the Patent Office *2A-13 § 2A.11 (Cite as: PLIREF-PATAPP s 2A.

PLIREF-PATAPP s 2A. No Claim to Orig. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. U.12) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. If listing in numerical order is desired.12 FOR EDUCATIONAL USE ONLY How to Write Pat.PLIREF-PATAPP § 2A. patent documents need not be submitted. Application s 2A. Nonpatent literature and foreign patents need to be scanned and provided as PDF files.12 END OF DOCUMENT © 2008 Thomson/West. then careful planning is required.S. Use USPTO Form SB08a. October 2006 Chapter 2A: Electronic Filing in the Patent Office *2A-13 § 2A. US Gov.12 Preparing Electronic Information Disclosure Statements The EFS allows you to submit an electronic Information Disclosure Statement (e-IDS). The procedure for preparing the e-IDS is straightforward.12 (Cite as: PLIREF-PATAPP s 2A. An advantage of an e-IDS is significant savings in copying and mailing costs. The order of the entered references cannot be altered. . Works.

13) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.13 END OF DOCUMENT © 2008 Thomson/West. Assignment documents can be scanned in PDF or TIFF files. US Gov. No Claim to Orig. Works. PLIREF-PATAPP s 2A.13 Electronic Filing of Assignments It is possible to scan assignment documents (and other documents affecting title) and attach these to a submission with an electronically prepared cover sheet.PLIREF-PATAPP § 2A. Application s 2A.13 FOR EDUCATIONAL USE ONLY How to Write Pat. The form is *2A-14 available on line at http://epas.uspto.gov. and the data from the form is automatically saved by the USPTO. Preferably this is done after a serial number is recorded.13 (Cite as: PLIREF-PATAPP s 2A. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. . October 2006 Chapter 2A: Electronic Filing in the Patent Office *2A-13 § 2A.

No. Smith/ John T. Smith. the signature. 11111 PLIREF-PATAPP s 2A. The person signing the correspondence must personally insert his or her electronic signature with a single forward slash mark before. Smith *2A-15 An example of an EFS signature of a person acting in a representative capacity is as follows: /John T. or legal name be used. although the Patent Office suggests that such a name be used. The following are the requirements for signing such submissions: 1.14 FOR EDUCATIONAL USE ONLY How to Write Pat.14 (Cite as: PLIREF-PATAPP s 2A. 4. 2. The person inserting an EFS coded signature in a document submitted certifies that the inserted signature appearing on the document is his or her own signature. Persons submitting a document signed by another with an EFS signature are obligated to have a reasonable basis to believe that the person whose signature is present on the document actually inserted that signature.14) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. No Claim to Orig. US Gov. Smith/ John T. The electronic signature must consist of only letters of the English alphabet and/or Arabic numerals with appropriate spaces and commas. October 2006 Chapter 2A: Electronic Filing in the Patent Office *2A-14 § 2A. . Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.14 END OF DOCUMENT © 2008 Thomson/West. 3. full. an electronic signature in EFS character-coded form is used. An example of an appropriate EFS signature of an inventor is as follows: /John T. Works. Reg. and a single forward slash mark after. and should retain evidence of authenticity of the signature. Application s 2A. 5.14 EFS Signatures If correspondence is electronically filed through the EFS. There is no requirement that the signer's actual.PLIREF-PATAPP § 2A. Titles may be included as part of EFS character-coded signatures.

htm PLIREF-PATAPP s 2A.15 FOR EDUCATIONAL USE ONLY How to Write Pat.15) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Monday through Friday) • EFS website: www.uspto. October 2006 Chapter 2A: Electronic Filing in the Patent Office *2A-15 § 2A.USPTO.html • EFS website tutorials: http://www.gov/ebc/efs/index. No Claim to Orig. Application s 2A. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. US Gov. including: • EBC Customer Service Center: 1-866-217-9197 (6 AM to 12 midnight.15 END OF DOCUMENT © 2008 Thomson/West.15 Useful Contact Information and Help Sources There are several online sources of information for those interested in electronic filing.PLIREF-PATAPP § 2A.gov/ebc/portal/tutorials. Works. .15 (Cite as: PLIREF-PATAPP s 2A.

16 END OF DOCUMENT © 2008 Thomson/West. Application s 2A.16 FOR EDUCATIONAL USE ONLY How to Write Pat. No Claim to Orig. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Works. October 2006 Chapter 2A: Electronic Filing in the Patent Office *2A-15 § 2A. These include savings in copying and mailing costs. .16) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. US Gov.16 Conclusion The USPTO EFS system has many significant advantages for applicants. PLIREF-PATAPP s 2A.PLIREF-PATAPP § 2A. It is recommended that it be used whenever possible.16 (Cite as: PLIREF-PATAPP s 2A.

2A-1 (Cite as: PLIREF-PATAPP 2A Exh. US Gov. .PLIREF-PATAPP 2A Exh. Sheldon -----------------------------------------------------------------------Attorney Docket Number: 16900 -----------------------------------------------------------------------Receipt Date: 31-AUG-2006 -----------------------------------------------------------------------Filing Date: -----------------------------------------------------------------------Time Stamp: 19:28:43 -----------------------------------------------------------------------Application Type: Utility -----------------------------------------------------------------------International Application Number: ------------------------------------------------------------------------ Payment information: © 2008 Thomson/West. 2A-1 FOR EDUCATIONAL USE ONLY How to Write Pat. No Claim to Orig. Sheldon -----------------------------------------------------------------------Filer Authorized By: Jeffrey G. 2A-1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Application 2A Exh. Works. October 2006 Chapter 2A: Electronic Filing in the Patent Office *2AEX-1 Exhibit 2A-1: Electronic Acknowledgement Receipt -----------------------------------------------------------------------EFS ID: 1182103 -----------------------------------------------------------------------Application Number: 11469364 -----------------------------------------------------------------------Confirmation Number: 6360 -----------------------------------------------------------------------Title of Invention: Greatest Invention Since Sliced Bread -----------------------------------------------------------------------First Named Inventor: Joe Inventor -----------------------------------------------------------------------Customer Number: 23676 -----------------------------------------------------------------------Filer: Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.

pdf 73064 yes 16 ------------------------------------------------------------------------------Multipart Description ---------------------------------------------------------------Doc Desc Start End ---------------------------------------------------------------Specification 1 10 ---------------------------------------------------------------Claims 11 15 ---------------------------------------------------------------Abstract 16 16 © 2008 Thomson/West.PLIREF-PATAPP 2A Exh. US Gov. Section 1. Works. Application 2A Exh.R.16 and 1. No Claim to Orig.F.pdf 3326139 no 4 ------------------------------------------------------------------------------Warnings: ------------------------------------------------------------------------------Information: ------------------------------------------------------------------------------2 16900AppFinal. 2A-1 (Cite as: PLIREF-PATAPP 2A Exh. 2A-1) Page 2 ------------------------------------------------------------------------------Submitted with Payment yes ------------------------------------------------------------------------------Payment was successfully received in RAM $ 650 ------------------------------------------------------------------------------RAM confirmation Number 752 ------------------------------------------------------------------------------Deposit Account 123456 ------------------------------------------------------------------------------The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows: Charge any Additional Fees required under 37 C.17 ------------------------------------------------------------------------------- File Listing: ------------------------------------------------------------------------------Document Document File Name File Multi Pages Number Description Size(Bytes) Part ------------------------------------------------------------------------------1 Application Data Sheet US_ADS_Form. 2A-1 FOR EDUCATIONAL USE ONLY How to Write Pat. .

pdf 153730 no 3 ------------------------------------------------------------------------------Warnings: ------------------------------------------------------------------------------Information: ------------------------------------------------------------------------------5 Fee Worksheet (PTO-875) fee-into. characterized by the applicant. .53(b)-(d) and MPEP 506). © 2008 Thomson/West. 2A-1 FOR EDUCATIONAL USE ONLY How to Write Pat. No Claim to Orig. 2A-1 (Cite as: PLIREF-PATAPP 2A Exh.PLIREF-PATAPP 2A Exh. US Gov. Works. It serves as evidence of receipt similar to a Post Card. and including page counts. 111 If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR 1.C.pdf 183281 no 8 ------------------------------------------------------------------------------Warnings: ------------------------------------------------------------------------------Information: ------------------------------------------------------------------------------4 Oath or Declaration filed DeclPOA. where applicable.S.pdf 8465 no 2 ------------------------------------------------------------------------------Warnings: ------------------------------------------------------------------------------Information: ------------------------------------------------------------------------------Total Files Size (in bytes): 3744679 ------------------------------------------------------------------------------- *2AEX-3 This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents. Application 2A Exh. a Filing Receipt (37 CFR 1. 2A-1) Page 3 ------------------------------------------------------------------------------Warnings: ------------------------------------------------------------------------------Information: ------------------------------------------------------------------------------3 Drawings drawingsfinal.54) will be issued in due course and the date shown on this Acknowledgement Receipt will establish the filling date of the application. New Applications Under 35 U. as described in MPEP 503.

in due course. 2A-1 END OF DOCUMENT © 2008 Thomson/West. 2A-1 (Cite as: PLIREF-PATAPP 2A Exh.S.PLIREF-PATAPP 2A Exh.C. 2A-1 FOR EDUCATIONAL USE ONLY How to Write Pat. 371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a national stage submission under 35 U. 371 will be issued in addition to the Filing Receipt.S. No Claim to Orig. 371 If a timely submission to enter the national stage of an international application is compliant with the conditions of 35 U.C. Works. PLIREF-PATAPP 2A Exh. Application 2A Exh. . US Gov.C.S. 2A-1) Page 4 National Stage of an International Application under 35 U.

or if the inventor is unavailable.1 Introduction There can be no invention without the inventor. help write broad claims that adequately cover the invention. The inventor can provide the information needed for an enabling disclosure. with the person knowledgeable about the invention. No Claim to Orig. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. This chapter provides suggestions for working most effectively with the inventor.1 (Cite as: PLIREF-PATAPP s 3. October 2006 Chapter 3: Working with the Inventor *3-2 § 3. END OF DOCUMENT © 2008 Thomson/West.PLIREF-PATAPP § 3. Works.1) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. US Gov. Thus. Application s 3. . An ability to work well with the inventor is one of the more important skills that a patent practitioner needs to develop.1 How to Write Pat. and help identify and distinguish the prior art. the most important person in preparing a quality patent application is usually the inventor.

Invention provides no competitive advantage 6. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. and thus any potential infringer is exempted (see 35 U.2 END OF DOCUMENT © 2008 Thomson/West. Exhibit 3-2 is an annotated version of the same checklist. 7. copyright.2 (Cite as: PLIREF-PATAPP s 3. Better kept as a trade secret 4. § 271(e)(i)) One of the first things a skilled practitioner does when confronted with a new invention is analyze it for what type of protection (utility patent. The checklist is provided as Exhibit 3-4. Works. Potential market is too small to justify the cost. and a sample is provided as Exhibit 3-1. trade dress) is available and whether it makes sense to file a patent *3-3 application.PLIREF-PATAPP § 3.S. it is helpful to use a checklist. PLIREF-PATAPP s 3. Application s 3.C. It is often helpful for clients to use these checklists internally before even contacting a patent practitioner so there can be a focused discussion of the advisability of seeking patent protection. US Gov. Impossibility of enforcing a patent due to circumstances such as lack of financial resources or ability to detect infringement 5. In order to do this.2) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.2 How to Write Pat. October 2006 Chapter 3: Working with the Inventor *3-2 § 3. Existence of a statutory bar 2. Inability to obtain an assignment from the inventor(s) 3.2 Investigating Whether an Application Should Be Filed Not every invention should be the subject matter of a patent application. It is also useful for the practitioner. design patent. No Claim to Orig. The author has developed a checklist for clients so they can perform their own analysis of whether or not to file a patent application. . Among the reasons for not filing are: 1. The only commercial use of the invention is for developing certain products for FDA approval.

less economical. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. As stated by one court: The exact parameters of what constitutes joint inventorship are quite difficult to define. which state: "A person shall be entitled to a patent unless he did not himself invent the subject matter sought to be patented" (35 U. it is often difficult to discuss who the proper inventor is without identifying the claimed invention. Works.S. Perhaps one need not be able to point to a specific component as one's sole idea. then inventor B may be a sole inventor. Thus. it would have been less--less efficient. § 116). [FN1.S. It is one of the muddiest concepts in the muddy metaphysics of the patent law.3 Identifying the Inventor or Inventors The following discussion regarding meeting with the inventor presupposes that the practitioner knows who the inventors are. However. and inventor B suggested lower pressure. *3-5 Therefore. consider a disclosure that teaches using a prior art process for making a chemical compound. The basis for this rule is found in 35 U. [FN1] The determination of who ultimately possesses ownership rights *3-4 has no bearing whatsoever on the question of who actually made the invention. Inventorship and ownership are separate issues. Until it has been determined what is to be claimed and how that distinguishes over the prior art. as discussed below. identification of joint co-inventors is extremely difficult. with the invention that the temperature is increased and the pressure is decreased. and it may be necessary to remove inventor A from the application. . [FN1.3] The result is the same even if A and B believe they are co-inventors. © 2008 Thomson/West. if all person B did amounts to no more than what a person with ordinary skill would have done with the idea.2] When inventor A contributes the idea and person B develops and reduces the idea to practice through extensive efforts. If inventor A suggested higher temperature. §§ 102(f) and 116. less something of benefit.1] The starting point for determining inventorship is to define the invention. the inventor A is the sole inventor. The next step is to determine who contributed the inventive concept of the invention claimed. US Gov. it may not be possible to actually identify the inventors.C. § 102(f)) and "When an invention is made by two or more persons jointly. thereby resulting in much higher yields. except as otherwise provided in this title" (35 U.C. it is reasonably clear that a person who has merely followed instructions of another in performing experiments is not a co-inventor of the object to which those experiments are directed.PLIREF-PATAPP § 3. then. For example. but one must be able to say that without his contribution to the final conception.C. A patent application can be filed only in the name or names of the true inventor or inventors. Application s 3. On the one hand. if a novelty search or the Patent Office identifies a reference that teaches a prior art process that includes the higher temperature feature and differs from the claimed process only because of the lower pressure. As a matter of fact.S. inventors A and B are properly co-inventors.3) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. October 2006 Chapter 3: Working with the Inventor *3-3 § 3. To claim inventorship is to claim at least some role in the final conception of that which is sought to be patented. [FN1.3 How to Write Pat. less simple.3 (Cite as: PLIREF-PATAPP s 3. one of the most difficult tasks in many situations is identifying the inventors of the claimed invention. No Claim to Orig. they shall apply for a patent jointly and each sign the application and make the required oath.

[FN1. [FN1. it is not necessary to be certain that the invention will work. Sometimes conception of an invention is sufficient for the invention to be made. This requires more than merely exercising ordinary skill in the art. US Gov. Thus in unpredictable arts. and other times it is necessary for there to be in addition actual or constructive reduction to practice. a person who identifies a utility for an invention. may also be an inventor. There is a presumption that the listing of inventors in an issued patent is correct.7] However. conception alone is insufficient unless there is "conceptual specificity. particularly in the chemical fields. © 2008 Thomson/West. than if a true inventor were left out. Application s 3. Accordingly. The persons conceiving the intermediate or the method of making the claimed composition may properly be inventors for claims directed to the intermediate and the method of making. it can be the case that complete conception cannot be demonstrated until the invention is reduced to practice. Thus merely discovering or synthesizing a new chemical compound does not yield an invention unless a utility is identified for the chemical composition. is insufficient to rise to the level of inventorship of the claimed compound. an individual must make a contribution to the conception of the claimed invention that is not insignificant in quality when that contribution is measured against the dimension of the full invention.10] Due to the perceived unpredictability of certain arts such as the chemical arts.8] To have conception. that person's testimony is lost as a collaborating witness as to conception and reduction to practice. by mistake. The concept must include every feature of the invention and be sufficiently complete to allow one of ordinary skill to practice the invention without extensive research or experimentation. until there is reduction to practice. there is a disadvantage in being overinclusive in identifying inventors.9] To be a joint inventor. when the claimed invention is a particular compound per se. In such a situation.6] Conception is the formation in the mind of a definite and permanent idea of the complete operative invention and *3-6 method of obtaining it. [FN2] It is less likely that a judge or jury would invalidate a patent because. Moreover. No Claim to Orig. conception of an intermediate compound for preparing the claimed compound. [FN1. Also in the chemical arts. the left-out true inventor is more likely to give unfavorable testimony during litigation. It is only necessary that the inventor has a reasonable expectation that the invention will work. or conception of a method of making the claimed compound. . [FN1. However.3) FOR EDUCATIONAL USE ONLY Page 2 [FN1.5] To determine who contributed the inventive concept.PLIREF-PATAPP § 3. [FN1." "Conceptual specificity" is when somebody can describe minute details about the formulation or testing of a concept. an extra person was in error given credit for an invention. It is usually safest to include too many inventors rather than too few inventors. However.3 (Cite as: PLIREF-PATAPP s 3. a mere "hope" regarding the results of a biological process that had never before been achieved does not qualify as a conception.11] It is also necessary for an invention to have utility. it is necessary to understand exactly what is needed to have an invention. no invention is made. Works. [FN1.4] There is some solace to the practitioner when determining inventorship. By *3-8 including a person as an inventor who most likely should not have been identified as an inventor. Thus conception alone is sufficient if the inventor(s) have an idea that was definite and permanent enough that one skilled in the art could make the invention. [FN1. the *3-7 person actually reducing the conceived invention to practice can also be an inventor. [FN1. The burden of proof on the adverse party challenging inventorship in litigation is clear and convincing evidence.12] The following guidelines are provided to help the practitioner identify the inventors: 1.3 How to Write Pat.

1] is not an inventor. US Gov. Such a defense is highly technical.E.PLIREF-PATAPP § 3. [FN12] or whose activities were "'simply the exercise of the normal skill expected of an ordinary' machinist.C. [FN3] 3. If the initial determination of inventorship is incorrect or inventorship changes during prosecution of the application. are discussed in M. the subject matter of which *3-11 was contributed to by an inventor not originally named. A supervisor or employer of an inventor is not entitled to an inventor's status merely because that person is a supervisor or employer. § 116 requires at least some collaboration or connection. No Claim to Orig. sometimes the machinist or mold maker has made a contribution that is eventually claimed. Also.S. 5. [FN7] although a contribution has to be made to at least one claim of the patent. sometimes even including laboratory technicians.3) FOR EDUCATIONAL USE ONLY Page 3 2. 7.3 (Cite as: PLIREF-PATAPP s 3. [FN6] 4. Joint inventorship under 35 U. one who merely explains how or why the invention works [FN10] or merely participates in consultations prior to or after conception. 8. § 201. 10. or by cancelling all claims to which an originally named inventor contributed. including draftsmen. They cannot be totally independent of each other and be joint inventors. Inventorship can change during prosecution as a result of adding new claims to the application. Application s 3. the inventorship can be corrected and the patent will not be invalidated if the error regarding inventorship arose without any deceptive intent. if the inventorship is incorrectly identified with fraudulent intent so that there is inequitable conduct.03. If a prototype has been made. inventorship can be corrected pursuant to the provisions of 35 U.1] © 2008 Thomson/West. and courts disfavor a defense based on incorrect inventorship. § 116. anyone relied upon by the client to provide technical input to the practitioner in order to prepare the patent application is a candidate for possible inclusion as an inventor. [FN14] Even if inventorship is incorrectly identified.P. A person such as a lab technician. such as abandoning the application and refiling with the correct inventorship. It is not necessary for each joint inventor to make a contribution to the subject matter of every claim of the patent. "One bad apple spoils the entire barrel. In technical papers there is a tendency to be overinclusive as to who made a contribution to the paper. the fact that someone was an author of a paper regarding an invention will at least raise an issue in the mind of the defendant as to whether inventorship is correct. [FN9] Similarly. Works.S. and accordingly these people should be considered as possible inventors. The practi-tioner has an obligation to the client to make certain that the true and correct inventors are accurately identified to the Patent Office." [FN12. [FN4] Merely suggesting limitations present in a claim can qualify the suggester as a coinventor. In litigation. is not a joint inventor. a listing of authors different from a listing of inventors puts the practitioner on notice that inventorship needs to be investigated. For example. [FN11] or one who made no contribution until after the invention was reduced to practice. [FN8] *3-9 6. ownership and inventorship are not the same concepts. contributed to the claimed invention. even an innocent inventor cannot resurrect the patent. [FN15] 11. Other options for correcting inventorship. [FN13] Although the employer may end up owning the patent because of an employment agreement. When a technical paper is to be published about an invention. contribution of an obvious element does not qualify the contributor for inventorship status. who simply follows designs and experiments of another. *3-10 9. However. It is not necessary for each joint inventor to make the same type or amount of contribution to the invention.P. investigate which of the authors are properly inventors. It is difficult to have a patent invalidated because of allegations of improper inventorship. . Individuals cannot be joint inventors if they are completely ignorant of what each has done until years after their individual independent efforts. [FN5] However. investigate whether persons identified in drawings submitted as being involved in the preparation of the drawings." [FN15.3 How to Write Pat. The practitioner should not assume that the client's identification of inventorship is correct. Thus.C. It is not necessary for joint inventors to work together physically or at the same time.

[FN1.3) FOR EDUCATIONAL USE ONLY Page 4 12. Inc.8].4]. 21 F. [FN1.. Works.2d 1356. Application s 3. 415. Sewall v. 67 U.6].S.P. when determining inventorship.P.7]. 2001). [FN1.3d 1358 (Fed. Bioscience. US Gov.P. 1994).2]. unless the structure is simply a reduction to practice of another inventor's broader concept. 387 F. even where inventorship is correct. Id. Cir. It is advisable to prepare a file memo reporting any investigation re inventorship. Inc. 372 (E. patents having the attributes of personal property. 13. is a question of who owns legal title to the subject matter claimed in a patent. consider submitting the facts relating to the issue to the Patent Office in an Information Disclosure Statement (see chapter 8).3d 411 (Fed. For design patents. Barr Labs. Ownership.3d 411. [FN1. see Edward A. Eli Lilly & Co.. . Cir.9]. EDO Corp. 2004).1]. Walters. Merely assisting the original inventor after conception and providing differences that are just superficial rather than being an inventive concept do not qualify a person as an inventor.2d 1527.3]. [FN17] 15. 1993). 21 F.P. 26 U. [FN18] [FN1]."). [FN1. in 14 AIPLA SELECTED LEGAL PAPERS No. 21 F. 1972)..2d 1252 (Fed. 1248.3d 1223. Cir.2d 1915 (Fed. [FN1. however. v. Cir. Caterpillar. 990 F. then the contributor of that structure should be included as a joint inventor.S. 1357. v. Cir. 417.Q. 243 F. Sewall v. 30 U. 1. of Educ. the same standards of inventorship are applied as for utility patents.Q.Q. Sturman Indus. Failure to disclose material facts relating to inventorship. v. 40 F. v. 58 U. whether that subject matter is recited in a claim in an application or in a count in an interference. v. 2004).. Am. at 3 (1996). 361.. Walters.P.Q. Inc.3d 1345. 1582 (Fed.5]. 176 U.P. [FN1..2d 1365..PLIREF-PATAPP § 3.Q. Mueller Brass Co... Sewall v. Cir. An example of an incentive not to include a person as an inventor is where the person *3-12 has no obligation to assign the invention to the client. If that structure is the subject matter of a specific dependent claim. © 2008 Thomson/West. Walters.S. 1361 (Fed. Inc. Aradigm Corp. [FN16] Thus.3 How to Write Pat. the conclusions reached.S. 333 F. 1358 (Fed.Q. Bd. 2003). In close situations where there can be an incentive for including or not including a person as an inventor. 30 U.S. 1994). v. [FN1.3d. Supp. Rutter. 1994) ("Inventorship is a question of who actually invented the subject matter claimed in a patent. Reading Indus. see Burroughs Wellcome Co. A contributor to one of multiple structures within the scope of a "means-plus-function" clause is a joint inventor. and the rationale for the conclusion."). 32 U.S.S. This will be helpful in avoiding a claim of deceptive intent if it is necessary to change inventorship or if there is a challenge to the enforceability of an issued patent due to inequitable conduct relating to inventorship.D. it is important to ascertain who contributed each structure within the scope of a means-plus-function clause and whether that structure is beyond a mere reduction to practice of the broader concept. Inc. No Claim to Orig. Cir. Cir. [FN1. 352 F. Clearing Up the "Muddy Metaphysics" of Patent Inventorship (Or How to Conduct an Inventorship Determination).Q. 1352 (Fed. and it is impossible to obtain the assignment or would require a payment to do so. 1372.. For a discussion of the general principles of determining inventorship in joint inventorship determinations. can result in a holding of inequitable conduct. Remus et al. 1994) ("Determining 'inventorship' is nothing more than determining who conceived the subject matter at issue. Cir. 14. Pa. Beech Aircraft Corp.3d 411.P.2d 1161 (Fed. 376 F.3d 1330. Changes in an original design do not qualify one as an inventor if the changes result in a design that is "substantially similar" to the original design.2d 1237.3 (Cite as: PLIREF-PATAPP s 3. Hitzeman v.

See Noud et al. 2006).. 30 U. Erie Tech. 35 U.. [FN3]. 1976). 461 F. Halliburton Co. Cir. [FN15.S. [FN15]. [FN10]. v. Hormel & Co.P. Ltd.2d 1545 (Fed. 1994).Q.3d 1456.P.. v.. Bioscience. supra note 6. Ill.3d 1330. 411 F.2d 504. Caterpillar.S. E. 1998). 21 F. Supp. [FN12]. [FN6]. Geo.D. 292 F. 1992). Die Craft Metal Prods. US Gov. 434 F. 1981). A. Ethicon. 254 F.C. 1979).S. PLIREF-PATAPP s 3. Walters. 333 F. Toyota Motors Co. Okla. [FN14]. Cir.10].. Ultra-Precision Mfg. Cir.2d 1442 (Fed.3d 1375 (Fed. Inc.Q.P.S..S.S.Q. 1981). Koehring Co.P..3d 1369 (Fed. 2000). 30 U. 279 F.2d 911. 2001).3d 1375 (Fed. 7. Stern v. Cir.. 25 F. Ethicon. 2004). [FN2]. Cir. 88 J. Hoop v. O'Reilly v. [FN12. 155 F. See Mattor v.. 507.2d 5. Coolegem. 207 U. 205 U. [FN16]. 1966).C.Q. .P.2d 1252 (Fed. Inc. 35 U. Cir. § 116... § 256.3d 1344. United States Surgical Corp. [FN4]. v. Pannu v.11]. 973 F. Co. 62. 1998).P. Patent Law Issues Affected by the Predictability of Technology in the Field of Invention.2d 1391.3d 1004. Inc. [FN7]. v. 23 U.P. 1998). 201. Inc. Pharmacia Biotech. 1994). 334. 212 U. of Educ. v.C.Q. 173 U.2d 1356 (Fed. Ford Motor Co. 67 U. 421.D. 2002). Bond. 189 U. 2002)..P. Inc. Ethicon. Procter & Gamble Distrib. July 2006.P. 514 F. Etnyre & Co. 149 U.Q.S.S. Co.Q. Inc. 387 F.2d 1657 (Fed. Iolab Corp. 304 (W. 35 U.3 How to Write Pat. Sofamor Danek Group. Acromed Corp. v. 1972). 2005). PAT. Soya Co. v. Inc.1]. Motors Corp. & TRADEMARK OFF. Inc. Perspective Biosystems. 61 U. 15 How. 172 (E.3d 1456. v.C. Bd...S. Pa. Inc. Cir. 204 (C.3d 411. Frank's Casing Crew & Rental Tools. v. No Claim to Orig.Q. Am.2d 1545 (Fed. Cir.S. § 116.PLIREF-PATAPP § 3. v.3 (Cite as: PLIREF-PATAPP s 3. [FN9]. [FN11]. Cir. Sturman Indus. 493 F.S. Final Oil & Chem.Q.12].Q.. v. v.3d 1466 (Fed.. 601 (1853).S. 659 (6th Cir. [FN17]. 1376. 225 F. Supp..A.. 45 U.C.3d 1315 (Fed. Cir. Cir.S. 644 (7th Cir.Q. Sewall v. Supp. 424 (W.3 END OF DOCUMENT © 2008 Thomson/West. GAF Corp. [FN1. 530 F.P.. [FN1..S. [FN5]. [FN18]. 667 F. v.1]. Cir.3) FOR EDUCATIONAL USE ONLY Page 5 [FN1. Works. v. Kimberly-Clark Corp. 35 U. Morse.3d 1358 (Fed. [FN8]. v.P. 211 U. La. Cir. Hoop.P. Ewen. Cir. Prods. 338.S. Credle v. 135 F.D.S..3d 1566. 434 F.P.Q. Stern v.Q. Application s 3.D.2d 1921 (Fed. Inc. 1997). 2006). Gen. United States Surgical Corp. Cir. § 116.S. Shields v. Columbia Univ.P.D.Q.S. 266 (N. Ed. [FN13]. Ltd.3d 1371 (Fed.2d 1911 (Fed.. at 603-43. 47 U. 14 L. 253 F. 1980). 123 F. 943.Q.S. 2003). 263. Cent. AMCHEM Prods. Columbia Univ. 135 F.P. PMR Techs.3d 1363 (Fed. SOC'Y No.P. Cir. 45 U.

4 Preparing for the Initial Interview To the extent possible.4 How to Write Pat. the inventor should submit all available relevant materials before the initial interview. and information regarding the prior art. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. drawings of the product.PLIREF-PATAPP § 3.4 END OF DOCUMENT © 2008 Thomson/West. Application s 3. . Works. US Gov. No Claim to Orig. October 2006 Chapter 3: Working with the Inventor *3-12 § 3. PLIREF-PATAPP s 3.4 (Cite as: PLIREF-PATAPP s 3. A review of these materials prior to the initial interview will allow the meeting with the inventor to go much more quickly and expeditiously.4) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. These can include an invention disclosure.

as described below.5 How to Write Pat. US Gov.5) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Application s 3. Works.5 END OF DOCUMENT © 2008 Thomson/West.5 (Cite as: PLIREF-PATAPP s 3.5 Initial Interview The initial interview. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. October 2006 Chapter 3: Working with the Inventor *3-12 § 3. rather than to obtain all the information required to write a good quality patent application. not all of this information needs *3-13 to be obtained at the initial meeting.PLIREF-PATAPP § 3. Although the following description will cover most of the information that needs to be obtained from the inventor. No Claim to Orig. Frequently the goal of the initial meeting is to obtain sufficient information to order a novelty search. may actually be divided into two segments. PLIREF-PATAPP s 3. .

is familiar with the problems solved. Works. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.1 Let the Inventor Tell the Story The inventor has a story to tell about his or her invention. No Claim to Orig. Application s 3. and can identify the features of the invention that most likely are commercially important.1 END OF DOCUMENT © 2008 Thomson/West. Inventions are treated by inventors much as babies are treated by parents.5.5. PLIREF-PATAPP s 3.5. The inventor has thought about the invention. US Gov.1 (Cite as: PLIREF-PATAPP s 3.5 Initial Interview *3-13 § 3.5. and there is no such thing as a meritless invention. there is no such thing as an ugly baby. It is important for a good relationship between the inventor and the practitioner that the inventor be given an opportunity to explain the invention and its advantages. . Let the inventor tell the story.1 FOR EDUCATIONAL USE ONLY How to Write Pat. October 2006 Chapter 3: Working with the Inventor § 3. This is often the best time to learn about the advantages of the invention.5.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.PLIREF-PATAPP § 3.

preferred ranges. which identifies information typically needed to have an enabling disclosure in the chemical. . the practitioner *3-15 should ask questions and. Exhibit 13-1.2 (Cite as: PLIREF-PATAPP s 3. Determine the effect of changing size for various parts. Sound technical or economical reasons for the choice of ranges should be identified. such as a Polaroid® camera with a close-up lens. Consider the following examples: 1. © 2008 Thomson/West.2 FOR EDUCATIONAL USE ONLY How to Write Pat. lead the inventor. the practitioner must obtain an enabling disclosure. 3. Works. they should be obtained. If any papers have been written. as well as relevant pages from laboratory notebooks. Accordingly. if necessary. since the inventor is responsible for putting the invention together.PLIREF-PATAPP § 3. or metal seals.5. it is wise to obtain those names and use them as a starting point for describing the invention. Refer to the checklist contained in chapter 13.5. Photographs of any prototypes of the inventions should be taken. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. It is always a challenge to come up with satisfactory names for all the elements of mechanical inventions. or one type of plastic with another. 2. chemical process. The drawing shows a polyurethane rubber seal. or any documentation about the invention is available. If any drawings of the invention are available. Application s 3. Ask the inventor what other materials can be used.5. A similar listing of information needed for mechanical inventions is provided in chapter 8. This can be done by labeling the drawings. such as glue. and all other information necessary to teach one of ordinary skill in the art to practice the invention.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Consider substitutes for materials. is a valuable tool for patent attorneys and agents. it is strongly recommended that the inventor be asked to name all the elements of the invention. Determine if the number of parts can be reduced by combining various parts. 4." Thus. 5. An instant camera. 6. Obtain information about the ranges for various variables.2 Obtain an Enabling Disclosure As described in chapter 7. With regard to mechanical and electrical inventions. the practitioner needs to understand the invention. how it works. Therefore. such as replacing metal with structural plastics. the patent application must contain an "enabling disclosure. October 2006 Chapter 3: Working with the Inventor § 3. One thing to be careful about in obtaining alternatives is that the practitioner not become a co-inventor. No Claim to Orig. Rather. The practitioner should not make suggestions. To the extent that new versions of the invention are developed that are going to be claimed.5. the theory behind it (if the theory is known). and biotechnical arts. the papers or *3-14 documentation should be obtained. This should include the broadest possible ranges. The inventor should identify substitutes for all the elements of the invention. and most preferred ranges. Ask the inventor what else can be used. such as other types of rubber. US Gov.5 Initial Interview *3-13 § 3. The inventor has used nuts and bolts as fasteners. Usually the inventor already has a name for each part.

PLIREF-PATAPP s 3. Getting this done early will make it much easier to write a good patent application.5. which should be avoided.2) Page 2 the inventor should be the one who suggests them. With regard to all papers received from the inventor.2 FOR EDUCATIONAL USE ONLY How to Write Pat. US Gov. the prior art. This is an excellent use for them. Application s 3.2 END OF DOCUMENT © 2008 Thomson/West. Many practitioners have a laptop computer and a portable printer. Dating and initialling can become important if the date the invention was made or diligence becomes important in litigation. No Claim to Orig. Docket numbers are important in case papers get misplaced. This is a good time to do it. The practitioner becoming a co-inventor may create conflict problems. The practitioner should have the inventor distinguish the prior art and explain why the invention is better than the prior art.2 (Cite as: PLIREF-PATAPP s 3. and advantages of the invention are well understood by the inventor and practitioner at this time. using them makes it easy to match the paper with the appropriate file. they should be dated and initialed by the practitioner. . Drafting the claims is the most critical part of preparing a patent application. and usually the most difficult.5.5.PLIREF-PATAPP § 3. and if a docket number has been assigned to the matter.5. since the invention. even if the practitioner thought of the versions first. the docket number should be placed on the papers. Working with the inventor is the best way to draft the claims. Works. It is strongly recommended that an attempt be made to draft the broadest claim at the initial interview.

October 2006 Chapter 3: Working with the Inventor § 3. or at scientific conferences? • What patents and papers does the inventor have? (Ask for a CV. it is important to cite to the examiner in the Patent Office all information material to the examination of the application.5. Works. options.? (The answer to this question may avoid a wrong assertion of small entity status.3 END OF DOCUMENT © 2008 Thomson/West.5. offers for sale? • What technical disclosures have been made.3 Avoiding Inequitable Conduct As discussed in chapter 8. Among the inquiries that should me made of the inventor are the following: • Who made the invention? (It is surprising how often somebody tries to patent a product seen in a foreign country.3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. displays at trade shows.) • What commercial activities have taken place.) • Have there been any foreign filings on this technology? • What products are on the marketplace that the invention improves on? • What publications provide good background information? • Who has rights in the invention. Much of the information is known to the inventor. Chapter 8 provides a comprehensive list of such information. Application s 3.3 (Cite as: PLIREF-PATAPP s 3. which often contains a comprehensive list. including licensees.5 Initial Interview *3-15 § 3. by displays at trade shows.5.) PLIREF-PATAPP s 3. and the practitioner should diligently *3-16 elicit the information from the inventor.5. US Gov.3 FOR EDUCATIONAL USE ONLY How to Write Pat. such as in journal articles.5.PLIREF-PATAPP § 3. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. probable assignees. . including quotes. etc. No Claim to Orig.

END OF DOCUMENT © 2008 Thomson/West. US Gov.R. Works. October 2006 Chapter 3: Working with the Inventor *3-16 § 3.F.6 (Cite as: PLIREF-PATAPP s 3. The procedure for doing that will be described in the following chapters. § 1. The draft application. No Claim to Orig. It is recommended that a draft information disclosure statement be accompanied by a form that has the inventor sign off regarding the requirements of 37 C. is then provided to the inventor.6) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.56. This gives the inventor another chance to identify relevant prior art.6 How to Write Pat. a draft application is prepared.PLIREF-PATAPP § 3. along with a draft information disclosure statement and any drawings. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. once prepared. Exhibit 3-1 is a sample of such a form that has proven to be *3-17 useful. .6 Sending the Draft Application to the Inventor Based on the information obtained from the inventor. Application s 3.

Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Application s 3. Under no circumstances should the inventor execute the application and then have the patent attorney make changes to the application by retyping pages to correct errors. First. and then date and execute the formal papers.7 Getting the Application Executed Once the inventor's comments are received on the application. the final version of the application is prepared. October 2006 Chapter 3: Working with the Inventor *3-17 § 3. Once the application is executed. Occasionally the inventor wants to make changes to the final application. no changes can be made to the application except by amendment. This is useful only if the changes to be made by the preliminary amendment do not create issues of new matter. . PLIREF-PATAPP s 3. No Claim to Orig.7) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.7 How to Write Pat. US Gov. and the inventor executes the formal papers so the application can be filed. This can be done one of two ways. Works.7 END OF DOCUMENT © 2008 Thomson/West. This is unacceptable.7 (Cite as: PLIREF-PATAPP s 3. The other option is to have the inventor execute the formal papers and make the changes by way of preliminary amendment.PLIREF-PATAPP § 3. the inventor can make the changes in ink and initial and date the changes.

Works. December 2001 Chapter 3: Working with the Inventor *3EX-1 Exhibit 3-1 TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 3 Exh. 3-1 FOR EDUCATIONAL USE ONLY How to Write Pat. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. Application 3 Exh. No Claim to Orig.PLIREF-PATAPP 3 Exh. 3-1 END OF DOCUMENT © 2008 Thomson/West. US Gov. . 3-1 (Cite as: PLIREF-PATAPP 3 Exh. 3-1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.

S. The information can be in any form. If the answer is "no". for example a product. a U. a publication on the Internet. of the new product. 3-4) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. 3-4 FOR EDUCATIONAL USE ONLY How to Write Pat. [ ] Can we protect this as a trade secret? © 2008 Thomson/West. It is also likely that no foreign Patent can be obtained. or offer for sale. . 3-4 (Cite as: PLIREF-PATAPP 3 Exh. or a trade brochure).S. for example. patent cannot be obtained. [ ] How likely is it that there will be competitors in the market? If there will be no competitor. [ ] How long will the market exist? *3EX-10 If the market will not exist two years from now.PLIREF-PATAPP 3 Exh. a U. or a display at a trade show. there may be no reason to file. with possible exceptions if the available information is ONLY in the form of (1) use without written publication and/or (2) sale or offer for sale which does not disclose the invention. a scientific or trade journal. US Gov. [ ] Is this an invention that can be licensed to third parties? If the answer is yes. then most likely we need to file since royalty rates are generally higher for a patented invention. [ ] How large is the potential market? If the market is not at least $100. Works. or foreign Patent. or of a product of the new process is also "information". A sale. [ ] Does the invention provide us with a competitive advantage? [ ] We can do it cheaper? [ ] We can do it better? If the answer is no. then no one might compete. it is not worth filing on since a competitor can practice an equally good option.00 per year. [ ] Can we contractually prevent all customers from doing it themselves or purchasing from a competitor If the answer is yes. November 2005 Chapter 3: Working with the Inventor *3EX-9 Exhibit 3-4: Checklist for Patent Protection Evaluation [ ] Is the invention (product or process) different in any way from information which has been available to the public for more than a year such as by being: [ ] Described in a printed publication? [ ] Been offered for sale? [ ] Used to produce a product? "The public" means anyone who does not have a confidential relationship with you. there may be no reason to file. No Claim to Orig. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 17. a written publication (including. Application 3 Exh. patent protection may not make sense.

The "patent pending" notation generally slows down competitors enough to more than justify the cost of a patent application. trade secret protection may be the way to go. [ ] Can we protect this with a copyright or trademark or trade dress rights? *3EX-11 If the answer is yes. and reserve the trade secret vs. [ ] Will filing a patent application and satisfying the "best mode" requirement require disclosure of valuable trade secrets? A "yes' answer may mean no filing. 3-4 END OF DOCUMENT © 2008 Thomson/West. . there may be no reason to file. [ ] Has anyone who does not have to assign their rights to us contributed to the invention? If third parties will have the right to practice the patented invention. However. 3-4 (Cite as: PLIREF-PATAPP 3 Exh. However. PLIREF-PATAPP 3 Exh. even if "unobviousness" is problematic. Is this invention unobvious compared to what came before it? [ ] How different is the invention from the prior art? [ ] How long have people been trying to solve the problem? [ ] How much effort and time did it take to solve the problem? To actually receive a patent. No Claim to Orig. 3-4) Page 2 [ ] Can the invention be reverse engineered? [ ] Will we have to disclose it to customers? [ ] Will we have to disclose it to the government? [ ] Does anyone outside of the company already know the invention such as consultants or University researchers? [ ] Can we protect the invention from ex-employees? If the answer is yes. there may be a cheaper and easier way to obtain protection than through a patent. Works. [ ] Can we obtain an enforceable patent? [ ] Can we detect if someone is infringing? If the patent is not enforceable. I recommend that a patent application be filed for any commercial product that is "different". an option is to file. 3-4 FOR EDUCATIONAL USE ONLY How to Write Pat.PLIREF-PATAPP 3 Exh. US Gov. it may not be worth filing. patent decision for later. it is necessary that the invention be unobvious. Application 3 Exh.

the novelty search. what the procedure is for ordering a novelty search. No Claim to Orig.1 END OF DOCUMENT © 2008 Thomson/West.1 (Cite as: PLIREF-PATAPP s 4. why in some circumstances one is not ordered. This chapter does not discuss how to actually do a novelty search. Works. In general. why do one. Application s 4.1 How to Write Pat. The following sections discuss what is a novelty search. and how to report the results of a novelty search. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. Most (but not all) practitioners do not conduct their own searches.1 Introduction This chapter is directed to a procedure that more often than not is conducted before a patent application is written. US Gov. what the limitations are on a novelty search. the search is left to expert searchers. . namely.1) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. December 2001 Chapter 4: The Novelty Search *4-2 § 4.PLIREF-PATAPP § 4. PLIREF-PATAPP s 4.

3. i. and that is the term used here. it is impossible to prove a negative. The second element is the actual search conducted by the searcher.2 How to Write Pat. *4-4 2. December 2001 Chapter 4: The Novelty Search *4-2 § 4.2 END OF DOCUMENT © 2008 Thomson/West.PLIREF-PATAPP § 4. Works. rarely is a reference developed that anticipates or renders an invention non-novel. By a prospective licensee or purchaser of a patent to determine how much the patent is worth. The requesting letter usually identifies how much financial effort is to be expended on the search. Most novelty searches are directed to determining whether an invention is obvious or nonobvious. 3. By the defendant in a patent infringement suit in order to find references to invalidate the patent in suit. novelty searches generally are used to determine if an invention is obvious. Much more effort is expended on patentability searches. The first element is a search request made from the practitioner to the person doing the search. One of the key purposes of the search is to determine the chances of obtaining a patent in the Patent Office.2) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. . As discussed in § 4. namely that there is no anticipatory reference anywhere in the world. because of the limitations of a novelty search." only infrequently does a novelty search actually ascertain whether an invention is novel. 2. Thus. The fourth element is a report to the client regarding the search results. Patentability searches are frequently used in the following contexts: 1. However.. The term "patentability search" is used to refer to searches that are substantially more thorough and more complete than the typical novelty search. and identifies the general categories of references that are to be investigated. defines the invention.C. the term "novelty search" is generally accepted. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. The third element is a review of the references developed by the searcher. Application s 4. § 103.e. By the patentee before instituting a patent infringement suit to determine the likelihood of the patent's surviving the litigation. Because a novelty search is conducted in an attempt to determine the likelihood that the United States Patent Office will issue a patent on a particular invention. 4. They are usually reserved for situations in which much more is riding on the results of the search than the decision of whether or not to file a patent application. PLIREF-PATAPP s 4. US Gov. A novelty search usually has the following elements: 1. Most patent applications that do *4-3 not issue fail to issue because of the Patent Office's perception that the invention is obvious under 35 U.2 What Is a Novelty Search? Despite the use of the word "novelty.2 (Cite as: PLIREF-PATAPP s 4. It is usually impossible with a conventional novelty search to determine whether an invention is truly novel. No Claim to Orig. which is a principal objective of a novelty search.6 below. it would be more accurate to call a "novelty" search an "obviousness" search.S. A novelty search is not a patentability search.

Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. . Works. December 2001 Chapter 4: The Novelty Search *4-4 § 4. These are discussed in subsections 4.PLIREF-PATAPP § 4. Application s 4.3. US Gov.3) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.5.3 END OF DOCUMENT © 2008 Thomson/West.3 (Cite as: PLIREF-PATAPP s 4. beyond the obvious reason of determining whether or not to file a patent application. PLIREF-PATAPP s 4.3 Why Order a Novelty Search? There are many reasons for ordering a novelty search. No Claim to Orig.3.3 How to Write Pat.1 to 4.

Novelty searches are only infrequently conducted for design patents.3.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.1 (Cite as: PLIREF-PATAPP s 4. US Gov. a decision is made not to file an application one out of seven times.1 Economics A novelty search can be conducted to assist in making the decision of whether or not to invest the money in filing a patent application. the novelty search has justified itself on this basis alone. as a result of a novelty search.3.PLIREF-PATAPP § 4. The cost of a novelty search is usually much less than the cost of a patent application. PLIREF-PATAPP s 4. If the ratio is 1:7. December 2001 Chapter 4: The Novelty Search § 4.3. then if. with a typical midrange number being about 1:7. Application s 4. No Claim to Orig. The typical ratio of the cost of a novelty search to the cost of the corresponding patent application is anywhere from 1:4 to 1:20. Works.3.1 END OF DOCUMENT © 2008 Thomson/West.3.3 Why Order a Novelty Search? *4-4 § 4. Design patent applications cost substantially less than utility applications. and there is little economic justification for conducting a novelty search before filing a design patent application. . Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9.1 FOR EDUCATIONAL USE ONLY How to Write Pat.

the emphasis of the application can improperly be placed on nonpatentable or trivial features. Application s 4. The prior art patents provide an indication of the level of skill in the art and allow the practitioner to determine how much disclosure is needed to enable those of ordinary skill in the art to practice an invention. it is much easier for the patent practitioner to write the application. Another advantage of having prior art patents available is that ideas for claim structure. as discussed in chapter 7. December 2001 Chapter 4: The Novelty Search § 4.3. Works.2 A Better Application Can Be Prepared The novelty search results allow a practitioner to prepare a better patent application. . into the new patent application. Moreover.C. having prior art patents allows the practitioner to ascertain early how much information needs to be included in the application to comply with the requirements of 35 U.2 END OF DOCUMENT © 2008 Thomson/West.3. and different types of claims other practitioners have used in the art are made available. Novelty searches help identify the features of the invention that are most likely to be patentable. § 112.3. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9.S. No Claim to Orig. Without a novelty search.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.PLIREF-PATAPP § 4. With this knowledge. scope of claims. Why re-invent the wheel when excellent guidance in preparing claims for an invention can be obtained from prior art patents? PLIREF-PATAPP s 4. Sometimes chunks of the specification of a prior art patent can be lifted bodily or incorporated by reference. Thus. and thus at a lower cost to the client.2 (Cite as: PLIREF-PATAPP s 4. the practitioner can write an application *4-5 that stresses those features and be certain to have an adequate disclosure of those features in the specification and display them in the drawings. US Gov. This allows the application to be prepared with less effort.2 FOR EDUCATIONAL USE ONLY How to Write Pat.3. Another advantage of a novelty search is that prior art patents reveal to the practitioner terminology typically used in the art and how much detail needs to be put in the patent application. by having typical patents in the art.3.3 Why Order a Novelty Search? *4-4 § 4.

Often the commercial potential of a product depends upon whether or not a patent can be obtained.3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.3.PLIREF-PATAPP § 4. . Application s 4.3 FOR EDUCATIONAL USE ONLY How to Write Pat. The ability to prevent knockoffs can be a key factor in the commercial viability of a particular product. If a substantial capital investment is involved. the client needs an early indication of the chances of obtaining a United States patent.3. US Gov. it makes no sense for the client to enter the market if the exclusivity provided by a United *4-6 States patent cannot be achieved. No Claim to Orig. Works. For many products. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. In these situations.3 END OF DOCUMENT © 2008 Thomson/West. PLIREF-PATAPP s 4.3.3 Why Order a Novelty Search? *4-5 § 4.3 Commercial Reasons for Conducting a Novelty Search There are sound commercial reasons why a client would want a novelty search.3. the client may even go beyond a novelty search and request a patentability study. December 2001 Chapter 4: The Novelty Search § 4.3.3 (Cite as: PLIREF-PATAPP s 4.

v. Cir. [FN1].Q. when there is prosecution history estoppel relating to a claim element such as by narrowing the claim element to avoid prior art. Application s 4. PLIREF-PATAPP s 4. 56 U.3 Why Order a Novelty Search? *4-6 § 4. US Gov.S. it may be possible to draft the claims so that no amendment is needed during prosecution.3d 558.3.PLIREF-PATAPP § 4. By performing a thorough prior art search.3. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. This is very difficult to accomplish when the prior art is unknown when the claims are drafted.4 (Cite as: PLIREF-PATAPP s 4. .P. No Claim to Orig.3. Works.3. Festo Corp. Shoketsu Kinzoku Kogyo Kabushiki Co. 2000).4) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G..4 END OF DOCUMENT © 2008 Thomson/West.2d 1865 (Fed.3. the doctrine of equivalents is not available for that claim element. December 2001 Chapter 4: The Novelty Search § 4. 234 F.4 Avoid Festo A reason to conduct a thorough novelty search is to avoid the holding of Festo. [FN1] According to Festo.4 FOR EDUCATIONAL USE ONLY How to Write Pat.

and in some countries. Foreign filings usually need to be effected within one year of the United States filing date to obtain the benefit of the Paris Convention and other treaties. It makes very little sense to spend $10. it can approach the cost of the initial United States filing.3. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9.PLIREF-PATAPP § 4. PLIREF-PATAPP s 4. it makes eminent sense to conduct a novelty search before making the *4-7 decision of whether or not to file international applications. such as Japan.000 on international applications only to learn that an anticipatory reference was sitting in the files of the United States Patent Office. no search report is received from the United States Patent Office sufficiently early to be helpful in determining whether or not to file internationally.5 END OF DOCUMENT © 2008 Thomson/West. in view of the cost of foreign filing.3. US Gov. Often. Application s 4.3. Accordingly.3. The cost of international applications is very high.5) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.5 (Cite as: PLIREF-PATAPP s 4.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Works.000 to $20. No Claim to Orig.3.3 Why Order a Novelty Search? *4-6 § 4.5 Foreign Filing Decisions Many searches are useful in determining whether or not to file international applications. December 2001 Chapter 4: The Novelty Search § 4. .

then it is possible to finetune the application based on the results of the novelty search." i. many practitioners have the novelty search conducted and the patent application prepared "in parallel. Before recommending to a client whether or not to conduct a novelty search. or that changes are needed in the United States application before it is filed internationally. There are many times that a patent application has to be prepared very quickly. These situations often arise in dealing with university researchers who are the leaders in their field. The situations include the following: 1. December 2001 Chapter 4: The Novelty Search *4-7 § 4. those situations need to be considered. The patent application should be filed without first conducting a novelty search. § 102(b) is running. the results of the novelty search may indicate that the preparation of a continuation-in-part application is needed. even when there is insufficient time to complete a novelty search before filing the United States application.S. The client can afford only either a novelty search or a patent application. It makes little sense to order a novelty search for a client that cannot afford both a novelty search and a patent application. Even if a United States application has been filed. or about to release the product. If the results of the novelty search are available before the application is completed.e. there is nothing available in the published literature. Another time when nothing can be learned by the novelty search is when the inventor is very knowledgeable in the field and is doing research at the cutting edge of the technology. as discussed in the preceding section. or the technology has a tradition of secrecy and nonpublication. Frequently there is insufficient time to order a novelty search before filing a patent application. Other situations include when a statutory bar under 35 U. Application s 4. Another reason for not conducting a novelty search is that there is nothing to be learned by it. 2. there are many situations in which a novelty search is not ordered.4) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. If the novelty search comes out favorable. because the technology is so new. at the same time. then. No Claim to Orig.. in absolute novelty countries.4 Why Not to Order a Novelty Search Although there are many good reasons for ordering a novelty search. are "absolute novelty" countries. 3. Works. *4-8 including Japan and Germany. When there is limited time available for conducting a novelty search. Another situation in which an application needs to be filed promptly is when the client is ready to publish a paper about the invention. For example. and the client cannot afford the patent application because money was spent on the novelty search.C. if the client is about to release the product and needs "patent pending" on the product to deter potential competitors from copying the product. the author has often been able to develop a "surprise" reference as a result of a novelty search.4 (Cite as: PLIREF-PATAPP s 4. it may be valuable to complete a novelty search afterwards in view of the advantages discussed in the preceding section. Many foreign countries. However. In some technologies. it would be impossible to obtain a patent.4 © 2008 Thomson/West. the application must be filed quickly. . Thus. even with researchers. it was very foolish to order the novelty search. and there is interest in international filing. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. PLIREF-PATAPP s 4.PLIREF-PATAPP § 4. If a paper is published about the invention before the United States patent application is filed.4 How to Write Pat. US Gov.

PLIREF-PATAPP § 4. . Works. No Claim to Orig. US Gov.4 (Cite as: PLIREF-PATAPP s 4. Application s 4.4) FOR EDUCATIONAL USE ONLY Page 2 END OF DOCUMENT © 2008 Thomson/West.4 How to Write Pat.

Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. along with guidance as to the budget. US Gov.5 How to Write Pat. all that needs to be done is provide the searcher with sufficient information to investigate the patentability of the features that are most likely patentable.5 (Cite as: PLIREF-PATAPP s 4. Application s 4. No Claim to Orig. Once the searcher is chosen.5 Procedure for Ordering a Novelty Search Ordering a novelty search is a straightforward procedure.PLIREF-PATAPP § 4. Works.5) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. . PLIREF-PATAPP s 4.5 END OF DOCUMENT © 2008 Thomson/West. December 2001 Chapter 4: The Novelty Search *4-9 § 4.

5. December 2001 Chapter 4: The Novelty Search § 4.5. More than one searcher may be used. a second searcher for computerized literature searches. and mechanical. such as electrical. Choosing an incompetent searcher. No Claim to Orig.1 Selecting the Searcher Selection of an appropriate searcher is often problematic.5. A first searcher can be used for the files of the Patent Office. Not only can the cost of the search be wasted. Searchers specialize in particular areas.5. be certain that the searcher is competent in the particular technology. Application s 4.PLIREF-PATAPP § 4. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9.5 Procedure for Ordering a Novelty Search *4-9 § 4. When picking a searcher. metallurgical. but a false sense of security can be the result. Works. computer. . electrical. PLIREF-PATAPP s 4. biotechnology. is foolhardy.5. The best guidance can be obtained from other practitioners who have had success with particular searchers.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.1 (Cite as: PLIREF-PATAPP s 4. US Gov. chemical.1 END OF DOCUMENT © 2008 Thomson/West. and a third searcher for foreign patents.1 FOR EDUCATIONAL USE ONLY How to Write Pat. or a searcher not competent in a particular technology.

Works. December 2001 Chapter 4: The Novelty Search § 4.2 END OF DOCUMENT © 2008 Thomson/West. *4-10 The budget should be specified to the searchers. If drawings or photographs of the invention are available.5.5. all that needs to be stated in the search request letter is to conduct the "usual" novelty search.5. The search request should identify those features of the invention that the inventor believes may be patentable. since it can help identify the classes that should be searched. the searcher needs to be told that. they should be provided. Generally. provide information sufficient that an adequate search can be conducted.5.5 Procedure for Ordering a Novelty Search *4-9 § 4. they can be provided to the searcher. No Claim to Orig. PLIREF-PATAPP s 4. If the search is to extend beyond the files of the Patent Office.2 (Cite as: PLIREF-PATAPP s 4. It is also helpful to identify the advantages of the invention. Most searchers have standard charges.2 FOR EDUCATIONAL USE ONLY How to Write Pat. . Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. Application s 4. The searcher should be encouraged to consult with the examiner in a particular art. the more information the better.2 Information to Include in the Search Request In the search request. Competent searchers often do this on their own.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.5. Having a relevant patent can be of great assistance to the searcher. US Gov.PLIREF-PATAPP § 4. The examiners are the best source of information for identifying the classes in which a search should be conducted. and if a standard search at the standard charge is to be done. If any patents or prior art are available.

The searcher identifies the classes in which the invention is classified using the Manual of Classification provided by the Patent Office. In some technologies." [FN2] The searcher. Computer searches are particularly useful when drawings are not important in conducting the search. a computer search can be used. in some instances. The typical novelty search is conducted only in the files of the United States Patent Office.5. manual. usually manual. United States patents are also available on compact discs.3 (Cite as: PLIREF-PATAPP s 4. Also. such as in the chemical arts or chemical process arts. Computerized databases generally do not include drawings. including the full text of the patent. often the searcher is authorized and requested to complement the search in the Patent Office with a literature search.5. No Claim to Orig. rather than conducting a manual search. US Gov. So called because in the early days of the Patent Office. Before ordering a search. Further. and the like.5. This is easy to do in Washington.5. or both can be searched.3 FOR EDUCATIONAL USE ONLY How to Write Pat. shoe boxes were used for holding patents. computer software. Computerized searches can be valuable where certain key words can be searched. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. and answer the question as to what literature would have valuable information. More patents are becoming available on computer databases. or the search would be better conducted by a computer using an appropriate *4-11 database. pulling the shoe. if such a search is appropriate. since all the patents in a given class are kept together in a "shoe. the leaders are not American researchers and foreign patents can be a better search source. Most literature searches are also conducted through use of a computer. reviews the patents in the search room of the United States Patent Office. Thus. computer. A search limited to the files of the United States Patent Office is often inadequate in such fast-moving technologies as biotechnology. Searches of patents are not limited to manual searches. a manual search of the files in the United States Patent Office is inadequate. other literature. In those circumstances. It all depends upon the particular technology and the budget. Application s 4. Works. The inventor can provide a budget. . [FN2]. and patent literature. all the patents in a particular class are pulled and reviewed.3 END OF DOCUMENT © 2008 Thomson/West. PLIREF-PATAPP s 4.5. Thus. these considerations should be discussed with the inventor. in some technologies.5 Procedure for Ordering a Novelty Search *4-10 § 4.3 The Scope of the Search Invariably the search includes a review of United States patents. the inventor can provide key words for conducting a computer search. Then.PLIREF-PATAPP § 4. December 2001 Chapter 4: The Novelty Search § 4. depending on the invention. or combined searches can be done. and identifies those patents that are particularly relevant in order to provide them to the practitioner requesting the search.3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.

000 on a search when an application can be filed for $3. PLIREF-PATAPP s 4.4 END OF DOCUMENT © 2008 Thomson/West. and the searcher's overhead.5. . the technology involved. No Claim to Orig.5.5. depending upon the complexity of the search.4 The Cost of the Search The amount of effort afforded to the novelty search is primarily a factor of the cost of preparing a patent application.4 FOR EDUCATIONAL USE ONLY How to Write Pat. including the *4-12 searcher fees. It makes little sense to spend $5.5 Procedure for Ordering a Novelty Search *4-11 § 4.4 (Cite as: PLIREF-PATAPP s 4. which typically are between $150 and $500.5. Application s 4. the quality of the searcher. In 1992 dollars.5. the total cost for a novelty search is usually less than $1. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. US Gov.PLIREF-PATAPP § 4.4) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Works. December 2001 Chapter 4: The Novelty Search § 4.000.000.

Often. (b) A drawing is enclosed. (f) Explicitly allow the searcher to come back and ask for further authorization. PLIREF-PATAPP s 4. (c) A United States patent is enclosed to assist the searcher in identifying the classes to search. Works. and only the files of the United States Patent Office will be examined. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. the search request can repeatedly continue to be moved to the bottom of the searcher's stack. (d) The novel features are identified. Truly a picture is worth a thousand words to the searcher.5. Allow the searcher to have the option of asking for further authorization. December 2001 Chapter 4: The Novelty Search § 4. because of the complexity of the technology or the fact that the search needs to cover many classes.5 FOR EDUCATIONAL USE ONLY How to Write Pat.5 Example of a Search Request Letter A typical request letter is provided as Exhibit 4-1.5 (Cite as: PLIREF-PATAPP s 4.5) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.5.5. which is of great assistance.5 END OF DOCUMENT © 2008 Thomson/West. If something beyond United States patents needs to be examined.PLIREF-PATAPP § 4. so the searcher knows what to look for. No Claim to Orig.5 Procedure for Ordering a Novelty Search *4-12 § 4. the searcher needs to be told. (a) The word "usual" is interpreted by most searchers to mean that the search will be conducted at the standard charge.5.5. and the following annotations apply to the exhibit. Otherwise. US Gov. the searcher cannot do an effective search within the "usual" guidelines. Application s 4. . (e) It is beneficial to include in the letter an expected deadline.

6 (Cite as: PLIREF-PATAPP s 4. Exhibit 4-2 is a sample of a standard notice that can be provided to clients. not a novelty search. then what should be ordered is a validity study. It can be included in the letter confirming that a search has been requested.PLIREF-PATAPP § 4. December 2001 Chapter 4: The Novelty Search *4-13 § 4. searchers are known to miss key references or search the wrong classes.6 END OF DOCUMENT © 2008 Thomson/West. . PLIREF-PATAPP s 4. Application s 4. Unreasonable expectations should not be encouraged. In addition. The notice regarding limitations does not have to be a separate form. The client should know exactly what is being paid for. setting forth the limitations of novelty searches. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9.6 Limitations of a Novelty Search Novelty searches have significant limitations. It is recommended that this form be provided to the client at the time the novelty search is ordered.6 How to Write Pat. Usually they are limited to the files of the United States Patent Office from which patents can often be missing. Searchers are not "perfect.6) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. It is extremely important that the client be advised of the limitations of a novelty search." and a "perfect" search is not financially warranted. or in the search report itself. including the limitations on the search. US Gov. Works. No Claim to Orig. If a search approaching perfect is needed.

it is not advisable to present negative conclusions in writing). Often. which features are patentable. The principal reason is that the practitioner may be wrong. Application s 4. the following subjects need to be covered: 1. A brief discussion of the more pertinent references. that should not be expressed in writing. The conclusion.7 (Cite as: PLIREF-PATAPP s 4. December 2001 Chapter 4: The Novelty Search *4-13 § 4. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9.PLIREF-PATAPP § 4. The references developed by the search. Anything that is written relating to a patent application should be written with the assumption that it will be discovered by an adversary during litigation. not the practitioner.7) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. When discussing the references. No Claim to Orig.7 Reporting the Results of the Novelty Search In reporting the results of the novelty search to the client. Thus. There are many reasons for this. Any discrepancy between the analysis of a reference in an opinion letter and the analysis provided to the Patent Office in an information disclosure statement can give rise to probing crossexamination during litigation. in many circumstances. consider that the references will need to be discussed in an information disclosure statement (see chapter 8). The subject matter of the search. respectively. for these reasons. *4-14 5. a brief discussion of novelty and the "nonobviousness" requirements. A reminder of the limitations of the novelty search. in describing the references. © 2008 Thomson/West. 4. 6. The author believes that if a conclusion is reached that the invention is not patentable. and the inventor should be requested to review the references and call and discuss the results.7 How to Write Pat. . For an unsophisticated client. Another reason for not providing a negative opinion is that there may be features of the invention that are not appreciated by the practitioner. 2. if it appears that the results are negative. Such a letter could have a devastating effect on a jury or judge. and it should be assumed that whatever is stated about the references in the report to the client will also be stated to the Patent Office. if the conclusion is positive (as discussed below. The practitioner may have misinterpreted a reference. and the letter about nonpatentability can be discovered during litigation of a patent that issues on the invention. Therefore. the inventor. 3. is in the best position to determine what makes the invention unique compared to the prior art developed by the search. care must *4-15 be exercised. may be held to be inapplicable or waived in patent litigation. the results should be reported without expressing an opinion. or read too much into it. Works. Exhibits 4-3 and 4-4 are sample letters reporting search results that were favorable and unfavorable. It is foolhardy to rely on the attorney-client privilege or the work-product privilege which. US Gov.

7) FOR EDUCATIONAL USE ONLY Page 2 PLIREF-PATAPP s 4. Application s 4. Works.7 (Cite as: PLIREF-PATAPP s 4. No Claim to Orig. .PLIREF-PATAPP § 4.7 How to Write Pat.7 END OF DOCUMENT © 2008 Thomson/West. US Gov.

Searcher Re: Novelty Search re "Portable Widget" Our File No. In addition. This material has never been used for forming such a complex shape before. US Gov. T. (e) We need the search results within three weeks.5 in text. 4-1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. 4-1 (Cite as: PLIREF-PATAPP 4 Exh.000. which are represented by the enclosed United States Patent (c) No. new part. 4-1 END OF DOCUMENT © 2008 Thomson/West. Application 4 Exh. you cannot meet this deadline. please let me know. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. 4-1 FOR EDUCATIONAL USE ONLY How to Write Pat. the portable scanner is extremely lightweight and portable.56 Dear Mr. which is believed to be novel. PLIREF-PATAPP 4 Exh. please contact me in advance. our client has gone to material Y for the housing.5. 1234. No Claim to Orig. . [FNa1]. (f) If further authorization is needed. (b) The subject matter is shown in the attached drawings. Unlike prior art scanners. 5. conventional parts F. This was done by replacing conventional part A with part B. The widget shown in the attached drawings is useful for scanning inventory in the supermarket. Annotations--see § 4. If for some reason.PLIREF-PATAPP 4 Exh. instead of using material X. December 2001 Chapter 4: The Novelty Search *4EX-1 Exhibit 4-1: Letter Ordering Novelty Search Mr. and H were combined into a (d) single. Further.000. Searcher: (a) [FNa1] Please conduct the usual novelty search for the above-identified invention. Works. G.

United States patents are divided into classes. 2. Recent studies have found that from 10 to 20 percent of the patents in some classes are missing. or a competitor may reach a different conclusion. searchers are not perfect and sometimes may not search a class which may contain relevant art. However. a relevant patent may be missed because it was missing from the file. PLIREF-PATAPP 4 Exh. Thus. and commercial activities are not developed during a novelty search. Thus. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. foreign patents. 4-2 END OF DOCUMENT © 2008 Thomson/West. 4. using. The patentability of an invention is a difficult legal question. December 2001 Chapter 4: The Novelty Search *4EX-3 Exhibit 4-2: Notice to Clients Regarding Patent Novelty Searches Novelty searches for patents have limitations that should be considered in using the results of a search. 3. 4-2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. 5. US Gov. The search conducted was a novelty search and not an infringement search. An infringement search is conducted to determine whether making. a judge. The enclosed opinion is an informed opinion regarding the patentability of your invention. No Claim to Orig. 4-2 FOR EDUCATIONAL USE ONLY How to Write Pat. and reasonable minds can differ. Works. A search only covers issued United States patents. Patents may be missing from the search files.PLIREF-PATAPP 4 Exh. Application 4 Exh. 4-2 (Cite as: PLIREF-PATAPP 4 Exh. or selling an invention would infringe a United States patent. An infringement search is more comprehensive and more expensive than a novelty search. It is possible that an examiner. . The limitations include the following: 1. United States patent applications that have not issued as a patent. periodical articles. A searcher searches in the classes that the searcher believes most closely relate to the art of the invention. unless indicated otherwise in the search report.

Application 4 Exh..804. Also. Works.00 Dear Mr. Client: In accordance with your request..835 3.915. the GHI patent discloses a .780.790 3. This patent discloses a . I previously gave you a notice regarding this...S. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. -----------------------1. it is necessary to meet the standards of 35 U.. it is necessary that your invention be nonobvious.111 Inventor -------ABC DEF GHI JKL MNO PQR None of the patents shows your invention. Before investing in a patent application.C. December 2001 Chapter 4: The Novelty Search *4EX-5 Exhibit 4-3: Letter Reporting Novelty Search Results Favorable Mr. a patent is only worth something if there are potential customers for the invention... which would cost about $ _______________ for your invention.. T. Neither of these systems is tied in with . a single copy of each of which is enclosed: United States Patent No. It is our understanding that the XYZ prevents hijacking. US Gov.. Another interesting patent developed is the MNO patent. we see no reason why you cannot get a patent. Based on the results of the search.... 4-3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. For example.911. . 4-3 FOR EDUCATIONAL USE ONLY How to Write Pat. The DEF patent shows an . you may wish to investigate the market potential of the invention.. and none provides for . © 2008 Thomson/West. I wish to remind you of the limitations of the search. Our search developed the following patents. In order to obtain a patent. 4-3 (Cite as: PLIREF-PATAPP 4 Exh.999 3.. For an invention to be nonobvious. we had a novelty search conducted directed to your XYZ for airplanes. However...473 3. § 103. 0000.758. which states in pertinent part: *4EX-6 A patent may not be obtained . Client Re: Patent Novelty Search re XYZ Our File No.910..PLIREF-PATAPP 4 Exh. No Claim to Orig.725 3. if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

4-3) Page 2 Sincerely yours. US Gov. PLIREF-PATAPP 4 Exh.PLIREF-PATAPP 4 Exh. . 4-3 (Cite as: PLIREF-PATAPP 4 Exh. Works. Application 4 Exh. 4-3 END OF DOCUMENT © 2008 Thomson/West. 4-3 FOR EDUCATIONAL USE ONLY How to Write Pat. No Claim to Orig.

" The standard for this is set forth in 35 U. however.808. No Claim to Orig.. § 103. we conducted a novelty search for your harvester.. 3. 4. US Gov. and 4..789 are cited of general interest to show additional .403 4.733. Element A of this patent.. 3.816 3.. if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.. 0000.S.. which states in pertinent part: A patent may not be obtained . -----------------------2.816 discloses ...039.733.039 3. 4-4 FOR EDUCATIONAL USE ONLY How to Write Pat. *4EX-8 In order to obtain a patent.798 4.653.502.568.428 4.422. Works. however. The search developed the following United States patents.C. .... Inventor: In accordance with your request..00 Dear Mr.PLIREF-PATAPP 4 Exh..499. I am concerned that in attempting to obtain a patent.. patent 3. provided with a head or nozzle which . 4.759. and 3.499.807.789.759 3... Patents 3..436 3. it is necessary that your invention be "nonobvious.403. None has . a single copy of each of which is enclosed: United States Patent No..... the Patent Office may take the position that it would be obvious © 2008 Thomson/West.807.. is not attached to . Inventor Re: Patent Novelty Search re: Harvester Our File No.789 Inventor ---------Inventor A Inventor B Inventor C Inventor D Inventor E Inventor F Inventor G Inventor H Inventor G Patent No. Application 4 Exh.502.502. December 2001 Chapter 4: The Novelty Search *4EX-7 Exhibit 4-4: Letter Reporting Novelty Search Results Negative Mr. T.653.436 also show . Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. The search was directed to a motorized harvester . Patents 2. 4-4) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.568.816.808.789.. 4-4 (Cite as: PLIREF-PATAPP 4 Exh..798 discloses .

and call me to discuss the possibility of obtaining a patent and proceeding with a patent application. Application 4 Exh.499. US Gov.798 devices or the Inventor B Patent No. Sincerely yours. No Claim to Orig. The Patent Office may take the position that to make such a combination would be "obvious" and you are not entitled to a patent. 4. consider my concerns.816. PLIREF-PATAPP 4 Exh. 4-4 END OF DOCUMENT © 2008 Thomson/West. Please review these references. . 4-4 (Cite as: PLIREF-PATAPP 4 Exh. Works. 4-4) Page 2 to modify the Inventor G Patent No.733. 3.039 device by providing an element A movable relative to element B as shown in United States Patent No.502. 3.PLIREF-PATAPP 4 Exh. 4-4 FOR EDUCATIONAL USE ONLY How to Write Pat.

Usage is governed by contract with Thomson.IP POOL 5727539 Your Search: Date/Time of Request: Client Identifier: Database: Lines: Documents: Images: "TOC SELECTIONS" Tuesday. 2008 06:48:00 Central WLI PLIREF-PATAPP 13915 183 0 The material accompanying this summary is subject to copyright. January 22. West and their affiliates. .Westlaw Attached Printing Summary Report for 1.

C.Q. [FN1]. drawings serve other useful functions in patent applications. if not impossible. Also. 133 U. No Claim to Orig.2d 950. [FN2] Consequently. 1962). Maclaren v. 1981).1) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. [FN2]. 535 F.P.S. When the drawings of the original application contain features that are not described in the text. cert. For most patent applications." Many complex concepts or inventions are difficult. 209 U. 302 F. [FN1] Drawings can also be used in subsequent litigation to *5-4 interpret the meaning of ambiguous claims. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. B-I-W Group. Inc. .A. 513 (2d Cir.S. Works.2d 1367.P.1 (Cite as: PLIREF-PATAPP s 5. 190 U.).1 Introduction Drawings can be an important substantive aspect of a patent application. April 2005 Chapter 5: Drawings *5-3 § 5. drawings form the sole disclosure in design patents. In addition to providing valuable information.A. denied . US Gov. it is important to prepare the drawings carefully. 1001 (1976). In re Berkman. and not to consider them a mere afterthought. The most informative section of many electrical and mechanical patents can be the drawings depicting circuit diagrams or mechanical structures.Q..S.C.1 END OF DOCUMENT © 2008 Thomson/West. 429 U.PLIREF-PATAPP § 5. to understand without drawings. Application s 5. 45 (C.1 How to Write Pat.P.P. In re Wolfensperger. Drawings can also be used to define the scope of original disclosure and of the claims.P. PLIREF-PATAPP s 5. the drawings can be relied upon to form the basis of subsequently expanded claims without loss of the original filing date.S. drawings prove the adage that "a picture is worth a thousand words. 537 (C.Q.

no filing date is awarded without a drawing. be provided. or article of manufacture. whenever the specification of a process application describes and refers to a drawing. In the latter case. composition-of-matter applications are generally accepted without drawings. [FN8] There is a distinction between applications that require drawings to understand the invention. April 2005 Chapter 5: Drawings § 5.1 FOR EDUCATIONAL USE ONLY How to Write Pat. the application must adequately disclose the apparatus. [FN5] Some classes of invention often do not require drawings. When such a request *5-6 is made. *5-5 3.1 Introduction *5-4 § 5. and applications in which the nature of the invention merely admits of an illustration by a drawing. No Claim to Orig. For example. the applicant has two months from the date of notice to submit the additional illustrations. Coating or impregnating a conventional article. [FN7] However. a filing date is awarded. if an unconventional apparatus is required to practice a claimed process.1. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. [FN10] When submitting additional illustrations. but the examiner may request additional illustrations of the invention. 2. such as a new hydraulic system. [FN4] Whether a drawing is required is a question within the discretion of the Patent Office. the specification needs to © 2008 Thomson/West. Moreover. and a filing date will not be awarded until proper drawings are received. If the examiner finds that a drawing is required.1. of course. An application claiming a process is generally accepted without drawings. Making an article from a particular material or composition.1 When Drawings Are Required Drawings must be furnished with the patent application where necessary to understand the invention sought to be patented. Similarly.PLIREF-PATAPP § 5. If there is doubt as to whether a drawing is required. the patent application is forwarded to the examining group to resolve the question.1 (Cite as: PLIREF-PATAPP s 5. unless the invention involves a detailed structure or arrangement of the laminated sheets. A laminate of specific materials. . Application s 5. unless significant details of structure or arrangement of the article are involved in the claims. whose sole distinguishing feature is the use of a particular hydraulic fluid within the system. The sole distinguishing feature of the invention is the presence of a particular material. Works. then a drawing must be filed before the application is deemed complete. Examples of inventions that generally do not require drawings are: 1.1. US Gov. The Patent Office inspects applications that are submitted without drawings to determine whether the invention can be understood without drawings. [FN9] In the former case. such as a sheet of paper or cloth. [FN3] Drawings are necessary for most inventions that claim a machine. [FN6] All these examples have one thing in common: the written description can adequately and completely disclose the invention without drawings. and an adequate disclosure may require drawings of the apparatus.1. in some cases a drawing is required. the drawing must.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. and 4. device. without a drawing's being necessary to understand the subject matter claimed. such as process or method applications. other than the mere order of the sheets.

F. [FN18] it is dangerous to rely on the drawings to define the scope of the invention. § 1. [FN7]. 1. 37 C. For one thing. Moreover. the drawings can be later used to change the scope of the claims. Office 947. 1974).R. M.1 (Cite as: PLIREF-PATAPP s 5. 225 (Comm'r Pat. Drawings can be used to satisfy that full disclosure requirement. should such a need arise.E.1. [FN8]. drawings submitted after the filing date of the application are subject to two limitations.Q.81.C.P.D. Drawings can also benefit the patentee after the patent is issued. § 608. a detailed drawing makes it easier for the applicant to describe the invention. Cal. [FN15] One final note of importance that is related to the substance of drawings. if the patent is infringed. [FN3].1.S. [FN10].S.1) Page 2 be amended to include a description of those drawings.1 FOR EDUCATIONAL USE ONLY How to Write Pat.1.81(c). Inc.S.PLIREF-PATAPP § 5. 35 U. © 2008 Thomson/West. the Patent Office allows subsequent amendment of claims to include subject matter that has been fully disclosed in the original application. *5-7 since it is easier for the layperson to understand drawings than the complex structure and language of the claims and specifications. Id. [FN16] No invention can be saved by features that appear only in the figures and are not mentioned in the text. Works. In addition. It is advisable to include drawings of the invention with the initial application if there is any doubt as to whether they are required. [FN12]. The main reason for this is that if the drawings are "essential. More importantly. Supp.P. [FN17] Although drawings can be used to interpret or understand ambiguous claims. the court can rely on the drawings to interpret or understand the scope of ambiguous claims. Jack Winter. No Claim to Orig. In re Meyers. Koratron Co. 181 U.S. [FN6]. US Gov. it cannot be limited or distorted by reference to the drawings.P. M. [FN11]. § 1.01(f). 738 Off. Id." no filing date is awarded until the drawings are filed. 120 U. [FN4]. . Application s 5. 37 C. First.R. [FN9]. even if the drawings are not essential.P. v.Q. [FN14] Future drawings of a design patent can even be enabling for a subsequent utility application.P. § 113. [FN12] Including drawings in the patent application also provides other advantages to the applicant. it is easier to persuade a judge or jury that the claims cover the infringing article if the article resembles the drawings of the issued patent.F. § 601. Drawings allow the public to better understand the scope of the claimed invention. they cannot be used to supplement the original disclosure for the purpose of interpreting the scope of any claim. 35 U. [FN11] Second. § 113.C. [FN5]. Gaz. 1958). they cannot be used to overcome any insufficiency of the specification due to lack of an enabling disclosure. that is the purpose of the claims. 353 (N. If the claim language is clear and unambiguous.P.02. Further. 375 F.E. The drawings cannot be relied upon to define the invention.. [FN13] Consequently. or to include a limitation in a claim without "new matter" problems. Pat.

133 U.2d 1367.K.S. 190 U. cert.Q. 1976). US Gov.P. Gates Rubber Co. 692 (D.P.. Maclaren v. 190 U. 1946). Taylor Instruments Co.P. Works. [FN14].2d 950. 1976).. Porter Co.S.1. H.Q. 1962).S. 535 F.Q.. 537 (C. Id.PLIREF-PATAPP § 5.2d 226. B-I-W Group. No Claim to Orig.2d 1367. B-I-W Group. In re Wolfensperger.C.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Maclaren v. 513 (2d Cir.1 END OF DOCUMENT © 2008 Thomson/West.P. 329 U. 513 (2d Cir.A.1. v.1) Page 3 [FN13]. [FN15].1. 187 U. [FN18]. Application s 5. Colo.S. [FN17].P. Foxboro Co. v.1. . PLIREF-PATAPP s 5.Q.1 (Cite as: PLIREF-PATAPP s 5. 535 F. 157 F. Inc. [FN16].S. 302 F. 1975). 800 (1947). denied.. 232 (2d Cir. Inc.

Most good and experienced illustrators are busy and can require a long lead time to prepare the drawings.PLIREF-PATAPP § 5.2 FOR EDUCATIONAL USE ONLY How to Write Pat. even before beginning the draft of the specification. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16.2 (Cite as: PLIREF-PATAPP s 5.1 Introduction *5-7 § 5.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. the drawings should be ordered very early. Consequently.2 END OF DOCUMENT © 2008 Thomson/West. April 2005 Chapter 5: Drawings § 5. Patent drawings are generally prepared by professional patent illustrators familiar with the strict formal requirements of the Patent Office. .2 When to Order Drawings Drawings should be ordered very early in the process of preparing the application. Application s 5. when an early filing date is essential.1. No Claim to Orig.1.1.1. US Gov.1. PLIREF-PATAPP s 5. Works.

It is common practice for patent applicants to submit informal drawings with the application.P. and for other reasons. the quality of the lines is poor. [FN20].3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. they are preferred when preparation of formal drawings can hold up the filing of an application. informal drawings take less time to prepare than formal drawings.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Comm'r Pat. Informal drawings do not meet the formal standards imposed by the Patent Office for an issued patent but are acceptable for examination purposes. . Works. [FN20] However. and permanent. reproducible. US Gov. M. Drawings may be informal because they are not on the proper-size sheets. 91.3 END OF DOCUMENT © 2008 Thomson/West.3 Informal Versus Formal Drawings Drawings are classified as informal and formal. Thus. photocopies of pencil drawings are routinely accepted by the Patent Office. Rough sketches are accepted as informal drawings so long as they are readable and reproducible.1. 1927 Dec.02(b).1 Introduction *5-8 § 5. the required margins are not provided. Moreover.1.1. April 2005 Chapter 5: Drawings § 5.1.PLIREF-PATAPP § 5. if the application is never allowed.1. Informal drawings must at the minimum be readable.E. § 608. the cost of preparing formal drawings is avoided. [FN19] Pencil drawings are not acceptable because they do not constitute a permanent record. Ex parte Velander. Application s 5. [FN19]. Thus. No Claim to Orig.3 (Cite as: PLIREF-PATAPP s 5. PLIREF-PATAPP s 5.P. because they are less expensive to prepare than formal drawings. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16.

[FN21] For example. [FN21]. Co. it is important to remember that the essential purposes of the drawings is to facilitate comprehension of the invention and assist in *5-9 providing an enabling disclosure. © 2008 Thomson/West.2. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. generally include any structural details of sufficient importance to be described in the disclosure. [FN23] These include portions of *5-10 the invention that are not claimed but are described and shown to understand how the invention integrates into some other larger machine or process.02(d). the drawings do not have to graphically depict every conceivable element of the invention so long as they detail the essential features. § 608. 1973).PLIREF-PATAPP § 5.E. This involves confirming that each noun in the claim also appears in the drawings. and yet understand the improvement in the context of the original invention. In addition to the claimed elements of the invention. 37 C.83(a). § 1. US Gov. it is important to reveal all the important features of the invention in the drawings to satisfy the goal of providing an enabling disclosure.F. [FN24]. Works.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.P.1 What Should Be Included in the Drawings In determining the contents of the drawings. Also.R. When the invention is an improvement of an old machine.2 Contents of the Drawings *5-8 § 5.R. White. Application s 5. [FN24] This allows the public to distinguish between the claimed and existing inventions. if a dependent claim specifies that certain "valve means" is "a diaphragm valve.1 FOR EDUCATIONAL USE ONLY How to Write Pat.Q. v. this will avoid potential problems with new matter either in the Patent Office or during litigation. Starting about 2002. . M. It is much easier to visualize certain inventions using drawings. § 1.P. [FN22]. it is better to initially cross-check the claims against the drawings by engaging in a "circle the noun" activity. the Patent Office began to direct more attention to the requirement that the drawings must contain all features of the invention that are claimed. 37 C. to avoid the expense of amending the application by adding features to the drawings and the corresponding description of the specification. which can arise if it is necessary to add features to the drawings during prosecution. Hamington Mfg. 177 U.F.2. a patent application for a new waterbed frame would generally include the mattress in the drawing. Often. Consequently. [FN22] A guiding principle is to include all relevant and novel features of the invention. Accordingly. Under the rules of the Patent Office. 289 (5th Cir. The PTO has been taking the approach that every noun that appears in the claims should be reflected in the drawings." the drawings should show a diaphragm valve.2. However. For example. separate drawings usually are used to show (1) the improvement by itself and (2) the integration of the improved structure and the old machine. the drawings must contain every feature of the invention that is claimed.83(b).S. it is next to impossible to understand unusual concepts or complex features of an invention without a drawing.1 (Cite as: PLIREF-PATAPP s 5. [FN23].P. No Claim to Orig.2. April 2005 Chapter 5: Drawings § 5.

2. US Gov. No Claim to Orig. .2. Application s 5. Works.1 FOR EDUCATIONAL USE ONLY How to Write Pat.1 END OF DOCUMENT © 2008 Thomson/West.1 (Cite as: PLIREF-PATAPP s 5.2.1) Page 2 PLIREF-PATAPP s 5.2.PLIREF-PATAPP § 5.

P. [FN26] If such a need arises. However. M.02(d). Pat. and electrical components may be illustrated in the form of graphic drawing symbols or labeled representations." [FN25].2 What Can Be Excluded from the Drawings The drawings do not need to show all the conventional features of the invention. 1904 Dec. those illustrations may be retained so long as they are designated by an appropriate legend.2.2 END OF DOCUMENT © 2008 Thomson/West. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16.2 (Cite as: PLIREF-PATAPP s 5.E. such as "Prior Art. US Gov. Gaz. [FN26].2. Office 1337. 103. 109 Off. Comm'r Pat. April 2005 Chapter 5: Drawings § 5. motors. unless they are needed to understand the applicant's invention.2.P. [FN25] Conventional features such as valves. even conventional features must be shown in the drawings when their detailed illustration is essential for a proper understanding of the invention.2. Application s 5.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.2.2 FOR EDUCATIONAL USE ONLY How to Write Pat.2 Contents of the Drawings *5-10 § 5. PLIREF-PATAPP s 5. § 608. Drawings illustrating the prior art are generally not used and can be canceled by the examiner. No Claim to Orig. Ex parte Elliot. Works. .PLIREF-PATAPP § 5.

the head being generally circular and having at least two substantially identical recesses in its periphery. . Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. The broadest apparatus claim of the patent reads: A tool for cleaning a grill having a plurality of parallel.2. these drawings would have been included to illustrate the manner of using the invention. while Figures 2 and 3 show the tool being used to simultaneously clean two wires of the grill. Accordingly. . Although a grill is not claimed in the patent.3 END OF DOCUMENT © 2008 Thomson/West. Works.2. These figures also show that the tool can be used equally effectively by both left-handed people (Figure 2) and right-handed people (Figure 3). each recess being sized to receive a grill wire with the head closely engaging the grill wire for cleaning the grill wire by moving the tool along the wire. the head and handle being integral and manufactured as one piece and the tool being planar. spaced-apart wires comprising: (a) a handle.2. Figure 1 shows the tool being used to clean a single wire. No Claim to Orig. and (b) a head attached to the handle. [in general. the method comprising the steps of: (a) selecting a tool comprising .3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. . The grill is an external structure presented in the drawings in order to show the integration between the invention and the structure. and (b) positioning the tool so that one of the wires of the grill is positioned in one of the recesses and an adjacent wire of the grill is positioned in another recess. In Exhibit 5-1.2. April 2005 Chapter 5: Drawings § 5. it is necessary to show these wires to be able to explain how the tool works.3 Example of Drawings Showing Claimed Features An example of drawings illustrating all the claimed aspects of an invention is shown by Exhibit 5-1. US Gov.3 FOR EDUCATIONAL USE ONLY How to Write Pat.2 Contents of the Drawings *5-11 § 5. Figure 1 shows a front view of the grill cleaner showing all the essential features of the invention that are specified in the claims. Application s 5.3 (Cite as: PLIREF-PATAPP s 5. and *5-12 (c) moving the tool along the wires with the head closely engaging the wires for cleaning the wires. Variations presented in narrower claims relating to the number and location of the peripheral recesses are also shown in the drawings. the tool of cleaning]. all three figures illustrate some aspect of the method of using the tool in addition to disclosing features of the tool.2. the recesses being spaced apart from each other so that two wires can be simultaneously fit into a respective recess for simultaneously cleaning two wires. The individual wires of a grill are shown in addition to the tool. The patent also claims a method for cleaning grills that reads as follows: A method for cleaning a grill comprising a plurality of parallel wires. Even if a method claim was not included.PLIREF-PATAPP § 5. PLIREF-PATAPP s 5.

PLIREF-PATAPP § 5. When there is doubt as to whether to include a particular drawing.3 (Cite as: PLIREF-PATAPP s 5. at worst the examiner requests these drawings to be excluded and all reference to the drawings omitted from the application. No Claim to Orig. It also prevents sloppy work by the patent practitioner. The drawings can contain as many figures as necessary to show the invention. This approach also avoids the problem of a draftsman's not including an important view. As the complexity increases. on a larger scale. These figures can be in the form of plan. forcing an early analysis of exactly what will be shown by the drawings. it is helpful to mentally dismantle each side of the object to identify the views that are necessary to completely disclose the invention. *5-13 Where the type of materials used in the invention needs to be conveyed by the drawings. The next step is to select the views and schematics of the invention to be included so that the drawings completely and precisely show the invention. the number of drawings depends on the complexity of the invention. US Gov. The patent practitioner generally identifies what is to be shown in the drawings and how it is to be shown. [FN28] Generally. The lack of an essential drawing bars acceptance of the patent application. and schematics that are available and their proper functions. The patent practitioner may also send the draftsman rough sketches of desired views. It is recommended that a draft of the "Description of the Drawings" section of the application be prepared at this time and that it be provided to the draftsman. many simple or axially symmetrical objects are sufficiently disclosed in only one or two views. Next.3 Drawing the Invention Preparation of the drawings is generally done by a skilled patent draftsman. without trying to imagine what the invention looks like from a written description. it is better to include it. section. [FN27] Detailed views of portions of the invention. if no prototype is available.3 How to Write Pat. When selecting the views that will be shown. . elevation. April 2005 Chapter 5: Drawings *5-12 § 5. together with a brief description of the important features of the invention. but an excess number of drawings does not adversely affect the filing date. can also be used when necessary to disclose critical aspects of the invention. the information provided to the draftsmen should include the materials used. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. such as by writing "plastic" or "metal" on the sketches. However. flow charts. Application s 5. This procedure avoids any confusion on the part of the draftsman as to exactly what drawings are needed and avoids the problem of draftsmen unnecessarily preparing excessive and expensive drawings. © 2008 Thomson/West. One way to do that is to send the draftsman a model or prototype of the invention. that image is conveyed to the draftsman. This process begins with the patent attorney's creating a mental image of what the inventor wishes to patent. This allows the draftsman to view the whole invention. Works. If repetitive drawings are provided.3) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. or perspective views of the invention or in the form of flow charts and schematics. While it is sometimes necessary to show several of these views. a photograph or blueprints of the invention can serve just as well. *5-14 The following discussion summarizes the various types of views. the number of drawings necessary to completely show the invention also increases.

F. The device is described in the patent abstract as: A lifting device is provided for lifting and inverting home-delivered bottled water containers. These drawings are shown in Exhibit 5-2. Application s 5. The handles are disposed on opposite sides of the frame and extend outwardly from the frame such that the longitudinal axes of the handles are substantially coincident with a straight line which. when the device is in use.3) FOR EDUCATIONAL USE ONLY Page 2 The drawings of a device for lifting and inverting cylindrical containers are used to illustrate some of the views described in this section. § 1.R. Id.PLIREF-PATAPP § 5. . The device comprises a semi-cylindrical frame and two handles.3 (Cite as: PLIREF-PATAPP s 5. Works. extends through the center of gravity of the bottle. No Claim to Orig. [FN27]. PLIREF-PATAPP s 5.3 How to Write Pat. 37 C. US Gov.84(i).3 END OF DOCUMENT © 2008 Thomson/West. [FN28].

Also apparent from this view is that the centerline of the axis of the handles passes through the center of gravity of the bottle. This orientation allows the belt attachment used to secure the water bottle to the lifting device to be illustrated.3. Works. The perspective view should be oriented to provide the maximum possible information about the invention. It is also important to orient the invention so that the portions of the invention that are relevant are visible.1 (Cite as: PLIREF-PATAPP s 5.3.1 FOR EDUCATIONAL USE ONLY How to Write Pat.3. US Gov. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. and the location of the handles are all clearly visible.3. the recess for securing the container in that cavity. The view is executed so that the semicylindrical cavity of the device.3.3 Drawing the Invention *5-14 § 5. Perspective views are much easier to understand than projected views and serve as a basis for interpreting the form and relationship of the subsequent projected views. The article should be positioned so that at least three surfaces of the *5-15 object are visible in the drawing. illustrated with a cutaway water bottle secured inside the device.1 Perspective Views The first drawing of an invention is often a three-dimensional perspective representation (also called a pictorial or isometric view) of the entire claimed invention. PLIREF-PATAPP s 5. . No Claim to Orig.1 END OF DOCUMENT © 2008 Thomson/West.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Application s 5. an important aspect of the invention. It acts as a visual summary of the invention. April 2005 Chapter 5: Drawings § 5. and in this capacity it is often selected by the Patent Office to be placed on the first page of the issued patent. Figure 1 of Exhibit 5-2 shows a perspective view of the lifting device. The perspective view of the invention allows the reader of the patent to quickly visualize the whole invention.PLIREF-PATAPP § 5.

Although not necessary. The front elevation view is the reference point around which the other views are identified. Once the front view is selected. Works. the Patent Office does not require that formal arrangement.3. linear distance L4 is slightly greater than the linear distance L3. such as a view along its longest dimension. Each of these views is basically an outline of the object as viewed from different directions. while the side views are referred to as "elevation" views. the side views or side elevation views are simply the views on the left or right side of the object. these words are still used to describe patent drawings.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. most inventions generally require additional views of the top. Application s 5. the side views. respectively.3. whichever view shows more relevant information is included. and top views are drawn arranged in a manner that shows the relationship of each of the views to each other (the top view is always placed at the top of the front view. Figure 2 shows that the rigid support extends slightly more than halfway beyond the horizontal center of the bottle.3. side.3.2 (Cite as: PLIREF-PATAPP s 5. The selection of the front view is determined by the shape and structure of the invention. In engineering drawings. Once the top and front views are determined. No Claim to Orig. If all the views are equally critical. US Gov. or sides of the invention. of the lifting device of Figure 1. Inventions that have complicated surface details are best represented by including both the left and right views. The view from the top of the building (corresponding to the floor "plan") became the "top plan" view.2 Front. Side. That is. However. and Top Views In addition to the perspective views. Figures 2 and 3 of Exhibit 5-2 are side and top views. Generally the view that shows the most important aspect or characteristic of the invention is called the front view. bottom. and usually there is insufficient space in patent drawings for that arrangement. and the side view at the side of the front view). Usually a drawing of either one of these views is sufficient. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16.3 Drawing the Invention *5-15 § 5. associated with the elevation of the building off the ground. . In that case. Figures 2 and 3 illustrate that the handles are substantially at the center of gravity in the preferred embodiment for effective rotation of the bottle when it is being inverted.PLIREF-PATAPP § 5. Figure 2 also shows *5-17 that the center of gravity of the water bottle is disposed within a hori- © 2008 Thomson/West. The top and bottom views are sometimes referred to as "plan" views. For example. the top plan view and the bottom plan view are easily determined. These words appear to originate from the historical use of these drawings by architects to describe the structure of buildings. became the "side elevation" views. then it is logical to *5-16 select a view that gives the greatest amount of information about the invention. Figure 3 shows that the longitudinal axes of the handles are colinear with a straight line (26) that passes through approximately the center of gravity of the water bottle. April 2005 Chapter 5: Drawings § 5. That makes the seating of the bottle more stable during lifting and inverting. These views were selected to illustrate important features of the invention.2 FOR EDUCATIONAL USE ONLY How to Write Pat. the front. since the latter is generally a mirror image of the former. The views that are selected for the drawing do not have to be presented in any preordained manner.

3. PLIREF-PATAPP s 5.2 FOR EDUCATIONAL USE ONLY How to Write Pat.PLIREF-PATAPP § 5.3. No Claim to Orig.2 (Cite as: PLIREF-PATAPP s 5.3.2) Page 2 zontal plane a distance L2 above the horizontal support from base 13 and extends through the bottle in such a way that equal weights of liquid are disposed above and below the horizontal plane 27. Works. Application s 5.3. US Gov. .2 END OF DOCUMENT © 2008 Thomson/West.

3 (Cite as: PLIREF-PATAPP s 5.3. It is especially useful when it is necessary to show the relationship between two or more internal components of the invention that are at different planes within the invention. *5-18 Three different partial sectional views are used to illustrate the combination pen and handcuff key device of Exhibit 5-4.3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.5. That view was used to explain the operating mechanism of the device. The offset section is most useful when the novelty of the invention is not in a single plane. A partial longitudinal sectional view of the device is shown as Figure 3 of Exhibit 5-4.3. That was done to make the sectional views simpler and easier to understand. the location of a sectional view is revealed by a cutting plane line. April 2005 Chapter 5: Drawings § 5. No Claim to Orig. It can also be used when it is not necessary to show the whole internal section of the invention. respectively. the cutting plane line is broken or offset in order to reveal inner details that are not in line with each other. This type of sectional view is used when it is necessary to show a large number of internal details of the invention.PLIREF-PATAPP § 5.3. A sectional view showing the cross-section of every element within device 10 would have been confusing. Both the writing element (14) and the handcuff lock element of the device (16) are shown in perspective in all three figures of Exhibit 5-4." Figures 1 and 2 show partially broken-away perspective views of the device with the writing element and handcuff activator. An offset section is similar to a full section except that instead of being a straight unbroken line. US Gov. as described in section 5. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16.3 Sectional Views Sectional views are views of an object that reveal its inner construction by passing a cutting plane through the object.2 below. Figure 1 of Exhibit 5-3 shows a front perspective view of a simulated neon sign that is partially broken away.3 Drawing the Invention *5-17 § 5. A partial or broken-out section is useful to reveal a portion of the inside of an object. Sometimes.3 FOR EDUCATIONAL USE ONLY How to Write Pat.3. the sectional view passes through the entire object along its largest dimension. The device is a "combination writing instrument and handcuff activating device comprising an elongated housing having a writing element and handcuff locking element axially movable therein. The longitudinal section of Figure 3 was taken along the largest dimension of the device to show a large number of internal details within the invention. These views help clarify complex objects that consist of several components or parts.1. Application s 5.3. PLIREF-PATAPP s 5.3 END OF DOCUMENT © 2008 Thomson/West. Works. These figures establish the structural relationship between the internal elements and the external surface of the device. . This form of sectional view is used most commonly when it is necessary to show the structural relationship between the external and internal components of the invention. in operative positions. There are several types of sectional views. In a full section.

An exploded view can make it easier to understand complex mechanical inventions.PLIREF-PATAPP § 5. the separated parts of the same figure may be embraced by a bracket (for an example of the form of such a bracket.4 END OF DOCUMENT © 2008 Thomson/West. Exhibit 5-5 illustrates two exploded views of a magnetically suspended device for displaying photographs.4 FOR EDUCATIONAL USE ONLY How to Write Pat. PLIREF-PATAPP s 5. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16.3. Works.4 (Cite as: PLIREF-PATAPP s 5. When drawing an exploded view. US Gov.4) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.3 Drawing the Invention *5-18 § 5.3. or arrows. dashed connecting lines. The exploded view shows the hidden magnets as well as the structure of the cube. Application s 5.3.4 Exploded Views Exploded views are used to show the structural relationship between components. April 2005 Chapter 5: Drawings § 5.3. No Claim to Orig.3. see Figure 6 of Exhibit 5-12). . They are most useful to show the way in which parts fit together in the assembled whole.

3 Drawing the Invention *5-19 § 5.PLIREF-PATAPP § 5.3. density. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. END OF DOCUMENT © 2008 Thomson/West. .5) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Works.3. and the like.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Exhibit 5-6 shows a plot of unreacted carbon remaining in catalytic carbonaceous material that is used to produce hydrogen in a hydrogen generating process versus the number of times the carbonaceous material was cycled in the process.3. elastic modulus. Graphs can be used to show the superior properties of the claimed invention relative to the properties of prior art devices.3. April 2005 Chapter 5: Drawings § 5.5 (Cite as: PLIREF-PATAPP s 5. No Claim to Orig. These properties may include measurements of mechanical strength. Application s 5.5 Graphs and Charts Graphs and charts can be used to characterize and illustrate the novelty of an invention. US Gov. absorption of some characteristic wavelength.

as shown in Exhibit 5-8.3. April 2005 Chapter 5: Drawings § 5.3. Schematics. Exhibit 5-10 shows electrical circuits for an engine spark plug control apparatus.10. Exhibit 5-9 shows a diagram for the process of adding copper ions to cheese. Two examples of these schematics are shown in Exhibits 5-9 and 5. However. [FN30] These schematics use such standardized illustrative symbols as those commonly used in electrical and chemical engineering.3. are another useful form of drawings.6 Flowcharts and Schematics Flowcharts or flow sheets can be used [FN29] to show the flow of a process through sequential steps. *5-20 These types of drawings are most useful if the drawing itself is fully annotated such as shown by Exhibit 5-7.6 (Cite as: PLIREF-PATAPP s 5. as discussed below. [FN29]. PLIREF-PATAPP s 5.6) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.6 END OF DOCUMENT © 2008 Thomson/West. Id. it is proper practice to rely on the written specification to resemble what is schematically represented by the drawing as shown by Exhibit 5-9. Works. The flow sheet of Exhibit 5-7 shows the steps involved in a process of manufacturing hydrogen from fuel gases. § 1.F. No Claim to Orig.3 Drawing the Invention *5-19 § 5. .R.6 FOR EDUCATIONAL USE ONLY How to Write Pat. Flowcharts are also used to illustrate the sequential computational steps used in a computer program. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. which are approved by the Patent Office.3. [FN30]. Application s 5. The valve and piping symbols are commonly used in the chemical industry. US Gov.81(b). 37 C. such as diagrammatic views of a process and electrical circuit diagrams.3.PLIREF-PATAPP § 5.

7 (Cite as: PLIREF-PATAPP s 5. They are of particular importance when claiming chemical structures and processes. No Claim to Orig. CRC Press. April 2005 Chapter 5: Drawings § 5.7 END OF DOCUMENT © 2008 Thomson/West. these drawings are built directly into the specification rather than as separate drawings. which are published in the CRC Handbook of Chemistry and Physics. Application s 5.3. Works. Boca Raton.3. PLIREF-PATAPP s 5. . These drawings are of the form shown in Exhibit 5-11. They provide the simplest and perhaps the best method of designating organic compounds.7 Complex Chemical Structures Drawings of complex chemical structures can also be included in a patent application. US Gov.7 FOR EDUCATIONAL USE ONLY How to Write Pat.3. Florida. Chemical nomenclature and structural formulae are generally based on the rules promulgated by the IUPAC (International Union of Pure and Applied Chemistry).7) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.3 Drawing the Invention *5-20 § 5. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16.3.PLIREF-PATAPP § 5.3. Generally.

in Exhibit 5-12. PLIREF-PATAPP s 5. April 2005 Chapter 5: Drawings § 5.3. Removal is achieved by loosening the securing means (18) and pulling the device (10) from the bottle (note the brackets between the two parts of this figure).3. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. Application s 5.8 FOR EDUCATIONAL USE ONLY How to Write Pat.3.3. The device is then inverted and installed in the water dispenser as shown in Figure 5.3 Drawing the Invention *5-20 § 5. the use of the water bottle lifting device is illustrated (additional drawings of the device are shown in Exhibit 5-2). No Claim to Orig. These illustrations are generally provided when the method of using the invention is difficult to understand or if the method of using the device is claimed. Figure 6 of Exhibit 5-12 illustrates removal of the device from the water bottle *5-21 after the bottle has been installed. Works. Figures 4A and 4B illustrate the use of the device in lifting the water bottle for installation in a water dispenser.8 Illustrating the Use of the Invention Drawings can also be used to illustrate the use of a machine or device. Two persons can lift the bottle (20) with the lifting device (10) by gripping the horizontal handles (14 and 16) on either side of the bottle (20) and standing to an upright position. For example. .PLIREF-PATAPP § 5.8 END OF DOCUMENT © 2008 Thomson/West.3. US Gov.8) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.8 (Cite as: PLIREF-PATAPP s 5.

as a practical matter." [FN31] The main test now is whether the drawing is suitable for reproduction. Works. *5-22 The requirements for formal drawings are found in 37 C. the type of drawing ink. 2000). the Patent Office chief draftsman will approve the drawings.4 Formal Requirements The Patent Office has established formal requirements that must be met for a drawing to be acceptable. 20.84 remain unchanged. A new standard for patent application drawings has recently been set forth by the Patent Office. and the draftsman indicates the informalities and whether they can be corrected or whether new drawings are required.1].R. The applicant is then informed of the chief draftman's findings and notified that the drawings are admitted only for examination purposes.02. April 2005 Chapter 5: Drawings *5-21 § 5. END OF DOCUMENT © 2008 Thomson/West.85(a). US Gov. Reg. the Patent Office chief draftsman judges the sufficiency of the formal requirements of the drawing. § 1. the Office must consider the usability of the patent application publication as a prior art document when determining what drawing quality is needed to create the patent application publication.P. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16.R.4 (Cite as: PLIREF-PATAPP s 5.84 and described in detail in M. 37 C. Application s 5. 57. § 1. and the arrangement of the views on the drawing paper. they are deemed informal. If the original drawings do not satisfy the formal requirements. all the Patent Office now wants are drawings of sufficient quality to be used to create a patent application publication.F.4 How to Write Pat.PLIREF-PATAPP § 5. the size of margins. These formal requirements used to be strictly enforced.4) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. They include the type and size of paper to be used. § 1. Although the "technical" standards of 37 C.024 (Sept. 65 Fed. [FN31. [FN31.R. No Claim to Orig. As the PTO stated in the Federal Register: "Since the patent application publication will be a prior art document. The essential elements of these requirements are listed below. If the formal requirements are met.E.P.F.F. § 608. .1] While the examiner judges the sufficiency of the contents or disclosure in the drawings. [FN31].

4. April 2005 Chapter 5: Drawings § 5. a right side margin of 1. . so that the drawings do not overlap into the margins.7 centimeters (DIN size A4). [FN32] Because that last size corresponds to international standards. § 1.4.6 x 27.1 END OF DOCUMENT © 2008 Thomson/West. Size.1 FOR EDUCATIONAL USE ONLY How to Write Pat. The paper used for the drawings must be one of the following sizes: 8 1/2 x 11 inches (21. and Margins All drawings must be made on paper that is flexible.0 centimeters. and a bottom margin of 1. Each sheet must include a top margin of at least 2. No Claim to Orig. the draftsman will reject the drawings. smooth.4.R.R. or 21.PLIREF-PATAPP § 5. § 1. 37 C. US Gov.5 centimeters.1 (Cite as: PLIREF-PATAPP s 5. The Patent Office suggests two-ply or three-ply bristol board as the preferred medium.5 centimeters.1 Paper Type. otherwise. a left side margin of 2. white. Application s 5.4. enough room needs to be allowed for the prescribed margins.9 centimeters). nonshiny. and durable.84(g).4 Formal Requirements *5-22 § 5.84(f). PLIREF-PATAPP s 5. [FN32].1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. It is important to strictly adhere to the margin requirements. it should be used if there is any possibility that foreign applications using the drawings will be filed. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. [FN33] In arranging the views on the drawing sheet. [FN33]. Works.0 x 29.5 centimeters. The surface of the paper should be of a quality that allows easy erasure and correction with india ink.F. strong.F.4. 37 C.

R.P.02.PLIREF-PATAPP § 5. No Claim to Orig.2 FOR EDUCATIONAL USE ONLY How to Write Pat. § 608.4. 37 C. Computer-drawn illustrations can also be easily corrected. Works. [FN34]. [FN35] India ink erasure is used to correct any of the lines on the drawings. § 1. PLIREF-PATAPP s 5. [FN36] Generally it is safer to initially draw in pencil to allow easy correction. However.84(a)(1).4.84(a). Application s 5.2 END OF DOCUMENT © 2008 Thomson/West. M. . Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. April 2005 Chapter 5: Drawings § 5. One of the reasons why bristol board is used is that it allows easy correction with erasers. [FN35].P.F.4. § 1.E.4. it can be more time-consuming to input the drawing into the computer graphics program than it is to redo a hand drawing.4.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.4 Formal Requirements *5-22 § 5. 37 C. [FN36]. [FN34] The lines and letters in all drawings should *5-23 be uniformly thick and well defined to allow adequate reproduction.F.R.2 Drawing Ink and Erasure All drawings must be drawn with india ink or its equivalent in quality. US Gov.2 (Cite as: PLIREF-PATAPP s 5.

PLIREF-PATAPP § 5. US Gov.4. April 2005 Chapter 5: Drawings § 5. § 1. 213 U. [FN39]. it is not necessary to scale the drawing to any fixed scale.4 Formal Requirements *5-23 § 5. [FN37] The scale of the drawing should be large enough to allow the whole drawing sheet to be reduced by twothirds without blurring the features of the drawing. v.C.R.Q. PLIREF-PATAPP s 5. Each individual view should also be drawn large enough to show details of the invention without crowding lines in the drawing. Ashow Ltd. Morgan Constr.3 END OF DOCUMENT © 2008 Thomson/West.4. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. and aspects of the drawings such as spacing and length are open to normal engineering interpretation.S. [FN38] That requirement is imposed because the Patent Office reduces the size of the drawings during photographic reproduction.4. 37 C.F.F.3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.4. Co.3 FOR EDUCATIONAL USE ONLY How to Write Pat. No Claim to Orig. 37 C. [FN38].S.3 (Cite as: PLIREF-PATAPP s 5.84(h).P. Application s 5. Since they are not drawn to scale.84(k).3 Scale The components or parts of the invention must be drawn in proportion to each other.. However. Works. [FN39] [FN37]. 1982).4.R. . as long as the components of the invention are proportionately sized. 671 (D. patent drawings are regarded as mere schematics. § 1.

4. from the more general figures to the more detailed views. with the top of the drawing and the top margin on the right of the sheet. Works.84(i).R. 37 C. Application s 5.F. more detailed pictorial or sectional views.F.4. if the preferred size of the drawing is longer than the width of the sheet. US Gov. If a drawing is too large to be contained in one sheet.4 END OF DOCUMENT © 2008 Thomson/West. § 1.84(h)(2).4 Formal Requirements *5-24 § 5. In arranging the figures. that is. [FN42]. PLIREF-PATAPP s 5. with all the views on a sheet standing in the same direction. 37 C. [FN41] In other words. the shorter side of the sheet is used as the top of the drawing. In general. April 2005 Chapter 5: Drawings § 5. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. a reference view and its derivative sectional view should be placed adjacent to one another. However. Id. .4 Arrangement of Views The arrangement or layout of the figures on a drawing page should follow a logical sequence. All views on a sheet must have the same orientation.4. it may be broken up and drawn over several sheets of paper that can be put together to understand the complete invention. [FN42] [FN40]. Usually a pictorial representation of the entire invention is the first figure. [FN40] The preferred mode of orienting each view within the drawing is along the length of the sheet so that they can be read with the sheet held in an upright position.4 (Cite as: PLIREF-PATAPP s 5.4. the drawing may be shown in landscape orientation. the drawings cannot overlap.PLIREF-PATAPP § 5. [FN41]. When possible.4 FOR EDUCATIONAL USE ONLY How to Write Pat.4. § 1.R. the arrangement of the figures should follow the structure of the claims. No Claim to Orig. That is followed by other.4) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.

104 . for example. 204 . black. April 2005 Chapter 5: Drawings § 5. It is recommended that the first number used for an element in the drawings be higher than the last number used for a drawing to avoid confusing reference numbers and drawing numbers. for version 2. for version 1. when different versions of an invention are described. and uniformly thick and well defined. A draftsman can choose any style of lettering so long as the letters and figures are clear and distinct. [FN44] *5-25 When hatching or shading a region of the drawing. [FN45] Each line within the hatched region should be clear and distinct. For example. and Reference Numerals Every line and letter must be durable.4. a distillation column the 200 series. 200. That makes it much easier to follow the flow sheet and description. 202. and also avoids duplication of numbers in the drawings.5) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. 102.PLIREF-PATAPP § 5. [FN46] When necessary. . the plane upon which a sectional view is taken is indicated © 2008 Thomson/West. Works. For example. Also. consider using different series of reference numbers for each version. fine or crowded lines must be avoided. Each of the drawings should be consecutively numbered in the order in which it appears. and condensers the 300 series. The same part of the invention appearing in more than one view must always be designated by the same number. sufficiently dense and dark. and the same number should not be used to designate different parts. [FN48] Reference numbers should be placed in the drawing so as not to interfere with the drawing comprehension [FN49] and must not be used in association with brackets or inverted commas. if the application contains eight drawings. . The reference numerals on the drawings should measure at least one-eighth of an inch in height and should be placed on bare areas of the drawing sheet so that they are clearly visible. That same technique is useful for organizing process flow sheets where each unit operation is given its own number series. encircled.5 FOR EDUCATIONAL USE ONLY How to Write Pat.4 Formal Requirements *5-24 § 5. sufficiently spaced apart to enable the lines to be distinguished without difficulty. . All hatching patterns should be made by oblique.) Each element and subelement of the drawing also is identified by reference numbers. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16.4. US Gov. These numbers are used in the written disclosure to refer to features of the drawings. but may be disclosed in the specification. in which the two drawings shown are numbered Figures 4A and 4B.4.5 (Cite as: PLIREF-PATAPP s 5. Letters. 100. When drawing sectional views of the invention. and so on. reactor elements can be given the 100 series. . parallel lines.4. the same drawing number with the addition of consecutive alphabetic letters to identify similar views of different versions of an invention can be used to identify different configurations of the same version of an invention. [FN47] However. [FN43] The lines should be sufficiently thick to permit adequate reproduction. [FN50] Dimensions of the invention are not normally given on the drawing itself. or *5-26 enclosed within outlines. blank spaces should be left on shaded and hatched areas for applying the numerals. (An illustrative example is Exhibit 5-12. the first element can be numbered as 9 or 10. Application s 5. . For example.5 Lines. No Claim to Orig.

5 (Cite as: PLIREF-PATAPP s 5. 37 C.5 FOR EDUCATIONAL USE ONLY How to Write Pat.F. Application s 5.84(l) (1993). [FN43].84(p)(3). plan. 37 C. The ends of that broken line are numbered with numbers corresponding to the figure number of the sectional view.F. see also 37 C. 37 C. . 37 C.4. § 1. § 1. 37 C.F.4.R. see also 37 C. § 1. [FN47]. Id.84(l). § 1. [FN46].R.4. 37 C. § 1.F.84(p)(1).R.5 END OF DOCUMENT © 2008 Thomson/West.84(t) (1993).R. [FN49].84(m). [FN45]. [FN48].R.5) Page 2 by a broken line on a reference perspective.PLIREF-PATAPP § 5.R. § 1.F.F. US Gov.84(p)(3).84(n). § 1.R. Id. PLIREF-PATAPP s 5.F.F. No Claim to Orig. [FN50]. or elevation view. § 1. [FN44].4. Works.R.

This information is to be placed on the front of each sheet of drawings and centered within the top margin.R.6 (Cite as: PLIREF-PATAPP s 5.84(c). Application s 5. US Gov. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16.4. [FN51] [FN51].4. should include the application number. PLIREF-PATAPP s 5. 37 C. if no application number has been assigned.4.4 Formal Requirements *5-26 § 5.F. Works.6) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.6 Identification of Drawings Identifying idicia.6 FOR EDUCATIONAL USE ONLY How to Write Pat. § 1. and the inventor's name and docket number (if any). .6 END OF DOCUMENT © 2008 Thomson/West. the title of the invention.PLIREF-PATAPP § 5. April 2005 Chapter 5: Drawings § 5. if provided. No Claim to Orig.4.4.

5 How to Write Pat.5) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Works.5 Illustrative Styles and Symbols The Patent Office requires illustrative drawings and not engineering drawings. because it is much easier to understand an illustration of the invention than an engineering drawing. . April 2005 Chapter 5: Drawings *5-27 § 5.PLIREF-PATAPP § 5.5 (Cite as: PLIREF-PATAPP s 5. Application s 5. END OF DOCUMENT © 2008 Thomson/West. Illustrative drawings are required. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. as the style and content of illustrative drawings are substantially different from the style and content of blueprints or engineering drawings. Exhibits 5-15 through 5-22 are reproduced from that publication. This distinction is an important one. US Gov. This section outlines the elements of style involved in the art of illustration. No Claim to Orig. Guidelines for patent illustrations are defined by the Patent Office in a publication titled Guide to Patent Draftsmen.

An arrowhead must be drawn indicating the direction in which the section is to be seen. This line is used to show exploded views of parts that fit together to form the complete invention.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. § 5. The line shows the structural arrangement of the individual parts. continuous line used to represent the outline or overall shape of an object. This line is generally drawn in the form of a single long line and a short dash located at the position of the cutting plane. *5-28 § 5. Exhibit 5-14 shows how the various lines are used to illustrate a combination fork and spoon utensil. Exhibit 5-13 illustrates the form of object lines. or to show the structural relationship between visible and hidden portions of the invention. Works. However.5.1 (Cite as: PLIREF-PATAPP s 5. as illustrated in Exhibits 5-13 and 5-14.1.2 Cutting Plane Line A cutting plane line reveals the location of a sectional view through the object.5. hidden lines such as c-c and d-d are used in the illustrative figures.5.5.1 Types and Forms of Lines Various types of lines are commonly used in patent drawings. The structural relationship between the hidden and visible parts is difficult to understand *5-29 in the invention of Exhibit 5-14. Lines 4-4. Consequently. 5-5 and 6-6 are cutting plane lines shown in the drawing of Figure 3 of Exhibit 5. these lines identify the location of corresponding sectional drawings that are shown in Figures 4. . and 6 of Exhibit 5-14. © 2008 Thomson/West.1 FOR EDUCATIONAL USE ONLY How to Write Pat.1 Object Line An object line is a heavy. object lines are used to outline the shape of the utensil. as shown in Exhibit 5-13. cutting plane lines. In the perspective view of Figure 1 of Exhibit 5-14.14.PLIREF-PATAPP § 5.5. as shown in Exhibit 5-13. No Claim to Orig. 5. § 5. by aligning or guiding together corners of the individual parts.5. This line is generally in the form of a series of short dashes. and lead lines.1.1. US Gov. It is used to indicate a change in direction of the surface or the intersection of two surfaces. as shown in Exhibit 5-13.4 Hidden Line A hidden line is used to represent surfaces or edges that are hidden from view.5. Every edge or surface that is visible from a certain view of an object is included in that view by means of an object line. Figure 1 of Exhibit 5-14 shows an exploded view of the combination fork and spoon invention with each component of the assembly aligned by projection lines b-b in Figure 1. Application s 5. § 5.5. April 2005 Chapter 5: Drawings § 5. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16.5 Illustrative Styles and Symbols *5-27 § 5.3 Projection Line A projection line comprises an alternate sequence of long and short dashes. Hidden edges and surfaces are not generally shown in patent illustrations. these lines can be used when it is necessary to show an essential hidden feature of the invention. A reference numeral identifying the number of the figure corresponding to the cutting plane is drawn at the base of this line. projection lines. hidden lines.1.

1 (Cite as: PLIREF-PATAPP s 5. However. US Gov.5 Lead Line A single solid lead line should be used to connect a reference numeral to a component within a drawing. The lead line should be short.5. as shown in Exhibit 5-13 and in line e-e of Figure 8. such as the lead line of reference numeral 12. Lead lines for hidden portions of the drawing should be in the same form as that of the hidden line.5. a series of short dashes. that is.5.5. the presence of these lines in the patent illustrations is sufficient cause for the examiner to reject a drawing. No Claim to Orig. The lead line touches the outline of an object when it is used to refer to a separate and distinct portion of the object. which identifies the handle of the utensil in Exhibit 5-14.5. when the reference numeral refers to a portion of the invention that cannot exist independently of the whole object shown in the drawing.1 FOR EDUCATIONAL USE ONLY How to Write Pat.1. such as that connecting reference number 56 with the surface of the spoon in Figure 1 of Exhibit 5-14.6 Center Line Center lines are not generally used unless they are needed to depict some relevant aspect of the drawing. such as with numeral 10 of Exhibit 5-14.1. the lead line ends at the surface of the object without touching the outline of the object. Unless necessary.PLIREF-PATAPP § 5. An example of a center line is shown by line 26 of Figure 3 of Exhibit 5-2. PLIREF-PATAPP s 5. § 5. Center lines made of alternate long and short dashes are used in engineering drawings to depict all radii or to depict the center of geometrical shapes. Application s 5. .1) Page 2 § 5. Works.1 END OF DOCUMENT © 2008 Thomson/West.5. An arrowhead is placed at the end of the lead line only when the reference numeral refers to the entire subject of the drawing or a segregable portion of that subject. Exhibit 5-14.

as shown in the ball and socket illustrations of Figure 5-19. . the more shading used. Concave surfaces are represented with circular shading lines at the upper-left-hand surface of the object. April 2005 Chapter 5: Drawings § 5. This gives a slanting effect to the surface as the heavy line is placed on the edge of the upper plane. as shown in Exhibit 5-17.2 END OF DOCUMENT © 2008 Thomson/West. Convex surfaces are represented with circular shading lines at the lower right-hand corner of the object. [FN52].5. 37 C.F.2 FOR EDUCATIONAL USE ONLY How to Write Pat. However. a single heavy shading line is sufficient for small pipes. The outer line is always a light line. [FN52] This is accomplished by rendering the lines that are close to the upper-left corner fine or thinner than the lines that are further away from the upper-left corner. The amount of shading depends on the size of the object.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.5. unlike the other forms of shading. Works. US Gov. the thickness of lines represents distance. Application s 5.5.5. rods. and fine lines to show distant features. this rule does not apply to perspective views. PLIREF-PATAPP s 5. as shown in Exhibit 5-15. giving the desired appearance.2 (Cite as: PLIREF-PATAPP s 5. The larger the article. When more than one shading line is used on cylindrical surfaces.5. cylindrical objects are shaded with lines parallel to their length. Convex and concave surfaces are distinguished by the location of the shading lines on their surfaces. and shafts. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. A cylinder or sphere with a large diameter should contain numerous shading lines. as shown in Exhibit 5-16. Shading lines are drawn in specific patterns depending on the shape or geometry of the object. *5-31 Mirrored or shiny surfaces are illustrated by oblique shading lines.84(m). No Claim to Orig. the heaviest lines are placed closest to the light source.2 Shading Generally. In this type of shading.PLIREF-PATAPP § 5. patent illustrations are shaded to appear as if an imaginary light source originates from the upperleft-hand corner at an angle of forty-five degrees. Thus. All shade lines are oblique to the mirrored surface to distinguish them from the vertical shading lines of opaque objects. Thicker shading lines are used to show portions of an object that are close to the viewer. § 1. the shading is blended from the second line.5 Illustrative Styles and Symbols *5-30 § 5. The final outer line is always a thinner line to accentuate the edge of the object. In perspective views. However. Inclined surfaces are distinguished from flat surfaces by drawing shading lines.R. while spherical objects have circular shading lines. The surface shading is blended from that heavy line.

[FN54]. Patent Office sanctioned patterns are shown in Exhibit 5-18. [FN54] Fabric is illustrated by irregular freehand shading to bring out the proper effect.02.P. [FN55] [FN53]. Id. PLIREF-PATAPP s 5.5. Id. [FN53] The hatching pattern for wood is used sparingly on parts of wood in section. Application s 5. because excessive wood graining blurs the drawing. That is necessary because the Patent Office does not generally allow the use of colored drawings.5 Illustrative Styles and Symbols *5-31 § 5.5.5. § 608. Works.3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.3 (Cite as: PLIREF-PATAPP s 5. [FN55].PLIREF-PATAPP § 5. US Gov.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. .3 END OF DOCUMENT © 2008 Thomson/West.E.3 Hatching Patterns Hatching patterns are used to represent the type of materials used.5.P. April 2005 Chapter 5: Drawings § 5. No Claim to Orig. Individual colors can also be represented by a unique hatching pattern.5. M. when the type of material is a feature of the invention.

A simple pattern of lines is used to portray threads on small bolts and openings.4 END OF DOCUMENT © 2008 Thomson/West. The conventional methods of showing a spur gear. US Gov.5. which shows the *5-32 outline of each individual thread. particular care needs to be given to the correct spacing between the gear teeth and also to the weight of the shade lines. . No Claim to Orig.5.4 FOR EDUCATIONAL USE ONLY How to Write Pat. April 2005 Chapter 5: Drawings § 5.5.5 Illustrative Styles and Symbols *5-31 § 5. Works.5. Application s 5.5.4) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. and a worm gear in mesh are shown in Exhibit 5-21. shown in Exhibits 5-19 through 5-21. Larger bolts or openings require a more detailed thread drawing.4 Mechanical Components There are several accepted forms of representation for illustrating threads and gears. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16.PLIREF-PATAPP § 5. a helical gear. Each type of gear or gear assembly also has distinct illustrative forms. PLIREF-PATAPP s 5.4 (Cite as: PLIREF-PATAPP s 5. In illustrating gears. Solid black shading lines are used to illustrate the threads themselves.

5.84(n). Guide for Patent Draftsmen. [FN56] The Patent Office has approved the symbols contained in certain publications. M. In lieu of a symbol.P. © 2008 Thomson/West.84(n).5 FOR EDUCATIONAL USE ONLY How to Write Pat.5 Illustrative Symbols and Labeled Representations Graphical drawing symbols approved by the Patent Office can be used to represent conventional elements. [FN62] These include appropriately labeled rectangles. Similar publications exist for fluid power dynamics. the approved publication for electrical and electronic symbols is titled: Y 32.1-7502.C. and circles. a combination of elements. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. in this example) in dotted lines on or near the component.02. Id. . Other standard or commonly used symbols are also acceptable provided they are clearly understood and are adequately identified and described in the specification.E. Commonly used graphic symbols for conventional electrical and mechanical elements are shown in Exhibit 5-22.5.R.02 [FN58].F. U. [FN57] These publications are useful guides in selecting appropriate symbols. D.5. a motor or a valve can be represented by a circle with the word "motor" or "valve" as shown in Exhibit 5-22.P. No Claim to Orig.5.P. or a circuit. such as a variable resistance. § 608.R. process flow symbols. [FN61] A dotted line connection of these arrows indicates ganging (that is.5 (Cite as: PLIREF-PATAPP s 5. valves and pipe fittings. [FN60]. 37 C.S. Patent and Trademark Office. such as the resistance of a wire or the equivalent resistance of a more complex device. 37 C.F. squares. [FN58] Generally. all American National Standards for drafting symbols are approved symbols. § 1. [FN59] Symbols and labeled representations that are *5-33 similar and create confusion with other symbols commonly used in the Patent Office are not acceptable. [FN60] The symbols for electrical circuit components can be modified as follows. U. 11 West 42 Street.S. M. Works. Washington. New York. Printing Office. a labeled representation can be used to represent a conventional element. An arrow through an electrical circuit element indicates that the element is variable. Application s 5. [FN61]. US Gov. [FN62]. a mechanical link) between the two elements. For an inherent property of a component.E. 20402 (1989). Dept. § 1. These publications are available from the American National Standards Institute. For example. Document PAT-012. Inc. Exhibit 5-7 shows labeled representations of a process flowchart. New York 10036. [FN59]. Govt. the circuit can be shown by drawing the symbol (a resistor. [FN57].5 Illustrative Styles and Symbols *5-32 § 5. April 2005 Chapter 5: Drawings § 5.5) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. For example. and other such apparatus.P. [FN56].2--1970 Graphic Symbols for Electrical and Electronics Diagrams. § 608.PLIREF-PATAPP § 5. of Commerce.

.5 END OF DOCUMENT © 2008 Thomson/West.5 (Cite as: PLIREF-PATAPP s 5.5.5. Application s 5.5 FOR EDUCATIONAL USE ONLY How to Write Pat.PLIREF-PATAPP § 5.5) Page 2 PLIREF-PATAPP s 5. Works.5. No Claim to Orig. US Gov.5.

6 How to Write Pat. US Gov. April 2005 Chapter 5: Drawings *5-33 § 5. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. photographs.PLIREF-PATAPP § 5. PLIREF-PATAPP s 5. and models and exhibits.6 Special Forms of Illustration There are several forms for illustrating an invention that are not normally acceptable by the Patent Office.6 END OF DOCUMENT © 2008 Thomson/West. These include the categories of colored drawings. .6 (Cite as: PLIREF-PATAPP s 5. No Claim to Orig.6) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Application s 5. Works. The Patent Office will only accept such articles under special circumstances.

1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. [FN64].6 Special Forms of Illustration *5-34 § 5. The Patent Office may accept photographs in design patent applications to show ornamental effects. if the subject matter of the application admits of illustration by a drawing.02. the examiner may require a drawing in place of the photograph.1 END OF DOCUMENT © 2008 Thomson/West. [FN65]. thin layer chromatography plates. and crystalline structures. [FN65] Exhibit 5-23 shows a transmission electron micrograph of a fibrous carbon chain described in an issued patent.6.R. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. Thus. Id. Application s 5. April 2005 Chapter 5: Drawings § 5.84(b).6. No Claim to Orig. US Gov. blots.F. provided they are replaced by a formal drawing within two months of the date of notice from the Patent Office.1 Black-and-White Photographs Photographs are not normally considered to be proper drawings.1 (Cite as: PLIREF-PATAPP s 5.E.P.6. § 608. [FN63]. [FN64] Photolithographs of photographs are never acceptable. in vivo imaging.6. . animals.P. histological tissue cross sections. Works. plants. The Patent Office accepts photographs in utility and design patent applications as formal drawings only if photographs are the only practical medium for illustrating the claimed invention. § 1. PLIREF-PATAPP s 5. Exemplary of objects of which the Patent Office accepts photographs in utility patent applications are electrophoresis gels.6. 37 C.1 FOR EDUCATIONAL USE ONLY How to Write Pat.PLIREF-PATAPP § 5. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent. A photograph was allowed in this patent because it would be difficult to draw the shape of the fibrous chain. M. [FN63] They are considered informal drawings and are accepted for the purpose of establishing a filing date.

The specification must contain the following language as the first paragraph in the brief description of the drawing: The file of this patent contains at least one drawing executed in color. § 1. [FN66]. US Gov. that is. § 1.F. and three sets of color drawings.2 END OF DOCUMENT © 2008 Thomson/West. M. 37 C. No Claim to Orig.6 Special Forms of Illustration *5-34 § 5. Application s 5.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.6. PLIREF-PATAPP s 5.F. They can be used only if a special petition is filed requesting acceptance of the colored drawings under 37 C. [FN66] Neither the examiner nor the draftsman *5-35 has the authority to permit colored drawings in utility or design applications. are the only practical medium by which to disclose the invention.6.6.2 Colored Drawings and Photographs Colored drawings and colored photographs are generally not accepted in view of the substantial administrative and economic burden associated with printing a utility patent with colored drawings.84.6.84(a)(2). Copies of this patent with color drawing(s) will be provided be the Patent and Trademark Office upon request and payment of the necessary fee.17(h). [FN67] Such a petition must include the appropriate fee set forth in section 1.P.02.P.R.2 FOR EDUCATIONAL USE ONLY How to Write Pat. The petition is granted only if the Patent Office determines that color drawings are necessary.2 (Cite as: PLIREF-PATAPP s 5. [FN67]. § 608.R. Works.6. April 2005 Chapter 5: Drawings § 5.PLIREF-PATAPP § 5. .E. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16.

Application s 5.6.R. April 2005 Chapter 5: Drawings § 5. No Claim to Orig.96(b).5. [FN67. US Gov.3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. 37 C.6 Special Forms of Illustration *5-35 § 5. § 1.6.3 Computer Programming Lists A computer program listing can be submitted as a drawing.6. Works. [FN67.6.PLIREF-PATAPP § 5. .2.1].1] More information about submitting computer program listings can be found in § 12.6.3 (Cite as: PLIREF-PATAPP s 5. but only if it is contained in 300 lines or less with each line being seventy-two characters or fewer. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. PLIREF-PATAPP s 5.F.3 END OF DOCUMENT © 2008 Thomson/West.3 FOR EDUCATIONAL USE ONLY How to Write Pat.

E. M. an applicant can petition to have the application accepted without the drawings if the figures are not necessary to understand the subject matter sought to be patented. or mutilated. PLIREF-PATAPP s 5.P. If drawings are mentioned in the specification. However. creased. April 2005 Chapter 5: Drawings *5-35 § 5.02.7 END OF DOCUMENT © 2008 Thomson/West. [FN69].7 (Cite as: PLIREF-PATAPP s 5. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16.E. Works. but not included with the application.02.P. No Claim to Orig.7 Mailing Drawings should be mailed either flat and protected by a sheet of heavy board or rolled for transmission in a mailing tube. US Gov. Application s 5. The examiner can request a new drawing if the drawings are folded.7) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. [FN69] [FN68]. and rejected.PLIREF-PATAPP § 5. M. That results in loss of an early filing date.P. § 608.P.7 How to Write Pat. § 608. the application is deemed incomplete. [FN68] *5-36 The drawings must be mailed with the patent application. .

December 2001 Chapter 5: Drawings *5EX-1 Exhibit 5-1: Front Views of a Grill Cleaner TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. No Claim to Orig. US Gov. 5-1 END OF DOCUMENT © 2008 Thomson/West. 5-1 FOR EDUCATIONAL USE ONLY How to Write Pat. . Application 5 Exh. Works. 5-1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. 5-1 (Cite as: PLIREF-PATAPP 5 Exh.PLIREF-PATAPP 5 Exh.

Works.PLIREF-PATAPP 5 Exh. 5-2 (Cite as: PLIREF-PATAPP 5 Exh. 5-2 END OF DOCUMENT © 2008 Thomson/West. 5-2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. US Gov. December 2001 Chapter 5: Drawings *5EX-3 Exhibit 5-2: Device for Lifting and Inverting Cylindrical Containers TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. Application 5 Exh. 5-2 FOR EDUCATIONAL USE ONLY How to Write Pat. . No Claim to Orig. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9.

5-3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Works. No Claim to Orig. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. December 2001 Chapter 5: Drawings *5EX-5 Exhibit 5-3: Partially Broken Away Front Perspective View TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. . 5-3 FOR EDUCATIONAL USE ONLY How to Write Pat. 5-3 END OF DOCUMENT © 2008 Thomson/West. Application 5 Exh. US Gov.PLIREF-PATAPP 5 Exh. 5-3 (Cite as: PLIREF-PATAPP 5 Exh.

Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. Application 5 Exh. December 2001 Chapter 5: Drawings *5EX-7 Exhibit 5-4: Three Partial Sectional Views TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-4) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. 5-4 END OF DOCUMENT © 2008 Thomson/West. 5-4 (Cite as: PLIREF-PATAPP 5 Exh.PLIREF-PATAPP 5 Exh. 5-4 FOR EDUCATIONAL USE ONLY How to Write Pat. US Gov. No Claim to Orig. . Works.

5-5 END OF DOCUMENT © 2008 Thomson/West. 5-5 (Cite as: PLIREF-PATAPP 5 Exh. Application 5 Exh. . Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. Works. No Claim to Orig. 5-5) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. December 2001 Chapter 5: Drawings *5EX-9 Exhibit 5-5: Exploded Views TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-5 FOR EDUCATIONAL USE ONLY How to Write Pat.PLIREF-PATAPP 5 Exh. US Gov.

. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. 5-6) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.PLIREF-PATAPP 5 Exh. Works. December 2001 Chapter 5: Drawings *5EX-11 Exhibit 5-6: Plot of Unreacted Carbon TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-6 (Cite as: PLIREF-PATAPP 5 Exh. US Gov. Application 5 Exh. 5-6 END OF DOCUMENT © 2008 Thomson/West. 5-6 FOR EDUCATIONAL USE ONLY How to Write Pat. No Claim to Orig.

No Claim to Orig. Works. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9.PLIREF-PATAPP 5 Exh. 5-7 FOR EDUCATIONAL USE ONLY How to Write Pat. 5-7 END OF DOCUMENT © 2008 Thomson/West. . 5-7) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. December 2001 Chapter 5: Drawings *5EX-13 Exhibit 5-7: Flow Sheet TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. Application 5 Exh. 5-7 (Cite as: PLIREF-PATAPP 5 Exh. US Gov.

Application 5 Exh. No Claim to Orig. 5-8 END OF DOCUMENT © 2008 Thomson/West. Works. 5-8 FOR EDUCATIONAL USE ONLY How to Write Pat. December 2001 Chapter 5: Drawings *5EX-15 Exhibit 5-8: Flowchart TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9.PLIREF-PATAPP 5 Exh. . 5-8) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. US Gov. 5-8 (Cite as: PLIREF-PATAPP 5 Exh.

.. 2277/88 5 [51] Int.. 99/453... 5-9) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.. 290.. 451.. or Firm-Wenderoth..... 13. . 1990 Related U....... A23C 19/05... US Gov.869 Fabricius [45] Date of Patent: Apr. 99/466... 5-9 (Cite as: PLIREF-PATAPP 5 Exh... Cl. 14.. December 2001 Chapter 5: Drawings *5EX-17 Exhibit 5-9: Schematic: Procedure for the Metered Addition of Copper Ions in Cheese Production TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE United States Patent [19] [11] Patent Number: 5.. A01J 25/00 [52] U. A23C 19/068. 1988 [CH] Switzerland ....647 [22] Filed: Aug. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. 291.... Simone Attorney. 99/452.. 2... Denmark [73] Assignee: Mator AG... 5-9 FOR EDUCATIONAL USE ONLY How to Write Pat.. 582 Primary Examiner-Timothy F... 31. 366/290 [58] Field of Search .. 42. No....S... No..... Application 5 Exh.. 99/460.. 1991 ------------------------------------------------------------- *5EX-18 [54] PROCEDURE FOR THE METERED ADDITION OF COPPER IONS IN CHEESE PRODUCTION [75] Inventor: Claus Fabricius... 426/40..PLIREF-PATAPP 5 Exh... [30] Foreign Application Priority Data Jun.. Inwil. Switzerland [21] Appl.. 99/516... 536.....S. 534.003.... A23C 19/00... 453..... Cl.......... 365... 366/101... 1989. 74...548. ...... 466. No Claim to Orig... Agent.. Jun.. Alleröd. Lind & Ponack [57] ABSTRACT © 2008 Thomson/West..... Application Data [62] Division of Ser... 99/452. Works. 460..: 575..

copper ions and enzymes is added to the raw milk for the cheese produc2 tion. Application 5 Exh. 7.PLIREF-PATAPP 5 Exh. (c) means (5. a cathode (12) and a vent (13). 5-9) Page 2 For the metered addition of copper ions in cheese production in a stainless steel kettle (a) CO is introduced into the added water. (e) means (14) for draining the added water from the electrolyzing tank (10) into the mixing tank (16). (g) a milk kettle (19) having a mixing device (20) and (h) means (18) for draining the added water from the mixing tank (16) into the milk kettle (18). 5-9 FOR EDUCATIONAL USE ONLY How to Write Pat. . 6) for feeding added water into the electrolyzing tank (10). No Claim to Orig. 2 (d) a mixing tank (16) having a mixing device (17). 2. An apparatus for carrying out this procedure is characterized by (a) an electrolyzing tank (10) having an anode (11). 8. 4. 3. 5-9 (Cite as: PLIREF-PATAPP 5 Exh. US Gov. TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. (c) the enzymes necessary for the cheese production are added to the added water containing CO and copper 2 ions and (d) the added water containing CO . 9) for the metered addition of CO to the added water. 5-9 END OF DOCUMENT © 2008 Thomson/West. Works. 2 (b) copper ions are produced electrolytically in the added water by means of electrodes immersed in the added water. (b) means (1. (f) means (15) for adding enzymes to the mixing tank (16).

. Pat....S. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9.S..... No Claim to Orig. 2700 Partin Settlement Rd.... No.. 226. 32743 [21] Appl. 648. 630.. 5-10) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.... 649. 22. . Cl... 418... 606... F02P 5/155 [52] U.....188 3..... 123/618.... 123/334.S... 618....: 337. 123/335 © 2008 Thomson/West... Cl.702. Jul. 2... 1987...924..821.... Oct.. Application 5 Exh.... 652 [56] References Cited U.774. 12.100.. 602.... 123/599 X Minks .. Works...... PATENT DOCUMENTS 3... No... Kissimmee... 5-10 FOR EDUCATIONAL USE ONLY How to Write Pat... No... 112. 651........ 335...298..802.. Fla.. 4. Minks. 1991 ------------------------------------------------------------- *5EX-20 [54] ENGINE SPARK CONTROL APPARATUS [76] Inventor: Floyd M.... No. No. which is a continuation of Ser. Pat. 625.... 123/651 [58] Field of Search .946 Minks [45] Date of Patent: Apr....400 2/1971 4/1974 Minks .566.. 123/335. December 2001 Chapter 5: Drawings *5EX-19 Exhibit 5-10: Schematic: Engine Spark Control Apparatus TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE United States Patent [19] [11] Patent Number: 5. US Gov..PLIREF-PATAPP 5 Exh............ 123/599. 617.. 416. 5-10 (Cite as: PLIREF-PATAPP 5 Exh.. Application Data [60] Division of Ser. 7...003... 1988. 4. 1989 Related U....014 [22] Filed: Apr..... . 5 [51] Int.....

...... 123/618 X Piteo .298 4. 123/335 X Venieres et al...... Dyer & Doppelt [57] ABSTRACT This disclosure relates to apparatus for operating a combustion engine by controlling the spark ignition voltage to said engine.. . 5-10 END OF DOCUMENT © 2008 Thomson/West... 5-10 FOR EDUCATIONAL USE ONLY How to Write Pat.402... Agent.411. 5-10) Page 2 4..699... TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh..404.PLIREF-PATAPP 5 Exh........... Said control is created by the application of two opposing currents to the input of an amplifying device which is used to selectively shunt a constant current source away from the control electrode of a second amplifying device connected to control the formation of said ignition voltage.. 123/335 Terada et al. 123/335 Primary Examiner-Willis R.....697...689 4....952 4..080 4.. 123/618 X Minks .... Wolfe Attorney..........528....... or Firm-Duckworth....... Application 5 Exh.625.... Allen. No Claim to Orig..970 4...... 123/149 C X Fujimoto et al. 123/618 X Fujimoto et al.... 123/618 X Tanaka et al... Works..491..776.122 4...115 4. 123/335 Umehara .....664. 123/618 X Benvenuti ... US Gov...608.... 5-10 (Cite as: PLIREF-PATAPP 5 Exh..... 123/335 Okuda ..245 4..311 9/1983 9/1983 10/1983 1/1985 7/1985 9/1986 12/1986 2/1987 5/1987 10/1987 10/1987 10/1988 Morita ..........644... 123/335 Komurasaki .953 4.....560 4.927 4.

Application 5 Exh. 5-11 FOR EDUCATIONAL USE ONLY How to Write Pat. US Gov. . 5-11) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. No Claim to Orig. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. 5-11 END OF DOCUMENT © 2008 Thomson/West. December 2001 Chapter 5: Drawings *5EX-21 Exhibit 5-11: Complex Chemical Structures TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. Works.PLIREF-PATAPP 5 Exh. 5-11 (Cite as: PLIREF-PATAPP 5 Exh.

5-12 END OF DOCUMENT © 2008 Thomson/West.PLIREF-PATAPP 5 Exh. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. 5-12 (Cite as: PLIREF-PATAPP 5 Exh. Works. December 2001 Chapter 5: Drawings *5EX-23 Exhibit 5-12: Use of an Invention TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. No Claim to Orig. . 5-12) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. 5-12 FOR EDUCATIONAL USE ONLY How to Write Pat. US Gov. Application 5 Exh.

Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. 5-13) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Works. 5-13 END OF DOCUMENT © 2008 Thomson/West. No Claim to Orig. 5-13 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 5 Exh. December 2001 Chapter 5: Drawings *5EX-25 Exhibit 5-13 TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-13 (Cite as: PLIREF-PATAPP 5 Exh.PLIREF-PATAPP 5 Exh. . US Gov.

Application 5 Exh. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. Works.PLIREF-PATAPP 5 Exh. US Gov. 5-14) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. 5-14 (Cite as: PLIREF-PATAPP 5 Exh. 5-14 FOR EDUCATIONAL USE ONLY How to Write Pat. No Claim to Orig. . 5-14 END OF DOCUMENT © 2008 Thomson/West. December 2001 Chapter 5: Drawings *5EX-27 Exhibit 5-14: Use of Lines TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh.

Application 5 Exh. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. 5-15) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. 5-15 END OF DOCUMENT © 2008 Thomson/West. US Gov.PLIREF-PATAPP 5 Exh. 5-15 FOR EDUCATIONAL USE ONLY How to Write Pat. Works. 5-15 (Cite as: PLIREF-PATAPP 5 Exh. December 2001 Chapter 5: Drawings *5EX-29 Exhibit 5-15: Circular Shading Lines TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. . No Claim to Orig.

December 2001 Chapter 5: Drawings *5EX-31 Exhibit 5-16: Oblique Shading Lines TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. No Claim to Orig. 5-16 FOR EDUCATIONAL USE ONLY How to Write Pat. 5-16) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.PLIREF-PATAPP 5 Exh. Application 5 Exh. 5-16 (Cite as: PLIREF-PATAPP 5 Exh. . US Gov. 5-16 END OF DOCUMENT © 2008 Thomson/West. Works. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9.

5-17) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Application 5 Exh. No Claim to Orig. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. December 2001 Chapter 5: Drawings *5EX-33 Exhibit 5-17: Shading Lines for Inclined Surfaces vs Flat Surfaces TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. 5-17 FOR EDUCATIONAL USE ONLY How to Write Pat.PLIREF-PATAPP 5 Exh. 5-17 (Cite as: PLIREF-PATAPP 5 Exh. 5-17 END OF DOCUMENT © 2008 Thomson/West. Works. . US Gov.

PLIREF-PATAPP 5 Exh. 5-18) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. US Gov. . Application 5 Exh. Works. 5-18 (Cite as: PLIREF-PATAPP 5 Exh. 5-18 END OF DOCUMENT © 2008 Thomson/West. 5-18 FOR EDUCATIONAL USE ONLY How to Write Pat. No Claim to Orig. December 2001 Chapter 5: Drawings *5EX-35 Exhibit 5-18: Sanctioned Hatching Patterns TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9.

Works. . Application 5 Exh. US Gov. 5-19 FOR EDUCATIONAL USE ONLY How to Write Pat. 5-19 (Cite as: PLIREF-PATAPP 5 Exh. 5-19) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. 5-19 END OF DOCUMENT © 2008 Thomson/West. No Claim to Orig. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. December 2001 Chapter 5: Drawings *5EX-37 Exhibit 5-19 TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh.PLIREF-PATAPP 5 Exh.

5-20) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.PLIREF-PATAPP 5 Exh. . Application 5 Exh. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. US Gov. No Claim to Orig. 5-20 END OF DOCUMENT © 2008 Thomson/West. 5-20 (Cite as: PLIREF-PATAPP 5 Exh. 5-20 FOR EDUCATIONAL USE ONLY How to Write Pat. Works. December 2001 Chapter 5: Drawings *5EX-39 Exhibit 5-20 TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh.

No Claim to Orig. December 2001 Chapter 5: Drawings *5EX-41 Exhibit 5-21: Worm Gear in Mesh TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. 5-21) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. 5-21 FOR EDUCATIONAL USE ONLY How to Write Pat.PLIREF-PATAPP 5 Exh. 5-21 (Cite as: PLIREF-PATAPP 5 Exh. 5-21 END OF DOCUMENT © 2008 Thomson/West. . Works. Application 5 Exh. US Gov.

5-22 FOR EDUCATIONAL USE ONLY How to Write Pat. . 5-22) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. No Claim to Orig. 5-22 (Cite as: PLIREF-PATAPP 5 Exh. Works. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9.PLIREF-PATAPP 5 Exh. US Gov. Application 5 Exh. 5-22 END OF DOCUMENT © 2008 Thomson/West. December 2001 Chapter 5: Drawings *5EX-43 Exhibit 5-22: Symbols for Conventional Electrical and Mechanical Elements TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh.

Application 5 Exh. No Claim to Orig. 5-23 END OF DOCUMENT © 2008 Thomson/West. December 2001 Chapter 5: Drawings *5EX-47 Exhibit 5-23: Transmission Electron Micrograph of Fibrous Carbon Chain TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 5 Exh. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. 5-23 FOR EDUCATIONAL USE ONLY How to Write Pat. 5-23 (Cite as: PLIREF-PATAPP 5 Exh. 5-23) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.PLIREF-PATAPP 5 Exh. Works. US Gov. .

1 (Cite as: PLIREF-PATAPP s 6. US Gov. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Works." Exhibit 6-13. This is a valuable checklist that should be used whenever writing claims. the chapter also includes an extensive discussion of the strategy of claim drafting. knowledge of the basic principles alone is insufficient for writing good claims. Application s 6.1 Introduction This chapter explains the basic principles of claim drafting.1) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Therefore. However. No Claim to Orig.1 END OF DOCUMENT © 2008 Thomson/West. Also provided in this chapter is a "Checklist of Possible Claim Deficiencies. October 2006 Chapter 6: Preparing the Claims *6-5 § 6. just as knowledge of the rules of playing poker does not make one a good poker player. PLIREF-PATAPP s 6.PLIREF-PATAPP § 6.1 How to Write Pat. .

No Claim to Orig.1 (Cite as: PLIREF-PATAPP s 6.PLIREF-PATAPP § 6. the area of the examiner's search. They will become the principal medium of communication with the Patent and Trademark Office.1.1. They are likely to perform the same function in the prosecution of corresponding foreign applications. But they also have other important purposes. The claims determine the examining group in the Office. They are the "template" for the rest of the specification. the probability of a restriction requirement (an objection that more than one invention has been claimed). October 2006 Chapter 6: Preparing the Claims § 6. Works. In a patent application. as it is being prepared.1 FOR EDUCATIONAL USE ONLY How to Write Pat.1.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. and the ease or difficulty of prosecution generally. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.1 Introduction *6-6 § 6. US Gov. In an issued patent.1. the claims have the same primary purpose. PLIREF-PATAPP s 6. the purpose of the claims is to define the novel and nonobvious invention protected by the patent. Application s 6.1 END OF DOCUMENT © 2008 Thomson/West. .1 Purpose of the Claims The claims are the most important part of the patent application.1. They provide a convenient basis for discussions with the inventor and others.

If the boundary is drawn very close to the prior art.1. application. Claim drafting always requires a judgment between those two extremes.2 END OF DOCUMENT © 2008 Thomson/West.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. each of the claims must have a well-defined meaning. especially in drafting the independent claims. the resulting broad claim will be difficult and expensive to obtain and defend. Further.1.2 (Cite as: PLIREF-PATAPP s 6. the resulting narrow claim is more likely to be *6-7 valid. No Claim to Orig. and experience. Application s 6. October 2006 Chapter 6: Preparing the Claims § 6.PLIREF-PATAPP § 6.1. Works.1 Introduction *6-6 § 6. it will exclude competitors.1. US Gov. The judgment is based not only on the combined skills of the inventor (and other technical and commercial advisers) and the patent practitioner. might exist. and the claims must be based on a thoughtful analysis of the inventor's discoveries in view of the known prior art. not yet known. Claim drafting is an art that can be learned by study. Somewhere in the no-man's-land between the two lies the boundary that will be created by each claim. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. The first step in claim drafting is to understand the invention. the claims should reflect an imaginative forecast of how others might use the inventor's discoveries and what other prior art. Where should the boundary be drawn? If the boundary is drawn very close to the inventor's actual work. but if it is valid. but it is also likely that the claim will be too narrow to exclude competitors who make use of the same discoveries. This chapter provides a systematic approach to the study of claim drafting. The next is to understand the prior art.1. but also on the budget available. PLIREF-PATAPP s 6.2 Basic Principles of Claim Drafting In order to fulfill these purposes. .2 FOR EDUCATIONAL USE ONLY How to Write Pat.

it is much less likely that time will be wasted in preparing the rest of the application.1. Most authors agree that it is much easier to write stories knowing the ending than to make up the ending as the story is written. Starting with the claims is particularly recommended when a new practitioner is being taught how to write a patent application. In reality. For example. *6-9 the aspiring practitioner is not turned loose on the specification (except for examples) until at least the broadest claim and some dependent claims have been drafted. which deals with claim drafting.PLIREF-PATAPP § 6. usually revise the claims and add claims after drafting the remainder of the specification. if the term "evaporating" is used in the claims and the term "heating" in the specification. 4. Also. The claims also form an outline for the "Description of the Invention" section.1. a patent application for a mechanical invention usually must contain drawings showing the claimed subject matter.1 Introduction *6-7 § 6. such as the author. Writing the claims early also helps make certain that all the correct drawings have been ordered. Those who claim they start with the description of the invention generally have a good idea of what will be in the claims even if the claims have not been committed to paper. most practitioners merge the two techniques. appears in this book before chapter 7. Starting with the claims is an excellent way to teach a new practitioner how to write the patent application. The claims are really the "punchline" of the story narrated in the specification.3 Start with the Claims The order in which to draft the elements of a patent application is an area of debate among many practitioners. which describes how to write the specification. Practitioners. others insist on writing a complete set of claims before writing the description of the invention. It is generally recommended that the drafting of a patent application begin with the claims. including: 1. Preparing the claims early makes it possible to ensure that all necessary drawings have been ordered." If the claims were drafted first. The language used to describe a particular element of the invention should be consistent between the specification and the claims. and approved. Some practitioners first write the description of the invention and then write the claims. That is why this chapter. Application s 6.1. As discussed in chapter 5. . 3. who prefer to start with the claims.3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. There are several good reasons for beginning with the claims.3 (Cite as: PLIREF-PATAPP s 6. Having the claims prepared before writing the remainder of the specification helps ensure that proper and consistent terminology is used throughout the specification. This approach has proven efficient in the training of new practitioners. 5.1. reviewed. When the author works with aspiring practitioners. writing the claims early avoids unnecessary revisions of the specification. it would be necessary to change the specification to replace "heating" with "evaporating. The "Summary of the Invention" and "Abstract" sections of the specification closely follow the form and content of the claims. this problem would not arise. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. *6-8 2. Works. The author's experience is that once the independent claims and at least some of the dependent claims have been prepared. October 2006 Chapter 6: Preparing the Claims § 6. US Gov. the remainder of the application becomes relatively simple to draft. No Claim to Orig. © 2008 Thomson/West. Once the claims are written. as detailed in the next chapter.3 FOR EDUCATIONAL USE ONLY How to Write Pat.

US Gov. Application s 6.3 FOR EDUCATIONAL USE ONLY How to Write Pat.3 END OF DOCUMENT © 2008 Thomson/West. No Claim to Orig.1. Works.1.3 (Cite as: PLIREF-PATAPP s 6.PLIREF-PATAPP § 6. .1.1.3) Page 2 PLIREF-PATAPP s 6.

S.2) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. §§ 112.2 Statutory Requirements for the Claims For claim-drafting purposes. No Claim to Orig. and 103.C. US Gov. but many other patent statutes bear directly on the claims. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. .2 (Cite as: PLIREF-PATAPP s 6. Works. PLIREF-PATAPP s 6. Application s 6.2 How to Write Pat.PLIREF-PATAPP § 6. October 2006 Chapter 6: Preparing the Claims *6-9 § 6. 102. the principal statutory requirements for the claims are set out in 35 U.2 END OF DOCUMENT © 2008 Thomson/West.

[FN4] *6-11 However. October 2006 Chapter 6: Preparing the Claims § 6." [FN3] Similarly. is or is not within the scope of the claim. The purpose of this statute is to ensure that the public can understand the forbidden territory of the claims. Only claims "not amenable to construction" or "insolubly ambiguous" are indefinite. the definiteness requirement does not require absolute clarity. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. [FN5] Thus. [FN6] It is impermissible to have a single claim cover both an apparatus and a method of use of that apparatus be- © 2008 Thomson/West.2.2 Statutory Requirements for the Claims *6-9 § 6. and even though the construction may be one over which reasonable persons will disagree. the claims cannot refer to drawings merely because this is convenient.C.3] Claims that define part or all of the invention as being "shown in the drawings" or "as described in the specification" do not comply with this statute. the following claim was allowed: "with said manganese content restricted to amounts beneath the curve in the accompanying diagram. Application s 6. in which a reference to an appropriate drawing is the best (or even the only satisfactory) way of defining the invention in the claims. § 112 Section 112 of 35 U. etc.1 FOR EDUCATIONAL USE ONLY How to Write Pat. a claim to an electrical method--"The method set forth in figure 15 [a block diagram] of retrieving words from a contentaddressed memory"--was held improper.1] *6-10 However. references to a microphotograph of metallurgical grain structures may also be allowed. . US Gov.1 (Cite as: PLIREF-PATAPP s 6." [FN1] The test applied by the Federal Circuit is whether those skilled in the art would understand the scope of the claim when the claim is read in light of the rest of the specification.S. For such an invention it is far easier to describe the range of claimed compositions in a diagram (such as a phase diagram) than by words.C.2. [FN1. because different people will have different opinions as to what is "as shown" or "substantially as shown" in the drawings or the specification." are not permitted because they do not define the invention with sufficient particularity. device. such as those used for design and plant patents. The definiteness requirement "is met only when [the claims] clearly distinguish what is claimed from what went before in the art and clearly circumscribed what is foreclosed from future enterprise. No Claim to Orig.2. "I claim my invention substantially as shown and described. There are situations. Works..PLIREF-PATAPP § 6.2] Formal or omnibus claims. Thus.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.1 35 U. Each claim must be sufficiently precise for those working in the relevant field to know whether any practically useful process. A claim can be given a reasonable meaning even though the claim presents a difficult issue of claim construction.S. examiners are often reluctant to allow claims that make any reference to the drawings or the description. [FN1. however. that is. Perhaps because of this.2. requires inter alia that "[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention" (emphasis added). [FN1. [FN2] An example of a claim that is allowed to refer to a drawing is a claim for an alloy in which the proportions of one ingredient can be varied within limits prescribed by the proportions of other ingredients.

S.S. [FN7.3d 1473. [FN6. Co.C. US Gov.A.S. 417 F.2]. doing so when the theory turns out to be wrong can result in invalid claims for lack of utility or nonenabling disclosure. Berkline Corp. 45 U. 487 (Pat. . 1998) (since an ob- © 2008 Thomson/West. Cir. [FN2]. L. 1953). Res.3] However. 216 F. 57 U. 133 U. 133 U.P.S. 598 (Pat. In fact. In other words.04(b). 317 U. v.S. Exxon Res. Thus. v.2d 1272 (Fed.3d 1342 (Fed.Q.P.P. Inc. Cir. Plumtree Software. [FN7]. Kimberly-Clark Corp. v. LLC v.. 1961).Q. Ex parte Lewin. if values encompassed by the claim language can be calculated or measured. App. United States.1].P. an inventor's understanding of the invention is irrelevant once a patent issues with regard to the definiteness of the claims. Gentry Gallery.Q. where the different methods of measurement achieve different results.C.P.2] The claims must include all elements of the invention.2] If a claim includes a measure of a parameter and there is more than one method to measure that parameter.2. § 112. 2001).P. See M. [FN6.Q. 97 U.. [FN7.3d 1372. 2001) (the term "compare" in the claims is indefinite because special meaning asserted for the term not defined in the specification). 60 U.P. [FN4]. v.Q. 1966).3d 1377 (Fed. Bd. Thus. [FN3]. Binney & Smith Co. 228. the claims cannot be broader than the disclosed invention by omitting a required element of the invention.1] The claims do not need to recite the theory behind the invention. App. Amazon.1]. Off. Bd.S. § 112 requires that the claims point out what the "applicant" regards as "his" invention.4] [FN1].S.S. [FN1.3].S.PLIREF-PATAPP § 6..com.Q. & Eng'g Co.Q. Union Pac.2. 236 (1942). Solomon v. [FN7.1] It is also important to note that 35 U. a term such as "aesthetically pleasing" that depends solely on the unrestrained. [FN7] It is necessary that claims provide an objective standard to allow the public to determine the scope of the claimed invention.1 (Cite as: PLIREF-PATAPP s 6.3d 1371.2d 1293 (Fed. Off. [FN7. Cir. United Carbon Co. 1961). 55 U.S. as a result of a user of the apparatus later performing the claimed method of using the apparatus.P. [FN1. Works. No Claim to Orig. 134 F. Ex parte Squires. the claim can be invalid for indefiniteness under 35 U. Id. [FN1. Inc. so that the claim is not "insolubly ambiguous. Off. Cir. Ex parte Squires. Application s 6. 265 F.L.2. Inc. IPIXL Holdings.1) Page 2 cause a manufacturer of the claimed apparatus would not know from the claim whether it might be liable for contributory infringement. 2000).S. [FN6. 598 (Pat. However.P. Cir. Bd.C.. 430 F.2].P.P.2d 1279 (Fed.1 FOR EDUCATIONAL USE ONLY How to Write Pat.3d 684. § 1302. 154 U. subjective opinion of a *6-12 particular individual purportedly practicing the invention is indefinite.C.2d 1498 (Fed. v. App. Datamize." the claim is not invalid for indefiniteness. the claims should specify what the inventor regards as the invention and not what an examiner regards as the invention. [FN5]. 150 (C. In re Tanczyn. 236 F. [FN6. Cir. 2005)... Chesapeake Energy Corp.Q. [FN6].E. 2005).

v. Inc. Marley Mouldings.1]. PLIREF-PATAPP s 6. No Claim to Orig. 2004).2.1 END OF DOCUMENT © 2008 Thomson/West.4]. Honeywell Int'l.2. Cir. Cir. 2005). Datamize. Int'l Trade Comm'n. Inc. US Gov. Am. Works. 214 F.P. Cypress Semiconductor Corp.3d 1342.PLIREF-PATAPP § 6.. Cir. Inc. .Q. [FN7.S. 2005).3].P. [FN7.. [FN7.. 2000) (discussion of "omitted element" test).3d 1356 (Fed. Application s 6. see also Reifin v.2.2. v. Microsoft Corp. 417 F. Cir.3d 1332 (Fed. a claim without that limitation was invalid). v. [FN7.1 FOR EDUCATIONAL USE ONLY How to Write Pat. 60 U. 417 F. EMI Group N. Cir. LLC v. Ltd.Q. Plumtree Software.. 54 U. 341 F.2d 1423 (Fed.1 (Cite as: PLIREF-PATAPP s 6..1) Page 3 ject of the invention was to place controls on a console. Mikron Indus.2d 1915 (Fed. 2001).S. Inc.2].3d 1342 (Fed..

S. For the claims to be allowed by the Patent Office and to survive litigation.C." But "the invention" means the area defined by the claims or.2. US Gov. These sections do not refer to "the claims" at all.2 35 U. are owned by the same person or subject to obligation of assignment to the same person at the time of invention.2 Statutory Requirements for the Claims *6-12 § 6. [FN7. § 103(b)(3). § 103 to provide that subject matter developed by another person shall be treated as owned by the same person or subject to an obligation of assignment to the same person for purposes of determining obviousness if three conditions are met: (1) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made.S.5] The term "biotechnological process" is relatively narrow.C.C.2 FOR EDUCATIONAL USE ONLY How to Write Pat. and (2) the composition of matter. In another section of 35 U.S. § 102(e). A "joint research agreement" can be a written *6-14 contract.7] A problem that can arise in chemical biotechnology patent applications is one of inherency and thus lack of © 2008 Thomson/West. and the process at the time it was invented.S. § 102 requires that the invention be different from the "prior art. grant. 35 U.C.6] The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) amended 35 U. when the claimed subject matter.S. or cooperative agreement for purposes of performance of experimental. It is not necessary that the subject matter actually be owned by the same person if the subject matter was developed as part of a "joint research agreement.S. (f). . § 103 eliminates certain prior art from the obviousness determination. by each of the claims considered in turn.C. the requirements of 35 U.2.C. §§ 102 and 103 Sections 102 and 103 of 35 U. more accurately. and the subject matter that would ordinarily qualify as prior art.C. set out the conditions for patentability with regard to novelty and nonobviousness. a biotechnological process using or resulting in a novel and unobvious composition of matter is also considered unobvious if: (1) claims to the composition of matter are contained in either the same application or patent or a separate application having the same effective filing date. Application s 6. as defined in 35 U.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. developmental. (2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement.2. and (g) is excluded. but rather to "the invention. subject matter that normally qualifies as prior art under 35 U. respectively.C. In particular. §§ 102 and 103 must be satisfied. *6-13 For purposes of obviousness. 35 U.S.S.PLIREF-PATAPP § 6. October 2006 Chapter 6: Preparing the Claims § 6.2. § 103 requires that the differences must have been unobvious to a person of ordinary skill in the art when the invention was made.C. or research work in the field of the claimed invention. In summary.2 (Cite as: PLIREF-PATAPP s 6. are owned by the same person or subject to obligation of assignment to the same person. No Claim to Orig." and 35 U.S. [FN7. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. and (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement. Works. [FN7.S.C. but not novelty. § 103.

[FN7. 35 U.PLIREF-PATAPP § 6.3d 1331 (Fed.F.9].2.C.5]. Cir. 2005).S. v.S. even if a person of ordinary skill in the art does not recognize the inherent disclosure.S.104(c)(4). or is inherently present in the prior art.2 FOR EDUCATIONAL USE ONLY How to Write Pat.6].2. the compound is inherently anticipated under 35 U. Works. . [FN7. § 103(b).2. Apotex Corp.9] [FN7. SmithKline Beecham Corp. 35 U. if a prior art patent discloses in an enabling manner the production of a particular compound. 35 U. PLIREF-PATAPP s 6.C.2. 403 F..C. v..C. 339 F. a claim directed to the compound may not be novel under 35 U. [FN7.C.2 END OF DOCUMENT © 2008 Thomson/West. Cir. No Claim to Orig. Schering Corp.S.8] For example.2 (Cite as: PLIREF-PATAPP s 6. § 103(c)(3). § 103(c). Geneva Pharms.2) Page 2 novelty. 2003). [FN7. Application s 6. 37 C.3d 1373 (Fed.S. US Gov.7].R. Inc. [FN7.8].. § 1. [FN7. If a product sought to be patented occurs naturally. § 102. § 102.

§ 121: If two or more independent and distinct inventions are claimed in one application. when preparing the claims for a patent application. the client should be consulted as to the advantages and disadvantages of filing only one application or multiple applications. machine. manufacture. [FN7. this also has been interpreted to limit each patent to one invention. that is.PLIREF-PATAPP § 6. . The statutory provision has in it five separate requirements for patentability: 1.10] 2. a "process. 5.C. serious consideration must be given as to whether the *6-16 claims are directed to one or more than one invention.C. particularly if a restriction requirement is not received. or composition of matter. patents will have a term of twenty years from the effective filing date. the Commissioner may require the application to be restricted to one of the inventions. 4. Works. improvement thereof. may obtain a patent therefor. § 121).2 Statutory Requirements for the Claims *6-14 § 6.3 35 U. § 102(f). and not fall within any judicially created exceptions" (see *6-15 § 12.2. When this occurs. Traditionally. If it appears that the claims as drafted are directed to more than one invention.2. The person that can claim the patent has to be the one who "invents or discovers" the invention.2). because the statute says "a patent" per invention. a requirement that is also statutorily set forth in 35 U.3 (Cite as: PLIREF-PATAPP s 6. states: Whoever invents or discovers any new and useful process.S. No Claim to Orig. the inventions restricted out of the application can be the subject matter of a divisional application.3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. manufacture.2.1. Under 35 U.C. The invention has to be the right type of subject matter. October 2006 Chapter 6: Preparing the Claims § 6. which has an effective priority date of the original application (35 U. 1995.2.C. The invention has to be useful.S. because the term of the patent issuing on the divisional application was seventeen years from date of issuance. 3. It is impermissible to have a single claim that covers both an apparatus and a method of use of that apparatus. .C.S. or . subject to the conditions and requirements of this title. that is. § 101 Section 101 of 35 U. Application s 6. that is. US Gov. Accordingly. A disadvantage of not dividing up the claims into separate applications is that if a restriction requirement is received and is proper. or composition of matter. machine. a restriction requirement and the necessity for filing a divisional application have not been a problem.C. An advantage of a single application is usually lower costs. effective June 8. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. .S. or any new and useful improvement thereof. the utility requirement.S. § 102. the patent that issues on the divisional application will not have the max- © 2008 Thomson/West.2. The inventor is entitled to only one patent. novel as set forth in 35 U. which is discussed in detail in § 7. However. and thus issue and maintenance fees need to be paid only on a single patent.3 FOR EDUCATIONAL USE ONLY How to Write Pat.S. The invention has to be new. under revisions to the patent law.

2. Inc. which could adversely affect the effective term of the patent issued on certain of the patentable features. M.3 FOR EDUCATIONAL USE ONLY How to Write Pat. *6-17 5.. [FN7. No Claim to Orig. v. such as a machine with various components. L. Almost any biotechnology invention. or an apparatus and a method of using the apparatus.2.E. Works.com. Claims directed to different statutory classes.2.10]. Exactly what are "independent and distinct inventions" is murky at best. The following are warning signs of situations where the Patent Office is likely to give a restriction requirement: 1. section 801 et seq. IPIXL Holdings.3 (Cite as: PLIREF-PATAPP s 6. 430 F. each of which is patentable in its own right. . be alert to the fact that there may be a restriction requirement. There are multiple patentable features of an invention.PLIREF-PATAPP § 6. An application where the broadest independent claims are of overlapping scope.P. where there are multiple ways of claiming the same invention. 3.2. there is not a single broadest claim. or a process where there are various steps. Accordingly. A chemical case where there are a large number of species. or a product and a method of using the product. 4. Application s 6. For example. such as a product and a method of making the product.3) Page 2 imum possible term. the Patent Office presents its interpretations of restriction and electionof-species requirements." In the Manual of Patent Examining Procedure. Amazon.L. that is.3 END OF DOCUMENT © 2008 Thomson/West. all of which are patentable in their own right.P. PLIREF-PATAPP s 6. whenever encountering one of these situations. US Gov. Cir.2.3d 1377 (Fed. 2005). the Patent Office interprets the word "and" in "independent and distinct" to mean "or.C..

This section describes the basic claim form and meaning of claim language. and drafting the body of the claim is described in § 6. and body are labeled. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.3) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Each claim is a single sentence generally in the form: Preamble Transition Body For example: A wagon [preamble] comprising [transition]: (a) a platform.3. Application s 6. The examples in Exhibit 6-1 present claims in which the preamble. Works.3. Writing the preamble is explained in § 6.PLIREF-PATAPP § 6.4. transition phrases are described in § 6. (b) two axles attached to the platform. No Claim to Orig. US Gov. Preferred arrangement and numbering schemes for the claims are also discussed. PLIREF-PATAPP s 6.3. transition.3.3 How to Write Pat. October 2006 Chapter 6: Preparing the Claims *6-17 § 6.3 END OF DOCUMENT © 2008 Thomson/West.3 Claim Form and Language The claim form and language are highly stylized to emphasize precision and clarity.3 (Cite as: PLIREF-PATAPP s 6.5. and [body] (c) wheels on each axle. .

1 FOR EDUCATIONAL USE ONLY How to Write Pat. . 35 U. [FN8] Although an application with the claims preceding the specification will be examined. [FN8]. END OF DOCUMENT © 2008 Thomson/West. the Patent Office prefers the claims to follow the specification.1 Claims Are Placed After the Specification The claims are placed after the specification. [FN9].3.1 (Cite as: PLIREF-PATAPP s 6.E.P. US Gov.3.3 Claim Form and Language *6-18 § 6.P. Works.S. See M.C. § 601. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. October 2006 Chapter 6: Preparing the Claims § 6.3.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. § 112. No Claim to Orig.PLIREF-PATAPP § 6. Application s 6. [FN9] The claims must start on a separate page.3.

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19, October 2006 Chapter 6: Preparing the Claims § 6.3 Claim Form and Language *6-18 § 6.3.2 Single Sentence Rule: Every claim is a single sentence. Each claim is a single sentence, starting with "I (or We) claim:", "What is claimed is:", or the equivalent, and ending with a period. The language "What is claimed is:" appears immediately before the first claim and is not repeated. It is recommended that the language "What is claimed is:" be used rather than language that uses a pronoun such as "I" or "We." This is because it may be necessary to change the inventorship during prosecution of the application from a sole inventor to multiple inventors or vice versa. If "We" or "I" is used in the claims, it may be necessary to amend the claims when changing inventorship. A claim composed of two or more sentences, such as a claim with more than a single period, is improper. The claim must end with a period, and there is only one period (".") in a claim. [FN10] Also, capital letters are used only at the beginning of the claim and to define standard capitalized forms (such as ° C) in the body of the claim. The first word (the first word after "what is claimed is") of every claim is capitalized. [FN10]. M.P.E.P. § 608.01(m). PLIREF-PATAPP s 6.3.2 END OF DOCUMENT

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19, October 2006 Chapter 6: Preparing the Claims § 6.3 Claim Form and Language *6-19 § 6.3.3 Preamble Rule: Every claim has a preamble. § 6.3.3.1 Purpose and Form of Preamble The preamble is a short introductory statement that precedes the body of every claim. The preamble of an independent claim can (1) summarize the type of invention, (2) identify the relationship between the invention and the prior art, (3) describe how the invention operates upon some external article, and (4) define the purpose of the invention. As discussed in § 6.4, the preamble of a dependent claim is different from the preamble of an independent claim, and usually refers only to the "parent" independent claim. The preamble can, but does not have to, identify the statutory class of the invention (that is, process, machine, article of manufacture, or composition of matter). For example, the preamble can be "a machine for making felt," or "a method for making felt." Words such as "apparatus," "device," or "circuit" can be used as alternative expressions for the class of machines. The statutory class can also be implied from the common or generic name for the invention. For example, "a binary computer for calculating . . .," "a self-propelled lawn sprinkler," and "a carburetor" refer to claims for machines, while "a fertilizer composition" identifies a compositionof-matter claim. The broader the preamble, the less helpful it is, although the preamble can be very broad, for example, no more than "A process," "An apparatus," or "A composition." The preamble usually includes the intended function of the invention. The function can be stated directly (for example, "A process for purifying water," "A device for striking nails," or *6-20 "A composition for promoting the conversion of water to hydrogen"), or indirectly through the choice of a noun having a recognized functional content (for example, "A distillation," "A hand hammer," or "A catalyst"). Examples of preambles are: • A composition . . . • A composition for fertilizing soil . . . • Apparatus . . . • Apparatus for transferring fertilizer from a first conveyor belt to a second conveyor belt running parallel to the first belt but in an opposite direction . . . • A device for fertilizing soil . . .

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• A method . . . • A method for fertilizing soil . . . • A circuit for detecting discontinuities in the insulation of an insulated wire . . . When an application contains claims to different classes of invention, the preambles of the different types of claims will, of course, be different. When there are different independent claims to the same class of invention, the use of different preambles is often helpful (for example, "A heater," "A composite heating device," "A heating assembly"). When the preamble opens with one noun (for example, "process" or "apparatus") and goes on to use one or more other nouns, it is often helpful, even if not grammatically necessary, to repeat the first noun at the end of the preamble. For example, in "Apparatus for shaking articles to dislodge impurities comprising . . .," it is unclear whether "comprising" refers to the "apparatus" or the "impurities." It is better, therefore, to write "Apparatus for shaking articles to dislodge impurities, the apparatus comprising . . ." This technique is demonstrated by the preamble of the claim of Exhibit 6- 1(a). The word "apparatus" is repeated in the preamble of the claim of Exhibit 6-1(a) so that it is clear that the word "comprising" relates to the "apparatus," and not to the "articles." That avoids a rejection for indefinite or ambiguous language. *6-21 Although the repetition is not necessary, it is a good practice to follow, so that ambiguities are avoided in more complicated preambles. The preamble in a dependent claim is a very short version of the preamble in the independent claim from which it is dependent. The differences between dependent and independent claims are discussed in § 6.4.1. § 6.3.3.2 Does the Preamble Limit the Claim Scope? Rule: If a limitation in the preamble of the claim is intended to limit the scope of the claim, the limitation should be repeated in the body of the claim. Rule: If the limitation in the preamble is not intended to limit the scope of the claim, the limitation should be deleted from the preamble. It is important to write the preamble sufficiently broadly so that the preamble does not limit the scope of the claim, unless the practitioner intends to limit the claim. An issue that often arises in litigation or during prosecution of an application is whether the limitations that appear in the preamble are actually limitations in the claims. [FN11] The terms appearing in a preamble may be deemed limitations of a claim when they give *6-22 meaning to the claim and properly define the invention. [FN12] For example, the "optical wave guide" language in the preamble below was held to limit the scope of the claim so that the claim was not anticipated by a prior art patent that disclosed a doped silica core and a sheath of silica, but did not recite the "optical wave guide" limitation: [FN13] 1. An optical wave guide comprising: (a) A cladding layer formed of a material selected from the group consisting of pure fused silica and fused silica to which a dopant material on at least an elemental basis has been added, and (b) a core formed of fused silica to which a dopant material . . . The court held that when the patent was read as a whole in light of the specification, the "optical wave guide" language limited the claim to those select core and cladding combinations that would function as an optical wave guide and not merely any core/cladding combination. [FN14] Similarly, "Apparatus for shaking articles to dislodge impurities" would by implication exclude all inventions that shake articles for other purposes, such as to distribute heat or to blend a mixture more effectively.

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*6-23 The form of a Jepson claim itself indicates the inventor's intention to use the preamble to define structural elements of the claimed invention. [FN15] However, if the preamble merely states a purpose or intended use of the invention, and the remainder of the claim completely defines the invention, the preamble does not limit the scope of the claim. [FN16] In Marston v. J.C. Penney, the invention comprised a waterproof, flexible structure used for cushions, mattresses, and life preservers that was made of plastic tubing sealed at regular intervals to form pockets of air. The preamble read "a buoyant, flexible filler pad comprising a plurality of strip portions arranged in naturally disposed relation. . . ." The alleged defendant's infringing article was a chaise longue with a webbing surface fabricated from a similar plastic tube structure. The court found that the preamble did not limit the claim to structures that were buoyant because the preamble merely stated an intended use and the remainder of the claim completely defined the invention. The Patent Office will try to review a patent in its entirety in order to determine whether the inventors intended such language to represent an additional structure limitation or mere introductory language. The Patent Office is likely to give the broadest reasonable interpretation consistent with the rest of the disclosure without reading limitations from *6-24 the specification into the terms of the preamble. [FN17] The Patent Office does not give the preamble the effect of a limitation unless it breathes life and meaning into the claim. In order to limit the claim, according to the Patent Office, the preamble must be essential to point out the invention defined by the claims. [FN18] The Federal Circuit has provided guideposts as to a preamble's effect on claim scope: [FN18.1] (1) Jepson claiming generally indicates intent to use the preamble to define the claimed invention, thereby limiting claim scope. (2) Dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention. (3) When the preamble is essential to understand limitations or terms in the claim body, the preamble limits claim scope. (4) When the preamble recites additional structure or steps underscored as important by the specification, the preamble may operate as a claim limitation. [FN18.2] (5) Clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation *6-25 because such reliance indicates use of the preamble to define, in part, the claimed invention. [FN18.3] (6) A preamble generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention. (7) Preamble language merely extolling benefits or features of the claimed invention does not limit the claim scope without clear reliance on those benefits or features as patentably significant. (8) Preambles describing the use of an invention generally do not limit the claims because the patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure. (9) Statements of intended use or asserted benefits in the preamble may, in rare instances, limit apparatus claims, but only if the applicant clearly and unmistakably relied on those uses or benefits to distinguish prior art. (10) The preamble is a claim limitation if it recites a central structure or steps, or if necessary to give life, meaning, and vitality to a claim. [FN18.4]

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(11) A preamble is a claim limitation when the body of the claim derives antecedent basis from the preamble. [FN18.5] To avoid ambiguity, it is recommended that any limitation that appears in the preamble that is intended to be a limitation on the subject matter of the claim be included in the body of the claim itself. For example, a claim directed to a fiber optic wave guide could be as follows: *6-26 3. An optical wave guide comprising: (a) a cladding layer formed of fused silica to which a dopant material on at least an elemental basis has been added, and (b) a core formed of fused silica to which a dopant material . . . such that the combination of the core and cladding acts as an optical wave guide. This claim makes it clear that limitation in the preamble is intended to limit the subject matter of the claim. Contrarily, if a limitation in the preamble is not intended to limit the scope of the claim, eliminate the limitation. If it is absolutely necessary to recite "nonlimiting" language in the preamble for clarity, then consider use of language such as "suitable for." [FN19] For example: 1. A structure suitable for use as an optical wave guide, the structure comprising: . . . [FN11]. Kropa v. Robie, 187 F.2d 150 (C.C.P.A. 1951); Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 58 U.S.P.Q.2d 1508 (Fed. Cir. 2001); Apple Computer, Inc. v. Articulate Sys., Inc., 234 F.3d 14, 57 U.S.P.Q.2d 1057 (Fed. Cir. 2000). See Anthony R. McFarlane, A Question of Claim Interpretation: When Does a Preamble Limit the Scope of the Claim?, J. PAT. & TRADEMARK OFF. SOC'Y, Sept. 20, 2003, at 693. [FN12]. Gen. Elec. Co. v. Nintendo Co., 179 F.3d 1350, 50 U.S.P.Q.2d 1910 (Fed. Cir. 1999); Pitney Bowes v. Hewlett-Packard Co., 182 F.3d 1298, 51 U.S.P.Q.2d 1161 (Fed. Cir. 1999); Rowe v. Dror, 112 F.3d 473, 42 U.S.P.Q.2d (Fed. Cir. 1997) ("Balloon angioplasty catheter" in preamble is structural limitation due to Jepson form of claim); In re Paulsen, 30 F.3d 1475, 31 U.S.P.Q.2d 1671 (Fed. Cir. 1994) ("computer" is a necessary limitation to the claims because it "breathes life and meaning into the claims"); Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 228 U.S.P.Q. 90 (Fed. Cir. 1985); Perkin Elmer Corp. v. Computervision Corp., 221 U.S.P.Q. 669 (Fed. Cir. 1984); Polly-Am. v. GSE Line & Tech., Inc., 383 F.3d 1303 (Fed. Cir. 2004). [FN13]. Bell Commc'ns Research, Inc. v. Vitalink Commc'ns Corp., 55 F.3d 615, 34 U.S.P.Q.2d 1816 (Fed. Cir. 1995); DeGeorge v. Bernier, 768 F.2d 1318, 226 U.S.P.Q. 758 (Fed. Cir. 1985); Corning Glass Works v. Sumitomo Elec. U.S.A., 868 F.2d 1251, 9 U.S.P.Q.2d 1962 (Fed. Cir. 1989). [FN14]. Id. [FN15]. Rowe v. Dror, 112 F.3d 473, 42 U.S.P.Q.2d 1550 (Fed. Cir. 1997); Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022 (Fed. Cir. 2002); see § 6.4.3 regarding Jepson claim format. [FN16]. Marston v. J.C. Penney Co., 353 F.2d 976, 148 U.S.P.Q. 25 (4th Cir. 1965), cert. denied, 385 U.S. 974 (1966); Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 58 U.S.P.Q.2d 1508 (Fed. Cir. 2001); Apple Computer, Inc. v. Articulate Sys., Inc., 234 F.3d 14, 57 U.S.P.Q.2d 1057 (Fed. Cir. 2000); Boehringer Ingleheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 65 U.S.P.Q.2d 1961 (Fed. Cir. 2003); Intirtool, Ltd. v. Texar Corp., 369 F.3d 1289 (Fed. Cir. 2004). [FN17]. Gustausson v. Valenti, Bd. Pat. App. & Inter., No.101, 925 (June 10, 1993). The board concluded that "hermetically enclosed" should not be narrowly construed as requiring an airtight seal, and a foam block may be

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considered to be a "hermetic" enclosure. [FN18]. M.P.E.P. § 2111.02. [FN18.1]. Catalina Mktg. Int'l v. Coolsavings.com, 289 F.3d 801 (Fed. Cir. 2002). [FN18.2]. Poly-Am., LP v. GSE Line & Tech., Inc., 383 F.3d 1303 (Fed. Cir. 2004). [FN18.3]. Metabolyte Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354 (Fed. Cir. 2004). [FN18.4]. Poly-Am., LP v. GSE Line & Tech., Inc., 383 F.3d 1303 (Fed. Cir. 2004). [FN18.5]. Bicon Inc. v. Straumann Co., 441 F.3d 945 (Fed. Cir. 2006). [FN19]. The author knows of no decision that has held that the language "suitable for" actually avoids limiting the scope of the claim. PLIREF-PATAPP s 6.3.3 END OF DOCUMENT

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PLIREF-PATAPP § 6.3.4 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.3.4 (Cite as: PLIREF-PATAPP s 6.3.4)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19, October 2006 Chapter 6: Preparing the Claims § 6.3 Claim Form and Language *6-26 § 6.3.4 Transitions: From Preamble to the Body and from Elements to Subelements Claims that recite a combination of elements require a transitional phrase between the preamble and the body of the claim. The term "transition" or "transitional phrase" is used to denote a word or words that introduce a further recitation of claimed features. Nearly all claims have a transition between the preamble and the remainder of the claim. These transitional phrases denote varying degrees of breadth of the scope of the claim. [FN20] Some transitions are "open"; others are "closed"; yet others are partially closed. A transition is said to be "open" if its effect is to say that the recited features must be present, but that other features may also be present. A transition is said to be "closed" if its effect is to say that the *6-27 recited features must be present, but no other features can be present. The following discussion as to the meaning of transitional phrases applies whether the transitional phrase is being used to go from the preamble to the body of the claim or from an element to a subelement. The discussion is consistent with the interpretation the Patent Office uses. [FN21] § 6.3.4.1 "Comprising" and Equivalents The transitional phrases "comprising," "which comprises," "including," [FN22] "containing," [FN22.1] and "characterized by" [FN23] are construed to mean that the named elements are essential but that the claim includes additional elements that are not specifically recited in the claim. [FN24] These transitional words are used whenever the prior art permits because they create an "open" (as opposed to a "closed") claim. It is best to use only "comprising" or its grammatical equivalent because its meaning is well settled. With regard to the dangers of using "including," see § 6.5.17. Open claims encompass elements that are not specifically recited in the claim. For example, a claim that reads, "the combination comprising A + B" also covers the combination "A + B + C + D . . ." Thus, a claim to "a chair comprising a seat and three legs fastened to the seat" is infringed by a chair that has additional elements (for example, a back and a fourth leg). [FN24.1] Similarly a claim element "comprising . . . an *6-28 elimination apparatus" is not limited to only one elimination source, but also covers a product that has two elimination sources. [FN24.2] § 6.3.4.2 "Consisting of" Closed transitions such as "consisting," "consisting of," and "constituting" are the most restrictive transitional words--excluding substantially all unrecited elements from the combination. [FN25] These words are used only if the prior art necessitates use of a limiting expression, as when the prior art recites the elements of the claim at issue plus additional elements. In addition, Markush groups must be introduced by closed transitions (see § 6.4.4 below).

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Closed transitions constitute an absolute restriction when used for mechanical combination or process claims. In a mechanical claim, closed transitions signify that the claim covers only the recited elements and none other. [FN26] Similarly, process claims use closed transitions to indicate that the process consists of only the recited steps. However, in a composition-of-matter claim, closed claims are infringed by a composition that includes trace amounts of additional ingredients that are normally present as impurities. [FN27] "Consisting of" language has also been interpreted to require the presence of the specified elements so that replacing one of the elements with another that does not achieve all the *6-29 desired functions is not an infringement under the doctrine of equivalents. [FN28] The use of closed language in an independent claim precludes a subsequent dependent claim from adding elements to those listed in the closed parent claim. However, the term "consisting of" does not limit a claim as to aspects unrelated to the invention. [FN28.1] § 6.3.4.3 "Consisting Essentially of" Partially closed transitions such as "consisting essentially of" have a scope between the scope of "comprising" and that of "consisting." Hybrid phrases such as "consisting prevailingly but not essentially of . . ." [FN29] are also considered partially closed. In general, partially closed transitions exclude "additional unspecified ingredients that would affect the basic and novel characteristics of the product defined in the balance of the claim." [FN30] In other words, these phrases encompass unrecited elements only if these elements are not essential to define the novel and nonobvious aspects of the invention claimed. However, in Ziegler v. Phillips Petroleum Co., [FN31] the Fifth *6-30 Circuit held that "consisting essentially of" permitted material additions as long as the ingredients recited in the claim were present in the infringing composition and those ingredients constituted the "real invention." Partially closed terminology is used primarily in process and composition-of-matter claims because that terminology allows the claim to exclude prior art that recites the elements of the claim plus additional elements. For example, if the invention comprises the ingredients A, B, and C and the prior art reveals the ingredients A, B, C, and D, the invention can be claimed as "consisting of" or "consisting essentially of" A, B, and C. This language excludes element D, and does not read on the prior art. However, if ingredient E can be added to the claimed composition without adverse effects on its purpose, X, the applicant cannot use the language "consisting of A + B + C," because an infringer could avoid infringement merely by adding the element E. Contrarily, infringement of a claim that uses the partially closed transition "consisting essentially of A + B + C" is not avoided by adding nonessential elements to "A + B + C." § 6.3.4.4 "Composed of" and "Having" The terms "composed of" [FN32] and "having" [FN32.1] are interpreted in light of the specification to determine whether open or closed claim language is intended. Thus "composed of" has been interpreted to mean "consisting essentially of" [FN32.2] and "having" has been interpreted to be "at least partially open." [FN32.3] *6-31 § 6.3.4.5 Nonuse of "Step of" in the Transition It has been conventional to use the transition "step of" in method claims. One reason to do this was to make it easier to write dependent claims, by referring to the element in the independent claim as "step of. . . ." There is a risk, however, that some court may interpret "step of" as the same as "step for" under paragraph six of 35

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U.S.C. § 112, thereby unduly limiting the scope of the claim. [FN32.4] There are two techniques to avoid the problem. First, the specification can include a disclaimer that "step of" does not mean "step for." (See section 7.5.10.3.7 for such a disclaimer.) Second, the claims can be written without the use of the word "step," using instead a synonym such as "act." For example: 1. The method of converting chemical A to chemical B comprising the acts (steps) of: (a) melting chemical A; and (b) combining melted chemical A with chemical C. With this language, it is easy to prepare dependent claims by referring to the "act of" or "step of." For example, if the preferred version of the process involves melting chemical A by combining it with boiling water, then a dependent claim can read as follows: 2. The method of claim 1 wherein the act of (or step of) melting comprises combining chemical A with boiling water. *6-32 § 6.3.4.6 Examples of Use of Transitions The following are examples of claims in which the transitions are italicized. These claims illustrate how the choice of transition changes the scope of the claims. [FN32.5] (a) 1. A bicycle seat which comprises (i) an elastically deformable seat support which comprises springs comprising an elastomer, (ii) a flexible seat cover which is supported by the seat support, and (iii) a rigid support to which the seat support is attached and which is spaced apart from the seat cover. 2. A seat according to claim 1 wherein the seat support consists of springs comprising elastomer. 3. A seat according to claim 1 wherein the seat support comprises springs consisting of elastomer. 4. A seat according to claim 1 wherein the seat support consists of springs consisting of elastomer. 5. A seat according to claim 1 wherein the rigid support consists of a metal. 6. A seat according to claim 5 which consists of the deformable seat support, the seat cover, and the rigid metal support. 7. A seat according to claim 1 which consists of the deformable seat support, the seat cover, and the rigid support. 8. A seat according to claim 1 which consists of the deformable seat support, the seat cover, and at least one rigid support. The varying scope of these claims is shown by the following three bicycle seats: *6-33 (i) a bicycle seat wherein all of the springs consist of a metal core surrounded by a jacket of elastomer--covered by claims 1, 2, and 5-8. (ii) a bicycle seat wherein some of the springs consist of the elastomer and other springs consist of a metal--covered by claims 1, 3, and 5-8. (iii) a bicycle seat wherein the seat includes two rigid supports, one consisting of a metal and the other consisting of a polymer--covered by claims 1-5 and 8. [FN20]. Ex parte Davis, 80 U.S.P.Q. 445 (Pat. Off. Bd. App. 1950). [FN21]. M.P.E.P. § 2111.03. [FN22]. In re Certain Slide Fastener Stringers, 216 U.S.P.Q. 907 (I.T.C. 1981).

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[FN22.1]. Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369 (Fed. Cir. 2004). [FN23]. M.P.E.P. § 2111.03. [FN24]. Medichem v. Rolabo, 353 F.3d 928 (Fed. Cir. 2003); Moleculon Res. Corp. v. CBS, Inc., 793 F.2d 1261, 229 U.S.P.Q. 805 (Fed. Cir. 1986); In re Crish, 393 F.3d 1253 (Fed Cir. 2004). [FN24.1]. Invitrogen Corp. v. Biocrest Mfg. L.P., 327 F.3d 1364, 66 U.S.P.Q.2d 1631 (Fed. Cir. 2003) ("comprising . . . the . . . steps . . . growing . . . at a temperature of . . . [A to B . . .]" is infringed by a process that also includes a step of growing outside the claimed temperature range). [FN24.2]. Scanner Techs. Corp. v. ICOS Vision Sys. Corp. N.V., 365 F.3d 1299 (Fed. Cir. 2004). [FN25]. Am. Original Corp. v. Jenkins Food Corp., 696 F.2d 1053, 216 U.S.P.Q. 945 (4th Cir. 1982), aff'd, 774 F.2d 459, 227 U.S.P.Q. 299 (Fed. Cir. 1985); Norian Corp. v. Stryker Corp., 363 F.3d 1321 (Fed. Cir. 2005). [FN26]. In re Certain Slide Fastener Stringers, 216 U.S.P.Q. 907 (I.T.C. 1981). [FN27]. In re Grasselli, 713 F.2d 731, 218 U.S.P.Q. 769 (Fed. Cir. 1983). [FN28]. Vehicular Tech. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1084, 54 U.S.P.Q.2d 1841 (Fed. Cir. 2000) ("consisting of two springs" not infringed by a structure with a single spring and a plug stuck in one end of the spring). [FN28.1]. Norian Corp. v. Stryker Corp., 363 F.3d 1321 (Fed. Cir. 2004) (a claim directed to "a kit . . . consisting of . . . [certain chemicals] . . ." did not exclude from it a kit that also included a spatula); Conoco, Inc. v. Energy & Envtl., Inc., 460 F.3d 1349 79 U.S.P.Q.2d 1801 (Fed. Cir. 2006). [FN29]. AK Steel Corp. v. Sollac, 344 F.3d 1234, 68 U.S.P.Q.2d 1280 (Fed. Cir. 2003); Natta, et al. U.S. Patent No. 3,112,301. [FN30]. In re Garnero, 412 F.2d 276, 162 U.S.P.Q. 221 (C.C.P.A. 1966); Water Techs. Corp. v. Calco Ltd., 850 F.2d 660, 7 U.S.P.Q. 1097 (Fed. Cir. 1988). [FN31]. Ziegler v. Phillips Petroleum Co., 483 F.2d 858, 177 U.S.P.Q. 481 (5th Cir. 1973), cert. denied, 414 U.S. 1079, 180 U.S.P.Q. 1 (1973). [FN32]. AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 57 U.S.P.Q.2d 1776 (Fed. Cir. 2001); M.P.E.P. § 2111.03. [FN32.1]. Crystal Semiconductor Corp. v. Tritech Microelectronics Int'l, Inc., 246 F.3d 1336, 57 U.S.P.Q.2d 1953 (Fed. Cir. 2001). [FN32.2]. AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 57 U.S.P.Q.2d 1776 (Fed. Cir. 2001). [FN32.3]. Crystal Semiconductor Corp. v. Tritech Microelectronics Int'l, Inc., 246 F.3d 1336, 57 U.S.P.Q.2d 1953 (Fed. Cir. 2001). [FN32.4]. See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 381 F.3d 1371 (Fed. Cir. 2004) (the district court determined that "the method comprises the steps of" implicates 35 U.S.C. § 112, ¶ 6; Federal Circuit reversed

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since claiming a step by itself, or even a series of steps, does not implicate section 112, paragraph 6). [FN32.5]. In re Crish, 393 F.3d 1253 (Fed Cir. 2004). PLIREF-PATAPP s 6.3.4 END OF DOCUMENT

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PLIREF-PATAPP § 6.3.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.3.5 (Cite as: PLIREF-PATAPP s 6.3.5)

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Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19, October 2006 Chapter 6: Preparing the Claims § 6.3 Claim Form and Language *6-33 § 6.3.5 Body of Claim The body of a claim is written in the form of a narrative sentence that follows the preamble and the transitional phrases. The body of a claim consists of (1) a recitation of the elements of the invention, and (2) a description of how these elements structurally, physically, or functionally cooperate with each other to make up the invention. For example, in the claim for a shaker presented in Exhibit 6-1(a), the body of the claim comprises all that follows "which comprises." The description of the elements of the claim and the cooperative language is limited to a technical description without surplus or laudatory statements. In rare cases, the invention is only a single element. In those cases, the body of the claim merely describes that single element. For example: 1. A process for treating the surface of a polyethylene article to increase its receptivity to printing ink, the process comprising the step of: exposing the surface of the article to a saturated solution of sodium dichromate and concentrated sulfuric acid. § 6.3.5.1 Defining the Elements The elements are either the main structural components of an apparatus, article, or machine; the steps of a process; or *6-34 the ingredients of a composition of matter. In the claim of Exhibit 6-1(a), the elements of the shaker device consist of the container, base, legs, and oscillating means. There are four important things to tell about each element: 1. What is its name? 2. Does it have any distinctive features that distinguish it from other elements within the same class? 3. How does the element cooperate with the other elements of the claim? 4. What is the function of the element? § 6.3.5.1.1 Introducing the Elements When an element is introduced for the first time, it is generally preceded by an indefinite article ("a" or "an"). There are two exceptions to this rule. First, plural elements can be introduced in the plural form or by a numerical adjective without any introductory article, as in "containers" or "two containers." Second, means clauses can be introduced without preceding articles, such as "means for heating." The exact scope to be given to a means clause is unsettled. The Federal Circuit has held that means clauses are limited to the corresponding structure, materials, or acts described in the specification and equivalents thereof. [FN33] However, the Patent Office in determining patentability of a means clause will interpret "means" to include any or all means for performing the specified functions and will not limit "means" to those taught in the specification and their

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PLIREF-PATAPP § 6.3.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.3.5 (Cite as: PLIREF-PATAPP s 6.3.5)

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equivalents. [FN34] Thus, means clauses are interpreted broadly as to patentability, and it is difficult to obtain allowance from the Patent Office, and at the same time, they are narrowly interpreted during litigation. This paradoxical state of affairs needs to be resolved. *6-35 When a previously introduced element is referred to later in the claim, the element is preceded by a definite article ("the") or its equivalent ("such" or "such as"); for example, "the container" or "the two containers" or "such container." The word "said" can be used in place of "the." However, it is recommended that use of "said" be avoided as being too legalistic. The claims may need to be interpreted by a jury or judge, and it is best to avoid stilted or legalistic language. § 6.3.5.1.2 Single Clause For clarity, the description of each element should be presented as a single clause. Each clause within the claim should be set apart by punctuation, such as commas or semicolons, even if the claim contains only two elements, to assist in understanding the claims. Semicolons should be used to set off clauses whenever one or more of the clauses contains internal punctuation. Parentheses and hyphens can be used to set apart clauses, but are ordinarily not necessary. Each element of the claim can be labeled as "(a)," "(b)," "(c)," etc., to assist in interpreting the claims. For claims having multiple elements it is preferred that the claims be punctuated and organized so that sets and subsets of elements are easily recognized. A preferred format is as follows: 1. A machine comprising: (a) a base comprising: (i) a top; and (ii) a bottom; (b) a support system on the top of the base, the support system comprising: (i) element 1; (ii) element 2; and (iii) element 3; and (c) a golf ball catcher supported by element 1 of the support system. *6-36 The claims of Exhibits 6-1, 6-5, 6-9, and 6-11 follow this format. It is best not to introduce a new element in the middle of a clause that describes another element. In other words, it is better to recite each element and its subelements in a separate clause. For example, the claim "a container which is connected pivotally to a plurality of parallel legs" is of undesirable form because it recites two elements (the container and the legs) within a single clause. Similarly, it is improper to write, "a lever having a forked end pivoted on a pin mounted between the furcations of the forked end." Since the pin is not part of the lever but a separate mechanical element, it is better to write the claim as: (a) a lever having a forked end, the forked end comprising spaced-apart furcations; and (b) a pivot pin mounted between the furcations. More than one element can be introduced within a single clause when the latter elements are subelements of the main element claim. Subelements should be introduced by a transition word that suggests that they are a portion of the first named element, for example, "a container [first element] having [or including, comprising, etc.] a plurality of legs [second element]." § 6.3.5.1.3 Structural Definitions

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PLIREF-PATAPP § 6.3.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.3.5 (Cite as: PLIREF-PATAPP s 6.3.5)

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Each element should be assigned a descriptive name. Usually a variety of names is available. For example, the base in the claim of Exhibit 6-1(a) could have been called "a support" or "a mounting plate"; the container might have been designated "a box" or "a holder." While the patentee can be his own lexicographer, no term may be given a meaning repugnant to its usual and common meaning. [FN35] Further, if a special meaning is given to a word or *6-37 phrase naming an element, the special meaning should be defined in the specification, and if possible, the definition should be used in the claim itself. For example, if the claims use the term "sol-gel," the specification can include the statement "as used in this description and in the appended claims, the word 'sol-gel' means a polymeric solution that condenses to form a gel structure." Names for elements must be chosen carefully because the name selected for an element can affect the breadth of the claim. Broad claims can be drafted by using a more generic name for the article. If generic names are not available, a name that describes the function or purpose of the element, such as "a rotary member" or "a holder," can also be used; similarly, "means" clauses are also often used to describe an element broadly, for example, "means for fastening." When naming elements of the invention that are similar (but not identical) in structure or function, an adjective can be used to distinguish between the elements, such as "holding member" and "support member" or "a plate having first and second opposed sides." When the elements are identical, it is better to use designations such as "first" or "second," as in "a first rotating member" or "a plate having first and second opposed sides." An element can also be distinguished by associating the element with another element, for example, "a base rotating member" or "a connector rotating member." Once a name is assigned to a particular element, the same name should be consistently used to identify the same element; do not give the same element different names in successive claims, unless to intentionally change the breadth of the claim. Similarly, once a distinguishing adjective is used to identity a particular element, the same adjective should be consistently used to describe that element. The most difficult task, particularly for patent applications for complicated machines, is to name the various elements. To find a name, it is best to start with the inventor, because usually the inventor has a name for each element. *6-38 However, that route may not be satisfactory because the inventor may use jargon, which is not adequate for a patent application. A thesaurus and a dictionary are indispensable tools for the practitioner and should be frequently referred to when preparing the claims. A glossary of terms commonly used to name elements, as well as functional definitions for many elements, is provided in chapter 7, Exhibit 7-1. Avoid names that are inaccurate or antithetical to usual terminology. Names that are unacceptable include "doodad," "thingamajig," "gadget," and "thing." Although it is proper to refer to elements as "first," "second," "third," etc., it is recommended, wherever possible, to use more descriptive adjectives where available for claim clarity. For example, use of "left" and "right," or "upper" and "lower" is more descriptive than "first" and "second." However, if use of a descriptive adjective unduly narrows the claim, then it is better to use "first" and "second," that is, it is better to sacrifice a little clarity for breadth of claim coverage, at least in the broadest claim in the application. § 6.3.5.1.4 Functional Definitions Functional language can also be used to define an element as opposed to merely describing the function of an already defined element. Functional language defines elements in terms of what the element accomplishes rather than in terms of what it is. Under 35 U.S.C. § 112, an element in a combination claim may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts to support the function. [FN36] Although functional language is extremely broad, it is statutorily limited to encompass only the structure, material, or process steps described

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PLIREF-PATAPP § 6.3.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 6.3.5 (Cite as: PLIREF-PATAPP s 6.3.5)

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in the specification and equivalent structures. [FN37] *6-39 Functional language can only be used in claims that recite a combination of elements. [FN38] § 6.3.5.1.4.1 "Means For" and "Step For" Clauses The use of "means for" and "step for" language in claims is explicitly authorized by 35 U.S.C. § 112. The exact terminology provided by the statute, "means or step for performing a specified function," should be used, as in "means for reciprocating the container." Language that is substantially similar to this language is generally accepted, for example, "element for . . ." or "a mechanism for oscillating" or "a mechanical device for oscillating." However, any language that is not sanctioned by the statute runs the risk of being rejected as overly broad. For example, "apparatus which shakes a container" may be rejected as a narrative statement of the function of an undefined element while "apparatus for shaking the container" would be acceptable. Paragraph 6 of section 112 applies to method and process claim elements when steps plus function without an act are present. Thus "step" refers to the generic description of elements of a process, implemented by "acts." [FN39] A short and distinctive name should be used to refer to a previously introduced means clause. For example, the means for reciprocating the container can be referred to later in the claim as "the reciprocating means" or "the container reciprocating means" or "the means for reciprocating the container." It is better not to refer to means clauses as the "first means" or "second means," etc., because it makes the claim difficult to follow. Often an adjective is used before the word "means" to make it easier to write dependent claims. For example, instead of using the language "means for reciprocating a container," *6-40 an acceptable term is "reciprocating means for reciprocating a container." The latter language allows a dependent claim to refer to the means clause by shorthand as the "reciprocating means," rather than the more awkward language "means for reciprocating a container." The "means for" language must be followed by reciting the function (step or operation) that the means performs, such as "means for oscillating the container." The function performed by the means must be clear and definite; indefinite language will be rejected. For example, a claim to a "wing means " was held improper because the function performed by the "wing means" was unclear. [FN40] A means clause can include within itself a secondary or subelement means clause. It is permissible to claim "means for [performing function A], including means for [performing function B]," if B is a subelement of A, as in: • Oscillating means for causing oscillations to be produced in the polyphase circuit having a frequency dependent upon the tuning in the polyphase circuit, the oscillating means including means for producing the magnetic field between said anodes and cathode. [FN41] Literal infringement of a means-plus-function claim requires that a structure not identified in the specification be "equivalent" as that term is used in paragraph 6 of section 112. The Federal Circuit has held that such a structure must have been in existence as of the filing date. However, subsequently developed structures can be "equivalent" under the doctrine of equivalents. [FN42] *6-41 There is a presumption that an element defined in terms of "means" is a "means for" clause under paragraph 6 of 35 U.S.C. § 112, [FN43] and that a clause without the "means for" language is not interpreted as a "means plus function" clause. [FN44] However, clauses without "means for" language have been treated as paragraph 6 of section 112 clauses where there was no structure identified in the clause, [FN45] and clauses with "means for" language have not been interpreted as a means clause where the clause is predominantly structural. [FN46] However, to add further complexity to the matter, the Federal Circuit has also held that a structural term in the *6-42 functional phrase does not always preclude application of section 112, paragraph 6. [FN47]

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" indicates that the claim is not to be interpreted according to section 112. A single structural element that performs more than one function can be recited in more than one means clause. ensure that broad © 2008 Thomson/West. and (3) the phrase "means for" or "step for" is not modified by structure.3. or acts which would preclude application of paragraph 6 of section 112. [FN47. the rotating means and the reciprocating means of the claim of Exhibit 6-1(b) can be recited by separate means clauses even if they are driven by the same motor and shaft. For example.3. the same element can be claimed with two separate means clauses. the scope of the protection granted is also limited to the structure disclosed in the specification and equivalent thereto. [FN54] the Federal Circuit requires that the narrow interpretation of the means clauses be used by the Patent Office. [FN50] Under these guidelines. [FN47. [FN49. when a single element performs separate functions (for example. (2) the "means for" or "step for" is modified by functional language. However. Application s 6. If an applicant wishes to have the claim limitation treated under paragraph 6 of section 112. a claim element that does not include the phrase "means for" or "step for" is not considered to invoke section 112." This situation commonly occurs when a single motor is used to synchronously drive more than one element. material. [FN52] Although the Patent Office was reluctant to change the established practice since In re Lundberg [FN53] and In re Arbeit. material. The means clauses (or means-plus-function clauses) are to be interpreted narrowly by the Patent Office so that the "means" clause encompasses only the structure disclosed in the specification and equivalents thereof. [FN48] Mean-plus-function language can include a structure described in the prior art section of a patent.1] The Patent Office has established guidelines for examining "means for" clauses and determining whether a clause should be evaluated under paragraph 6 of section 112. [FN51] The element can be claimed as "means for advancing a cutter" and as "means for limiting the rate of travel of the cutter. because of the narrow interpretation.5 FOR EDUCATIONAL USE ONLY How to Write Pat. the examiner will be limited to structures disclosed in the application. *6-45 During prosecution. paragraph 6. a claim limitation is interpreted to invoke paragraph 6 of section 112 if it meets the following three-prong analysis: (1) the claim limitation uses the phrase "means for" or "step for".PLIREF-PATAPP § 6. The difference between a function and an act is that a function says what an element accomplishes while an act corresponds to how the function is accomplished. With respect to the first prong of this analysis. No Claim to Orig. Works. thus making the invention less obvious. US Gov.5 (Cite as: PLIREF-PATAPP s 6. Therefore. only if those structures are clearly linked or associated with the claim element. has limitations similar to. such as "step for.5) Page 5 A factor in determining whether a claim limitation qualifies as a "step plus function" limitation is whether the method claim is "parallel" to. a single element [a] advances a cutter and [b] limits the rate of travel of the cutter). the absence of words in a claim indicating "step plus function" form. or acts for achieving the specified function. But. the claim limitation is written *6-44 as a function to be performed and does not provide any structure. the applicant must either (1) amend the claim to include the phrase "means for" or "step for" or (2) show that even though the phrase "means for" or "step for" is not used. [FN55] Now both the courts and the Patent Office must interpret "means" clauses limiting them to the structure described in the patent specification and equivalents thereto. . Thus. that is.1] A method claim limitation that lacks the term "step for" cannot be construed as a step-plus-function limitation unless there is a showing that the limitation recites no act as distinguished from reciting a function.3. when using "means" clauses.2] A "means for" clause is construed to cover the corresponding structure and material described in the specification and equivalents thereof. an apparatus claim having a "means plus function" clause. [FN49] A means-plus function claim element is interpreted to include disclosed structures that perform the function. A "step for" clause is construed to cover the corresponding acts described in the specification and *6-43 equivalents thereof. each means clause being directed to a distinct function of the element.

language can be added to the closing to prevent this from occurring.5 (Cite as: PLIREF-PATAPP s 6.PLIREF-PATAPP § 6. Functional statements should be placed either at the end of the description of the particular element after everything necessary to support the functional clause has been set out.7 for such language.5.5. [FN56] Unlike a means clause.5) Page 6 description of the structure incorporated into the "means" clause is given in the application. Application s 6. § 6. welding.10. a claim is less likely to be considered overly broad when the functions are set out one at a time rather than at the end of the claim. surface tension. whereby [an effect happens] 5.3. Works.3. the "whereby" clause has been judicially construed not to define any structure. creating [a physical property] 3. a claim is easier to follow when the function of an element is recited immediately after the element itself.3. Also. This can be accomplished by giving an expansive definition of what structure is included. use generic structural elements in claims. such as: 1. In general. or at the end of the claim when all the elements of the claim are necessary to support the functional expression. No Claim to Orig. hooks.3. such that [the functional relationship is achieved] 4. For example. functional language can be presented in a variety of forms. [FN57] Thus a "whereby" clause in a means plus function clause merely states the result of © 2008 Thomson/West.4. so that [a desired end results]. hook and pile fasteners. See section 7. § 6.1.5 FOR EDUCATIONAL USE ONLY How to Write Pat. but instead. the specification may describe "a fastening means" to include threaded fasteners such as nuts and bolts.4.5. While a means clause should use the "means *6-46 for" language. adhesives and epoxies. US Gov. and thus [the desired end is achieved] 6. magnets.2 Functional Language The distinction between means clauses and other forms of functional expressions is primarily a distinction of form and not substance. soldering.3 "Whereby" Clauses "Whereby" and "thereby" clauses are proper only when they describe a function or result that necessarily follows from a previously recited structure. rivets. and nailing.3. providing [some operation] 2. Examples of broadening a claim through use of generic structural language rather than means clauses are the following: Means Clause means for fastening means for supporting means for catalyzing means for heating Generic Language a fastener a support a catalyst a heater To avoid having a court or the PTO improperly interpret a claim element under paragraph 6 of section 112 where that is not the intent of the applicant.1. .3. Another technique for obtaining broad coverage is to avoid using means clauses.

.3. The Federal Circuit has held that a "whereby" clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim. The claim then proceeds to describe the remaining elements in the order in which they contact the container. whereby clauses are given weight if they further define recited structure.2 Order of the Elements The elements within the claim should be presented in a logical arrangement to make the claim easy to understand. [FN60] Another situation in which a whereby clause is given weight is where it states a condition that is material to patentability.3. elements are ordered to reflect their degree of "closeness" to the article or articles upon which the invention operates.5 (Cite as: PLIREF-PATAPP s 6. the shaker apparatus © 2008 Thomson/West. A method for measuring the electrical resistance of an unknown resistor R . the method comprising the x steps of: .3. the container having apertured walls. Works. A container for articles. whereby the articles are retained in the container as they are shaken. the apertures of which are smaller in size than the articles to be shaken. US Gov. Whereby clauses can also be used in method claims.1] Accordingly. In contrast. whereby the resistance of the unknown resistor R is determined from x the equation: R x = R • R 1 2 ------R 3 Whereby clauses can also be used to introduce the products formed from a process step. building *6-49 from the base. [FN60." *6-48 "Whereby" clauses should not be used to distinguish over the prior art. whereby the product C is formed. a proper "whereby" clause used in a shaking apparatus claim reads: 1. [FN59] but they are not given weight if they merely recite a necessary result achieved by claimed structure.1] § 6. A structural arrangement for a claim first recites the base (for mechanical inventions) or the source of power (for electrical circuits).5 FOR EDUCATIONAL USE ONLY How to Write Pat. [FN57. . . and adds no weight in determining infringement. for example. and varying the resistance of at least one of said known resistors so that the voltage detected across terminals (A) and (B) falls to zero. No Claim to Orig. For example. [FN58] Stated another way.3.PLIREF-PATAPP § 6. In the functional arrangement.5. For example. for example: 1. "an apertured container for the articles whereby the articles are retained in the container as they are shaken" is improper because it attempts to claim a desired result--retaining the articles in the apertured container--without reciting the structure performing the function. "reacting A and B under condition X. The two most common logical arrangements are the "functional" and the "structural" arrangements. Such clauses should only be *6-47 used when the equivalent phrase "it follows from the foregoing that" can be used to replace the "whereby" clause. then recites the remaining elements.5) Page 7 the limitations in the means clause. The shaker apparatus claim in Exhibit 6-1(a) is ordered in a functional arrangement with the first element recited being the "container" that contacts the articles to be shaken. Application s 6. a "whereby" clause must be preceded by some recitation of structure. and adds nothing of substance to the claim. The function of the container (retaining the articles) necessarily follows from the recited structure.

followed by the remaining elements in functional or structural order. . . the apparatus comprising: (a) a base. a claim that reads: "An improved carburetor in combination with a gasoline engine" is a patentable combination because the carburetor cooperates with the engine. which comprises: a container. On the other hand. or output signal. it is defective because it fails to tie the elements together to define a complete and operable combination. so that the legs support the container for oscillating movement with respect to the base. one receives. or a "base" (the other claim elements are "supported" by the base). Apparatus for shaking articles. and (d) means for oscillating the container on the legs to shake the articles. US Gov. a washing machine associated with a dial telephone is an *6-51 unpatentable aggregation because there is no actual cooperation between the elements recited. (b) a plurality of parallel legs having opposed ends. (c) a container for the articles connected pivotally to the other ends of the legs." [FN62] As a general rule. One judge analogized an unpatentable aggregation to a track team and a patentable combination to a football team: [FN64] [In the football team] one passes. For example.3. No Claim to Orig.PLIREF-PATAPP § 6.5 FOR EDUCATIONAL USE ONLY How to Write Pat. a plurality of legs. one end of each leg being connected pivotally to the base.5 (Cite as: PLIREF-PATAPP s 6. Although the claim contains a proper list of elements.3. It would not be possible to describe the cooperation of the three elements until all three elements had been introduced. an effective claim drafting procedure is to start with any element that is in the proper functional or structural sequence. another runs. For example. another blocks. Thus the first-named element of a claim is preferably an element having an easily described relationship with the other elements of the claim. [FN63] For example. then describe the element or elements that act simultaneously.5) Page 8 claim in Exhibit 6-1(a) can read: 1. Structural arrangements are often preferred for motorized mechanical inventions and electrical circuits where it is easier to describe the device starting from the motor. . input power source. two elements may cooperate with a third element. it is better to state too much connection and cooperation between elements (if the claim is not unduly narrowed) rather than chance rejection on grounds that the claim is drawn on a mere catalog of elements. When describing elements where a large number of elements act simultaneously. Recitation of the placement or connection of the first-named element is not needed. For example. and later referring back to the earlier named element when describing its relationship with a later named element. Works. and means for isolating the container. Sometimes it is not possible to logically explain the cooperation of a new element with the other elements of the claim when the new element is first introduced. It is possible to overcome this problem by first introducing the element *6-50 in the claim. [FN61] the statutory class of "machine" has been judicially construed to require that the claim recite an operative combination of elements--not a mere aggregation of elements "like so many parts lying in a box.3. § 6. the following claim is objectionable as being merely a catalog of elements: 1. Elev- © 2008 Thomson/West. a base. and still others hold the line.5. the first-named element can be a "housing" (the other claim elements are "housed" in the housing).3 Cooperation The "cooperation" between elements should be described by specifying how the elements interact with each other to form an operative device or process. A fine line distinguishes patentable combinations of elements from unpatentable aggregations of elements. Although there is no express statutory requirement for statements of cooperation.3. Application s 6. . A machine for shaking articles.

and novel means to indicate when the damper was closed was upheld even though there was no direct cooperation between the fireplace and the invention. including terms of cooperation. On the other hand. for example. it should be possible to diagram the structure of the claimed invention. [FN69] A useful test to determine if a claim adequately includes the cooperation between elements is to attempt to diagram the claimed invention. Recent cases hold that a claim should not be rejected merely because it recites an aggregation of elements. Consider. one runs. but there is lacking the vital spark of cooperation or coordination. © 2008 Thomson/West. it is recommended that frequent use be made of the dictionary to make certain that the correct term is used and that it is sufficiently broad to cover all patentable *6-53 and technically feasible versions of the invention. is novel and nonobvious. Statements of cooperation form the bridges connecting the islands or the peninsulas to each other. In Ex parte Nolden. it is not necessary to recite any cooperation if elements do not actually cooperate with one another. a claim to a "combination" of a fireplace. Application s 6. [FN65] the Patent Office Board of Appeals held that there is nothing about an aggregation claim per se that requires rejection under the Patent Act. Exhibit 6-2 shows schematics of proper and improper forms of cooperation. it is not necessary to recite the cooperation between the elements of a kit of unassembled parts. each in his own way. all of which have similar meanings. if not the actual structural configuration of the invention--at least the functional relationship between the elements. Exhibit 7-1 provides a glossary of terms. The necessary cooperation need not be a "direct mechanical interaction". For a method claim.5 FOR EDUCATIONAL USE ONLY How to Write Pat. not as one unit but as several. another jumps. . [FN68] Further.3. They all work for a common general good. it should be possible to draw a flow chart from the claim language. and they co-act as a unit. I think of a track team as an aggregation. If this is not possible. They work. Precision in choice of language in claims is important. the following words. [FN66] Thus.3.5) Page 9 en men are doing different things. Thus. the claim may be indefinite or only refer to a collection of elements. a claim is not aggregative merely because its elements do not function simultaneously. damper. a typewriter is not an aggregation even though the keys work separately. The elements of Exhibit 6-2(a) show proper cooperation because each element is related to some other element. the cooperation between the elements of Exhibit 6-2(b) is improper because elements D and E are left dangling with no apparent connection to the other elements of the combination. but which could very well be interpreted to differ in the scope of claim coverage that each provides: • proximate • adjacent to • contiguous • adjoining • overlapping • near • connected to • secured to.3. and not always simultaneously. the elements can function independently "so long as the over-all result is patentable"--that is. particularly with regard to the relationship between various elements.5 (Cite as: PLIREF-PATAPP s 6. For example. [FN67] *6-52 Also. For a mechanical claim. When choosing the words to describe the relationship between elements. Works. another throws. One common analogy is to visualize the elements as islands and portions of elements or subelements as peninsulas. No Claim to Orig. to advance the ball. US Gov.PLIREF-PATAPP § 6. to amass points for their alma mater. another hurdles. yet they are working toward a common end.

Works. • A rotary cam attached to one end of said shaft. [FN70] A structural connection can also be explicitly stated.2 Functional Cooperation The cooperation between elements can also be expressed by describing how the element functions within the operative framework of the whole invention. .. and (3) by relating the elements in terms of their order. Structural statements can also be used to relate the ingredients described in a composition-of-matter claim. such as "fixed above" or "adjacent to". [FN71] For example. The dynamic or static mechanical linkage between elements. (2) functional cooperation. the structural connection can be broadly defined when the precise form of structural connection is not essential to the patentability of the invention.3.3. "to shake the articles. they are relatively easy to draft. The physical interaction of elements may be described by reciting: 1. ." Other examples of the structural connection statements include: • A turntable on which the barrel is mounted." Means clauses can either explicitly or implicitly define the connection between two elements.. US Gov. 2. § 6.PLIREF-PATAPP § 6. • A cam follower engaging the cam . First. A third element that interfaces between two previously introduced elements. Other functional statements in Exhibit 6-1(a) state the function of the container. phrases like "connected to" or "mounted on" are much broader than "fixed to" or "bolted to.5 (Cite as: PLIREF-PATAPP s 6.5.3.3. . the cooperation between the legs and base in the shaker apparatus claim is stated as "a plurality of parallel legs. ." Language such as "fixed to" or "secured to" expresses forms of static linkage.3. the statement that the legs are pivotally mounted "to support the container for oscillating movement" is a statement that expresses the function of the pivoting mounts." and the function of the oscillating means. The relative positions of two or more elements. "for the articles. For example. and • A worm gear enmeshed with the drive gear.3." Functional statements can be introduced © 2008 Thomson/West. as in "means engaging the container for oscillating. . . • A capacitor electrically connected to the emitter of said transistor . Secondly. in the shaker apparatus claim of Exhibit 6-1(a). .3. Application s 6. For example. for example. . "arm connecting the support member to the rotating wheel. each of which is connected pivotally at one end of the base. .5) Page 10 Cooperation may be expressed in either of three forms: (1) structural cooperation. No Claim to Orig. the statement "means for oscillating the container" implicitly requires some part of the means described to engage the container so that the container can oscillate.1 Structural Cooperation Structural cooperation is defined by stating the physical or mechanical connection between the elements.5 FOR EDUCATIONAL USE ONLY How to Write Pat.5. . *6-54 3. for example: • Nickel in the presence of a catalyst • Nickel mixed with copper • Nickel alloyed with iron • Nickel containing iron impurities *6-55 § 6. ." Statements of structural connection offer two advantages. For example.

). the scope of the claim is not affected by the in- © 2008 Thomson/West. and (c).5.5 FOR EDUCATIONAL USE ONLY How to Write Pat. [FN71.5. Application s 6. The first word of each element *6-57 or clause of the claim is indented and additional indentations within clauses are used to further segregate subelements. include dependent claims where the steps are expressed in different orders. should recite the order of the steps to define the cooperation between each step. Works. For example: 1.3. a radio transmitter and receiver can cooperate regardless of their relative locations--thus. the function of a particular step or operation in a process claim can be expressed as "heating the glass composition to form a molten liquid." "for.3. or the tabular form. This form adds little to claim comprehension when the subparagraph form is used. there is no precise structural relationship between those elements. However." Similarly. and to even further avoid ambiguity.5 Reference Numbers Reference numerals that identify elements in the specification and drawings can be used within the claim to refer to that element." and "in order to.3.E. Means for reciprocating the strand guide so that it moves [in a stated manner]. An element can also be recited by a generic name that implicitly states its function. § 6. it is safest to explicitly say so in the claim.3.3. A turntable [element A] is mounted [structural connection] for rotation therewith [function]. This form is preferred for simple claims with a small number of elements. identifying characters.3. 2. such as (a).1] § 6. When there is no structural relationship between two elements.3 Order of Steps A claim that recites a sequence of operations. No Claim to Orig. making it easier to understand the structure of the claim. [FN74] The reference numerals should be enclosed within parentheses to avoid confusion with other numbers or characters.5.P." § 6.4 Claim Format The claim should be formatted so that each element described in the claim is set apart. the subparagraph form.3. cooperation is expressed solely in functional language. "addition of sodium to act as a fluxing agent in the glass composition. (b). are used to set out each element or clause.P. For example. . the elements are set apart by commas. "after the drying step" or "simultaneously with the mixing step. for example. the elements can be related merely by reciting that functional relationship.5) Page 11 by expressions such as "so that.5 (Cite as: PLIREF-PATAPP s 6. In that situation. a dependent claim might refer to performing an added step "after step (c)" of its parent claim. [FN72] In the single paragraph form. For example. The subparagraph or tabular claim--as used in the claim of Exhibit 6-1(a)-." Statements of functional cooperation can be used in addition to statements of structural cooperation to make the claim easier to understand. or in discussing the claim with an examiner in the Patent Office. for example. but purely a functional relationship. US Gov. for example.PLIREF-PATAPP § 6. the function of a load-bearing member that is called "a support" is implicit. In the outline format. [FN73] A colon typically is inserted after the transitional phrase and semicolons can be used to separate elements. such as a five-line claim with two or three elements. *6-56 Functional statements can be used for composition-of-matter claims. the letters help in referring back to elements of previous claims. such as a process claim.is generally preferred because that form makes a complex claim easier to follow for both the reader and the novice claim drafter." If the order of steps does not matter. [FN75] According to the Manual of Patent Examining Procedure (M. Such claims use functional statements only to define some special functional interaction between the ingredients of the composition. Either of several formats can be used: the single paragraph form.

. [FN34].S. 23 U. 39 U. [FN35]. [FN36]. Method steps usually have a sequential relationship.S.2d 1161 (Fed.C. Inc. at least in the broadest claim. U. § 6. 1998).S. 35 U. App. v. v. Aeroquip Corp. not "is heated.193. 694 (Pat. Bd. 50 U. 15 U.5 (Cite as: PLIREF-PATAPP s 6. Id. Cir.S. 1984). ITC.P. [FN76. US Gov.S.3. Such language does not in of itself impose a spatial or temporal limitation into the claims. v.5. § 112.Q.P. For example. where one step occurs before another or two steps occur simultaneously.Q. O. This is an active form of a verb.2d 881.2d 1566 (Fed. usually recited in the verb gerund or "ing" form.2d 1783 (Fed. In re Bond. 91 F. 1.Q.Q.2d 1777 (Fed..3. 178 F.3.5 FOR EDUCATIONAL USE ONLY How to Write Pat. 159 U. 1997). v. Telular Corp. For example. [FN41]. [FN76] However.2d 1015 (Bd. L.3d 1576.P.3d 1578.3d 1308.P.C. 221 U.7 Use of "First" and "Second" Use of the terms "first" and "second" is a common patent law convention used to distinguish between repeating elements or limitations.. 1996) ("detent mechanism" is not "means plus function" clause). Tekmar Co. Al-Site Corp. Serrano v. Ethicon Endo-Surgery.P. 1991).Q. *6-58 § 6. In re Bowles.S." The verb usually acts on something. Personalized Media Commc'ns. Ex parte Klumb. 111 F.S. Automatic Prods. Unidynamics Corp.5. There need not be any physical relationship between the steps of the method claim.P. [FN43].PLIREF-PATAPP § 6. 1999). Pat. [FN44].3d 1580.6 Method Steps A method claim recites a series of steps. 48 U.2d 1538 (Fed. 1997). 157 F. 1999) © 2008 Thomson/West. Application s 6. [FN42]. U. Use of terms such as "reaction zone" rather than "reaction chamber" and "heating area" rather than "heater" are preferred in method claims. v. Patent No. 733 F. Corp.Q. 1967).Q. 174 F. App.. It is best to minimize structure limitations in the steps. Off.. 42 U. Greenberg v. See Lear Siegler. Cir. & Inter. Cir. Also the function or purpose for performing the step is described. Cir. such as an apparatus. Id.S.5) Page 12 clusion of reference numerals.P. [FN37]. Cir. Int'l Ltd. [FN39]. .L. VSI Int'l. No Claim to Orig. passive forms are not used.2d 831.2d 1099 (Fed.3d 1312 (Fed. 115 F.I. Cir. 910 F. [FN38]. reference numerals are rarely used by practitioners in the United States because of the fear that a court may limit the scope of the claim by holding that the claim encompasses only those embodiments that are equivalent to the specific embodiment referred to by the reference numeral.971.Q. 1025 (Fed. Inc. [FN40].P.3.Q.P. Works.3.S.S. "heating" is used. 1990). Cir. the steps of "heating" and "cooling" do not need to be done in the same apparatus or have any physical relationship to each other.S. Cir.3d 1311.1] [FN33].

3d 1360.2d 1619 (Fed. . 2002). Inc.2d 1908 (Fed. [FN50]. 1957)." does not invoke 35 U..PLIREF-PATAPP § 6. Inc. 12 U.Q. 40 U.. Lee. Automatic Prods. § 112. [FN47]. Reg. 99 U.S.Q." not a step-plus-function limitation).2d 1896 (Fed. 54 U.2d 1001 (Fed. [FN54].510..P.A.S. 61 U. [FN48].2d 1103 (Fed. Cir. Works.S. 126 F. 2004) (even though "connector assembly" covers a broad class of structures.. Cir. v. Unidynamics Corp. Devon Indus. .. B.. Inc. York Prods. at 251. 1998. 101 F.S. & TRADEMARK OFF..3d 1303. Advanced Cardiovascular Sys. v. v. U. 48 U. 382 F. .P. Cir. v. .C. Inc.3d 1311.Q.S.3d 1354 (Fed. Mas-Hamilton Group. 35 U. Supplemental Examination Guidelines for Determining the Applicability of 35 U.P. 41 U.3.Q.S. hooks.2d 1470 (Fed.3d 1311.3.2d 947. 303 F. 1953). v..S.S. Cir. Means Plus and Step Plus Function Claims: Do We Only Know Them When We See Them? J. 2000) ("baffle means" not a means-plus-function claim. v. Inc. .S. LaGard.P. 123 (C. 1999) ("positioning means" not means clause because of detailed recitation of structure). Inc. Epcon Gas Sys. United States. Cir. Haas Automation. [FN53].5) Page 13 (unpublished) ("digital detector for .. In re Arbeit. Application s 6. v. Kimberly-Clark Corp. Envirco Corp. v.Q. or sutures that are capable of connecting when these elements were not linked or associated with the claimed function and helical windings were). Lighting World.. 38.S.. 530 (C. 156 F. Edwards. Rodime PLC v. .. 2005) ("means .. .P. 72 U.Q.Q..2d 1010 (Fed. 2000). § 112. v. [FN49]. Sage Prods.P. Inc." not a "means plus function" clause under § 112. 40 U.. Medtronic.Q.Q." not means clause because steel baffles refer to particular physical apparatus). ¶ 6. Cir. bearing capacity comprising internal steel baffles . Cir. Inc. . ¶ 6. AWH Corp.P.2d 550. In re Lindberg. .C. 99 F.5 FOR EDUCATIONAL USE ONLY How to Write Pat.S. [FN51]. 1998) ("spring means" "tending to keep the door closed" is within § 112.2d 1099 (Fed. 1997).P...Q.2d 1370. © 2008 Thomson/West. SOC'Y.C.3d 1207 (Fed.S. 64 U. v.S.. ¶ 6"). 2002) ("step of .3d 1206. where structural details included in the claim). 1996) ("perforation means" not "means plus function" element under § 112. .P.S. Reed v. Cent. because the word "baffle" imparts structure). Tractor Farm & Family Ctr. Inc. US Gov.1]..3d 1313 (Fed. Toro Co.S.P.. Clestra Cleanroom. 888 F.P. In re Iwahashi. Cir. for increasing . Linear Tech. [FN52].Q.3d 524. 113 U. v. Int'l Ltd. 206 F.3d 1568. 43 U. 1997). ¶ 6. 1989).2d 1065 (Fed. Inc. Birchwood Lighting. Masco Corp.Q. it is not a means plus function clause).P.A.Q.P.Q.S. 206 F.S. Abbott Labs.2d 1129 (Fed. [FN49. .P. 50 U.A. Cir.P.P.3. Inc. Cir.2d 1607 (Fed. Seagate Tech. Impala Linear Corp. Cir. 1939).C. 124 F. 58 U. 209 F. 48 U. 363 F. Corp.Q. paragraph 6 even though other claims use the terminology "control means").2d 1449 (Fed Cir.P. 379 F. . Inc.5 (Cite as: PLIREF-PATAPP s 6. Cir..2d 1429 (Fed. transmitting a force . Cir.3d 1294. Braun Med. 2004) ("control mechanism" is subject to section 112. 65 Fed. Cir. ¶ 6). Cir. . [FN45].. Phillips v.P.P. and forming load locks . ¶ 6). Cole v. No Claim to Orig. 157 F. v.. 1996) ("means formed on the . [FN47.Q. 620 (C. IMS Tech. 2004) ("circuit" has sufficient structure so it is not interpreted as a means clause).Q. [FN47. 355 F. 2001) ("Means for connecting" does not include straight wire.P.S. Deere & Co. Inc. Cir.S.2d 543. . 248 F.2d 1182 (Fed. .C. 44 U. v. 174 F.3d 1419. et al.2]. 244 F. Inc. .C. 102 F. 1998) ("lever moving element" was properly construed as a means-plus-function element).3d 1420..1]. see William F.3d 1316. § 112.3d 1422. Inc. .S. Inc. [FN46]. Bauer Compressors. Apr. PAT.

.P.A.05(k).2d 905.P. 465 (C. 270 (U. § 112.P.P. [FN60. Ex parte Nolden.C. 1965). § 2173.E. Hoffer v. Instruments. 1957).S. 2001). Works. 149 U. Inc. Cir.Q. [FN58].3d 1189. In re Venezia. [FN70]. 16 F.05(k).2d 926. Id. Centraal Corp.S. 169 U. [FN57]. v./Loral. 12 U.P. 136 U.P. No Claim to Orig. Cir.P.A. 177 U. Cir. See Altris.Q.Q.P.. [FN63]. v.P.Q. US Gov.P.P. [FN68].Q. 226 (C.E.2d 210. Ex parte Adams & Ferrari.S.S.A. M. v. In re Certain Pers. M. 439 F. Id.Q.Q.. See In re Gustafson.E.S.5 (Cite as: PLIREF-PATAPP s 6.3.Q. Belting Co.P. Lockheed Martin Corp. [FN62]. [FN67]. In re Certain Pers. 169 U.P. Oil Well Improvements Co. Microsoft Corp.2d 733. App. 530 F. 312 F.C. [FN64].3d 1347 (Fed.Q.C. 35 U. 177 U.3d 1363. Netword. [FN71. [FN56].S.01(m). 1973). [FN65]. 270 (I. Ex parte Adams & Ferrari.P.A.P.. Symantec Corp.2d 1865 (Fed.C. 1994) (twelve judges of the Federal Circuit expressly overruled any portion of Lundberg or Arbeit that may have been inconsistent). 1970). [FN66]. [FN59].2d 872.S. 244 F. 61 (10th Cir. Inc.P. [FN73].S.P.3d 1326 (Fed. Application s 6.C. Off.2d 896. 189 U. Id. Bd.P. Rajchman v.S. In re Donaldson Co. 249 F. 1963). © 2008 Thomson/West. Ancol Co.1].S. 127 (C. Off.P.C. Id.Q. 1931). 1971).Q.Q.P. [FN69]. 65 U.. Bd.3.3. 2005). 1993). [FN75]. 1976). § 608.PLIREF-PATAPP § 6.5 FOR EDUCATIONAL USE ONLY How to Write Pat. Tex. 1964). 29 U. 378 (Pat.2d 1018 (Fed.Q. See In re Swinehart. Computers. In re Mason. 1971). 224 U.S. Uniroyal. Cir. Cir. Int'l Trade Comm'n 1984).C. Skinner Bros.1]. 54 F. Bd.3d 1314 (Fed.Q.2d 956.5) Page 14 [FN55]. [FN61]. 149 (C. 224 U. 21 (Pat. 242 F. Computers.P.S.S. 759 (2d Cir. 2003) (order of steps a main issue on appeal). 331 F.. Inc. Space Sys. 21 (Pat. Herbert & Simpson. 318 F. 1973).P. 2001). United States Int'l Trade Comm'n. 114 U. [FN72].P. App. 448 F. Off.P. [FN57. [FN60].S. 26 U. [FN71].T. See M.1].S. Cir.A. 405 F. v. 141 U. [FN74].P. § 2173.2d 1845 (Fed. . Inc.S. App.S. v. 585 (C. LLC v.Q.P.

2003).1]. Co. 3M Innovative Props. 350 F.3d 1365 (Fed. No Claim to Orig.. Application s 6.5 END OF DOCUMENT © 2008 Thomson/West.5 FOR EDUCATIONAL USE ONLY How to Write Pat. M.PLIREF-PATAPP § 6.P.E.3. Cir.3.5 (Cite as: PLIREF-PATAPP s 6. PLIREF-PATAPP s 6.5) Page 15 [FN76]. [FN76. . § 608. v.P.01(m). Avery Dennison Corp.3. US Gov.3. Works.

75(f). Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. the claims of like species should be grouped together. . Application s 6. . [the most detailed combination acceptable]. 37 C.P. To facilitate examination. § 1. it is not necessary to number the claim. . the claims must be numbered consecutively with Arabic numerals. they are numbered in sequence.F. a logical arrangement for a set of claims would read as follows: What is claimed is: 1. [FN77] An application that "slips in" an unusually broad claim towards the end of a large number of claims (for example. . the number attached to each claim in the original application is preserved throughout prosecution. § 1.PLIREF-PATAPP § 6. When separate species are claimed. M. Claims should be arranged in the most logical order proceeding from the broadest claim to the narrowest claim.R. product and process claims should be separately grouped. If there are multiple claims.3 Claim Form and Language *6-58 § 6.6) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. that form of grouping may not be possible when the claims of several species originate from a single. 37 C.R. A pencil as recited in claim 1. even if claims are canceled or added. wherein . is not numbered.3. [FN79]. [FN78]. US Gov.6 FOR EDUCATIONAL USE ONLY How to Write Pat. © 2008 Thomson/West. A pencil having .6 (Cite as: PLIREF-PATAPP s 6. § 608. [broadest claim] 2.126.P. . . [FN80] When the application contains a single claim. The M. October 2006 Chapter 6: Preparing the Claims § 6.3. Utility patent applications almost always contain more than a single claim.F. Works.01(m).6 Arranging and Numbering the Claims If there is only one claim. [more detail] 3. [FN79] However. . For example.3.E. [FN78] For example. as claim 18 out of 19 claims) may be rejected. [FN81] Claims are not renumbered until the application is ready to be issued. Id. [FN82] [FN77].P.E. and claims of separate species should be separated. No Claim to Orig. The claims are also subject to strict numbering requirements. When several claims are submitted. [FN81]. [FN80].3. such as in design and plant patents. suggests a preferred ordering and numbering scheme that facilitates classification and *6-59 examination of the application. broad generic claim. Id.P. A pencil comprising .

. Works.6) Page 2 [FN82].3.6 FOR EDUCATIONAL USE ONLY How to Write Pat.3.PLIREF-PATAPP § 6. Application s 6. US Gov.6 END OF DOCUMENT © 2008 Thomson/West. No Claim to Orig. PLIREF-PATAPP s 6. Id.3.3.6 (Cite as: PLIREF-PATAPP s 6.

The Jepson claim is used to claim an improvement to an existing device. or composition of matter. No Claim to Orig. Markush language is used to claim alternative elements from a group of related elements.4 (Cite as: PLIREF-PATAPP s 6. Product-by-process claims are claims that cross the boundary between product and process inventions. US Gov. are useful in special situations.PLIREF-PATAPP § 6. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.4 Types of Claims There are two basic types of claims: independent claims and dependent claims (including multiple dependent claims). [FN83]. § 1. An independent claim stands alone and includes only the limitations recited in the claim itself.R.4 END OF DOCUMENT © 2008 Thomson/West.75(c). it is not dependent upon any other claim to make it complete. on the other hand. and productby-process claims. adds limitations to some other claim incorporated into the dependent claim. 37 C. claims containing Markush language. [FN83] Specialized forms of claims.F. A dependent claim. Application s 6. . October 2006 Chapter 6: Preparing the Claims *6-60 § 6.4 How to Write Pat. Works.4) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. process. Multiple dependent claims are dependent claims that incorporate by reference any one of a number of claims. such as the Jepson claim. PLIREF-PATAPP s 6.

Each sequence of dependent claims is run out in proper form. the transitional phrase "wherein" or "in which" is used to signify the relationship between the two claims.4. suitable language would read "a mechanical pencil including an eraser" or "a mechanical pencil comprising in addition an eraser.1 Dependent Claims § 6. . the dependent claim must clearly indicate its dependency on the parent claim. [FN83. For example. October 2006 Chapter 6: Preparing the Claims § 6. as shown in Exhibits 6-3(a) and (b). However. When the parent claim has a long preamble. open-ended transitions. should be claimed in a continuous sequence of claims before returning to an earlier claim in the sequence to start another chain." After reciting an introductory statement. Exhibit 6-3(c) is improper because claim 12 should *6-62 follow claim 10. paragraph 4." the preamble of the dependent claim uses the language "The container for shaking articles of claim 1 . Use of different introductory language. Application s 6.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. if the parent claim begins with "A container for shaking articles. suitable language is "a mechanical pencil wherein the body is formed of plastic.1 Form of Dependent Claims In general. such as "further comprising" or "including" or "further including. Thus.1] As with independent claims.1 (Cite as: PLIREF-PATAPP s 6. "The container of claim 1. These words allow the claim to read on any device that has elements in addition to those recited or incorporated in the claim.S.C. No Claim to Orig." can cause the dependent claim to appear to claim a different invention and thus be indefinite.4 Types of Claims *6-60 § 6." When a dependent claim is used to modify or qualify a previously introduced element. only claims 1 and 17 are independent claims.4." The words used to establish dependency on the parent claim are a matter of choice.1 FOR EDUCATIONAL USE ONLY How to Write Pat. so long as the dependency of the claim is clearly defined. § 112." are preferred for dependent claims that add elements. US Gov." or "as defined in claim 1." Dependent claims should be numbered and arranged to facilitate comprehension. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. The first sequential cluster chains claims 1 through 5. for example. each of which is dependent upon a preceding claim. or else it is invalid under 35 U. by such expressions as "as recited in claim 1. a chain of sequential dependent claims. A proper form of sequential claims is shown in Exhibit 6-3(d). © 2008 Thomson/West.1.PLIREF-PATAPP § 6. Works." "as specified in claim 1.4. the dependent claim can recite a condensed preamble that briefly *6-61 states the general category of the invention.4. . and so on. the preamble of a dependent claim repeats the main portion of the preamble of its parent claim. the second cluster chains claims 6 through 8. A solitary dependent claim that depends upon an independent claim can be placed anywhere in the claims section. it is improper to allow an independent claim (claim 11) to break the sequence." "of claim 1. .". such as "A device for containing articles to be shaken.4. In this cluster of sequential claims. For example. A dependent claim must limit the scope of the claim from which it depends. For example.

[FN85] For example. a claim that incorporates only two elements. further including: a temperature sensing device attached to the container to monitor the temperature of the container. B. "support"). A dependent claim can only add a new element to a claim or modify an already introduced element. as follows: 5. These limitations are considered to be incorporated by reference into the dependent claim.1. 3. Rather the function should be introduced with means language (that is. It cannot subtract an element of a claim or call for only part of a claim. For example. § 6. the following dependent claims are improper.1 FOR EDUCATIONAL USE ONLY How to Write Pat. [FN84] The dependent claim cannot omit any element present in its parent claim. Dependent claims can also be used to modify or qualify elements or to define their relationships with one another. The apparatus of claim 1 without the connector. 2. (b) a rotary cam driven by the motor. a function performed by already introduced elements. and C. US Gov. if the parent claim comprises elements A. the "means" element of the claim in Exhibit 6-1(a) *6-64 can be qualified by describing a specific embodiment of the oscillation mechanism in greater detail. For example. cannot be written in the form of a dependent claim. ingredients.3 Use of Dependent Claims Dependent claims are generally used when it is desirable to further limit the elements of a parent claim by either (1) adding elements or (2) providing a more detailed description of a previously introduced element. A and B. that is.1 (Cite as: PLIREF-PATAPP s 6. wherein nickel is added in the concentration of 5%. Elements. such as: 3.PLIREF-PATAPP § 6. as recited above. The composition of claim 1. Works. For example. © 2008 Thomson/West. . The shaking apparatus of claim 2. *6-63 A claim dependent from an apparatus claim should not add only method limitations. Dependent claims are construed to include all the limitations of the "parent" claim. Ingredients for a composition-of-matter claim and steps to a process claim can be added by a dependent claim. No Claim to Orig. the dependent claim form has to include all three elements.4.4. in which the oscillating means comprises: (a) a motor.1.4. New elements that are added by the dependent claim must cooperate with the elements of the parent claim. further comprising: means for detecting the passage of a predetermined time interval. A shaking apparatus as recited in claim 1. dependent claim 4 can recite: 4.4. Application s 6.2 Content of Dependent Claims A dependent claim must define the cooperation between each element recited within the claim. "means for supporting") or a functional element (that is. a dependent claim that adds a timing device to the shaker apparatus of Exhibit 6-1(a) reads: 2. as well as the cooperation of its elements with the elements of the parent claim. The connector of the apparatus of claim 1 used in a sailboat (where the apparatus of claim 1 includes elements in addition to the connector).4.1) Page 2 § 6. A sequence of dependent claims can be used to claim additional elements or elaborate on the structure of an element that was introduced in a prior dependent claim. For example. if dependent claim 2 adds an element. A shaking apparatus as recited in claim 1. or process steps can be added by using dependent claims.

Elements can also be qualified in dependent claims by reciting preferred process conditions or concentrations of ingredients. • A compound as recited in claim 12. a dependent product-by-process claim can be used. 457 F.4. 1953).3d 1284 (Fed. wherein the pH-modifying substance is ammonium hydroxide. [FN86]. and (d) a link pivoted at one end to the cam follower and at its other end to the container.C. wherein the step of heating comprises heating the solution to a temperature of 80° to 90° C.S.. so long as the dependent claim includes all the limitations of the parent claim. such as "An article produced in accordance with the method of claim 1. 99 U. Works. Cir. Inc. PLIREF-PATAPP s 6. Off.1 FOR EDUCATIONAL USE ONLY How to Write Pat. 2006). v. to permit oscillation of the container on the legs. • The process recited in claim 5. No Claim to Orig. Pfizer. . .1].P. [FN86] For example. 319 (Pat. wherein R is a methyl and X is chlorine.S. • A zinc electroplating solution as recited in claim 11.P.E. 35 U. Ex parte Hansen. US Gov. Bd. § 112. Dependent claims can cross statutory classes.4.1) Page 3 (c) a cam follower engaging the cam.P.4. Ltd. .1 END OF DOCUMENT © 2008 Thomson/West.01(n)." [FN83. App. [FN84].1 (Cite as: PLIREF-PATAPP s 6. Ranbaxy Labs. wherein the solution also contains between 1 and 5% by weight of sodium chloride. • The process of claim 5.Q. For example: • A method of separation as recited in claim 2. Application s 6.4. M. § 608.PLIREF-PATAPP § 6. wherein the separating step comprises: distilling the water solution . [FN85].

2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. 6. [FN93] For example.4. Works. A multiple dependent claim cannot refer to more than one set of claims in the alternative.PLIREF-PATAPP § 6. [FN89] A multiple dependent claim must refer to its parent claims in alternative language. further comprising: • A gadget according to claims 1-3. . [FN91] Examples of unacceptable claims read: • A gadget according to claims 3 and 4. [FN88] A multiple dependent claim cannot serve as a basis for any other multiple dependent claim. US Gov. *6-66 All of the parent claims of a multiple dependent claim must precede the claim. . 12. The improper claim 5 can be replaced by proper claims 6 and 7. . . . No Claim to Orig.4. . © 2008 Thomson/West. • A gadget as in either claim 1 or claim 2. October 2006 Chapter 6: Preparing the Claims § 6. in which . • A gadget as in claims 1 or 2 and 7 or 8. claim 5 is improper in the sequence of claims presented in Exhibit 6-4. A multiple dependent claim cannot be the parent of another multiple dependent claim." is unacceptable because it refers to both the gadget and the process claims in the alternative. . or 15. in which . Application s 6. further comprising: • A gadget as in claim 2 or 3. • A gadget as in the preceding claims. [FN87] A multiple dependent claim is merely a shorthand technique for writing a series of dependent claims. a multiple dependent claim cannot refer to claims that follow it." is unacceptable. [FN92] However. . a claim that reads "A gadget as in any of the following claims.4. Thus. 7. a claim that reads "A gadget as in claim 1 or 4 made by the process of claim 5" is acceptable as there is only one multiple dependency in the claim: either the combination of claims 1 and 5 or the combination of claims 4 and 5. • A gadget as in claims 1-3 or 7-9. further comprising: • A widget as in any of the preceding claims. For example. further comprising: A multiple dependent claim that does not refer to its parent claims in the alternative will be rejected. . in which . Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. in which .4. . . acceptable multiple dependent claim language includes: [FN90] • A widget according to claim 3 or 4. . For example.4 Types of Claims *6-65 § 6. . . in which . namely claim 4. or 8. in which .2 Multiple Dependent Claims Multiple dependent claims incorporate by reference one of several alternative claims. Multiple dependent claims incorporate all the limitations of the particular claim in relation to which it is being considered. because it is a multiple dependent claim that depends upon another multiple dependent claim. .2 (Cite as: PLIREF-PATAPP s 6. The language "a gadget as in claim 1 or 4 made by the process of claim 5. 7.2 FOR EDUCATIONAL USE ONLY How to Write Pat. in which . further comprising: • A gadget as in claim 1.

[FN88]. A multiple dependent claim can depend from claims having different preambles. PLIREF-PATAPP s 6.P. § 1. the subject matter of claim 3 linked to claim 1 can be rejected. Works. [FN90]. US Gov. even if the subject matter of claim 3 linked to claim 2 is allowed. .PLIREF-PATAPP § 6. . § 112. Id.01(n).2 FOR EDUCATIONAL USE ONLY How to Write Pat. 35 U. such as one parent claim referring to "a system" and another parent claim referring to "an apparatus. Id." [FN87].S. [FN91].C.2) Page 2 Each alternative expressed in a multiple dependent claim is in theory treated as a separate claim by the examiner.P.2 END OF DOCUMENT © 2008 Thomson/West. the preamble can state: "The invention of claim A or claim B.4.E. . No Claim to Orig. Thus.4. [FN92]. each alternative link of dependency is supposed to be independently examined for its patentability and subject to rejection.R.F. § 608.4. Application s 6.75(c). [FN89]. Id.2 (Cite as: PLIREF-PATAPP s 6. if claim 3 is dependent upon both claim 1 and claim 2. Id. ." In such a situation. M.4. 37 C. Consequently. [FN93].

4 Types of Claims *6-67 § 6. of. and their cooperation with the old elements. in which the invention comprises the addition of the detector. .3 Jepson Claims Jepson-type claims. . [FN95] Generally. . Application s 6. "In an [existing combination] having [old elements A.4. or compositions of matter. the improvement comprising . • An improved A of the type having a B and a C. In these situations. such as "wherein the improvement comprises" or "the combination of the old article. The Jepson-type claim can be used to claim improvements for processes and composition-of-matter claims.4. for example. the improvement which comprises: . [FN94] A Jepson-type claim should contain in order: (1) a preamble that broadly describes all the conventional or known elements of the combination claimed." "including.4. "an improved A comprising B and C.3 (Cite as: PLIREF-PATAPP s 6. . an alternate form of the Jepson claim can be used.PLIREF-PATAPP § 6. . • A machine having [old elements named]. • In a machine of the type having . However." It is not necessary to use the magic word "combination" or the transition "improvement comprising" in the preamble. wherein the improvement comprises D. [FN97] The onset of the body of the claim is denoted by transition words such as "having. . and accumulator to a strand-collecting apparatus defined by the claim of Exhibit 6-1(b)." to avoid the confusion that would otherwise result. US Gov. C]." and (3) a description of the novel and nonobvious elements that constitute the new and improved portion of the claimed combination. the language of a Jepson claim reads.3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. October 2006 Chapter 6: Preparing the Claims § 6. [FN96] These elements are considered part of the combination that is being claimed. B..4. etc. cutter. the improvement which comprises: . . No Claim to Orig.3 FOR EDUCATIONAL USE ONLY How to Write Pat. wherein the improvement comprises . . . except that the preamble of the Jepson claim contains some of the elements that are normally recited in the parent of the dependent claim. . . the preamble must recite the name of the invention and identify the elements of the apparatus or process that are improved by the invention. which are disfavored for reasons discussed below. © 2008 Thomson/West. . The body of the Jepson-type claim is very similar to that of a dependent claim. (2) a transition phrase. . such as: • In combination with an [A] of the type wherein [conventional elements B and C are provided for doing something]. characterized in that . Works. are used to claim inventions that consist of improvements over existing articles." *6-68 A Jepson claim can be difficult to follow if it is long and contains several of's within the claim." and the like rather than the word "comprises.. processes. is presented in Exhibit 6-5. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. A complete Jepson-type claim to an improved strand-collecting device.

F.. It is risky to contend that all patentable features of an invention reside after the "improvement comprising" clause without knowledge of all the prior art. the nonobviousness of many inventions resides in the use of a combination of the elements.PLIREF-PATAPP § 6.Q. 256 (7th Cir. Cir.4. A Jepson claim that *6-69 recites elements D + E as an improvement over the combination of A + B + C is not completely accurate. v. D. 37 C. [FN95]. [FN96]. consider an invention comprising elements A. 1997). Works. 1976). The problem becomes even more complex because all the prior art is generally not available at the time of claim drafting. v. Inc.3d 1022 (Fed.R.4. [FN97. PLIREF-PATAPP s 6.3 END OF DOCUMENT © 2008 Thomson/West.S. US Gov. For example. Neither is a Jepson claim reciting elements A + B as being an improvement over the combination of elements C + D + E.3 FOR EDUCATIONAL USE ONLY How to Write Pat. [FN97]. Although the Patent Office likes Jepson-type claims because they help the examiner focus on the allegedly novel features of an invention. skilled practitioners usually avoid use of Jepson claims. Application s 6. Inc. 112 F. and E for which a first prior art reference teaches elements A + B + C and a second prior art reference teaches elements C + D + E.P.3) Page 2 as shown by Exhibits 6-6 and 6-7. and thus narrows the scope of the claim.4.. See Wells Mfg. Id.1]. Furthermore. the preamble is a limitation. B. 2002).4. Dror. In addition. Corp. in a Jepson claim. § 1. § 608.01(m). C. No Claim to Orig.1] Accordingly. 547 F. Epcon Gas Sys. Cir. 279 F.P. 192 U. [FN97. Rowe v.. it is recommended that Jepson claims be generally avoided.3d 473 (Fed. Inc.3 (Cite as: PLIREF-PATAPP s 6. . rather than the use of any specific element of the combination.75(e).E. [FN94]. Littlefuse. Bauer Compressors. respectively. M. One reason for that is that the preamble can be construed as an admission that all the elements in the preamble are in the prior art.P.2d 346.

substantial features essential to that utility. and such inclusion is not repugnant to principles of scientific classification." is generally rejected because such language does not claim the invention with sufficient particularity.4.4." [FN99] Shorthand Markush groups can be used.4. and a *6-71 stool" is a proper grouping.4." § 6. US Gov.4.2 Relationship Between the Alternatives The members of the artificial group of elements that is claimed must bear some physical or chemical relationship to one another. [FN100] as in "wherein the conductive material of the strip is copper. Members of the Markush group are separated by commas with the final member preceded by a conjunction. [FN103] For example. earth. a bench. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.4. B. equivalent generic expressions may not be available. no simple generic expression distinguishes these two specified elements from the other five halogens. fire. . Application s 6. Often. and C. if it is desirable to claim either chlorine or bromine. October 2006 Chapter 6: Preparing the Claims § 6. [FN102] and (2) have common functional utility related to structural features. [FN105] However." to limit the claim to encompass only those alternatives recited in the claim.4. the members of the group are so unrelated that a prior art reference anticipating the claim with respect to one of the members would not render the other members obvious. The Markush doctrine developed as an exception to the traditional ban on alternative language. No Claim to Orig. a generic phrase. disparate items such as air. However.4 FOR EDUCATIONAL USE ONLY How to Write Pat. [FN104] A Markush group is proper if the members of the group have a common functional utility related to common. because the members of the group share a common utility and share structural features that are essential to their utility. that is. According to this doctrine a Markushtype claim recites alternatives in the form of an artificial generic expression in the form "material selected from the group consisting of A." [FN98] *6-70 A Markush group must use a closed transition. such as "glass or plastic.4 (Cite as: PLIREF-PATAPP s 6. instead of "wherein R is a material selected from the group consisting of A.4 Markush Groups § 6. or aluminum." the shorter phrase "wherein R is A. such as "and" or "or. A Markush group is improper if it identifies independent and distinct inventions.4) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. such as "impervious transparent material.PLIREF-PATAPP § 6.1 Form of Markush Claims Alternative language. A Markush grouping of materials or compounds is proper when the materials grouped (1) have a common chemical and physical characteristic that justifies their inclusion in a common group. such as "consisting of. Works. or C" is considered proper. B. B. silver." that encompasses the desired alternatives can be used to claim the alternatives.4. "a resting surface selected from the group consisting of a chair. For example.4 Types of Claims *6-69 § 6. and C. and water are not sufficiently related members for a © 2008 Thomson/West. [FN101] The degree of relationship required for the members of the Markush group depends upon the class of patentable subject matter of the group members. For example.

4. if claim 1 recites a broad class of conductive materials. For example. which comprises: exposing the surface of the article to a saturated solution of sodium dichromate in an acid selected from the group consisting of concentrated sulfuric. Markush expressions can also be used to define groups of related mechanical elements.4 FOR EDUCATIONAL USE ONLY How to Write Pat. the propriety of the grouping is determined by considering the relationship of the whole compounds.4. *6-72 § 6. [FN112] In these sequences. [FN110] regardless of their size or complexity.PLIREF-PATAPP § 6. [FN106] Markush groups that recite alternative process steps or combinations of elements can meet a lower standard of association. A process for treating the surface of a polyethylene article to increase its receptivity to a printing ink. claim 2 could read on a Markush group consisting of five conductive materials. provide a broader definition of alternatives. When a Markush expression is used to claim alternative portions of a chemical structure.4. © 2008 Thomson/West. . "weakening the bond by a process selected from the group consisting of heating.3 Uses of Markush Claims Markush groups are used to define alternative chemical ingredients that can be used in a compound or composition.4) Page 2 Markush group. claim 3. Works. rivets. [FN111] For example. *6-73 Markush groups can also be used to claim sequences of alternatives that diminish in scope. and aluminum at each end of the core electrically contacting the carbon coating. or alternative choices for an article. A resistor which comprises: (a) a ceramic core. The individual portions of the chemical compound do not have to be related. No Claim to Orig. A Markush group can also be used to define alternative ingredients used in a process: 1. Similarly. (b) a coating of carbon on the core.4 (Cite as: PLIREF-PATAPP s 6. and (c) a strip of a conductive metal selected from the group consisting of copper." the neutral salt and cane sugar elements are not sufficiently related.4. Means clauses may also be used for combinations of elements. freezing. [FN107] The members of such a group must possess at least one common property that is primarily responsible for their function. and pulling the pieces apart" is proper. in a claim for a process of treating cellulose acetate with an agent that is "selected from a group consisting of neutral salts and cane sugar in the presence of water. Application s 6.4. [FN109] An exemplary claim containing two Markush groups is presented in Exhibit 6-8. alternative steps in a process. an even narrower class of three preferred materials. For example. and so forth. claims to subordinate groups that name the alternatives with more specificity depend upon claims that recite broader groups. An advantage of using such a sequence of claims is that the narrower Markush claim may survive scrutiny in the event that a broad claim is anticipated. such as fastener. and screws. silver. and phosphoric acids. Markush groups are rarely used for mechanical elements because generic words that describe the elements of a group. "a fastener selected from a group consisting of nails. US Gov. a Markush group can be used to describe alternative materials that can be used in a product: 1. without commonality of any physical or chemical characteristics. nitric. and the nature of the elements or the prior art must clearly indicate that all the members of the group possess this property." However. [FN108] For example. as long as the claims are not unduly multiplied. because all they have in common is their ability to achieve the same result.

S.P." (ii) "at least one of "A. B. . See M. [FN100]. B. cancellation of that member from the Markush group can salvage the claim. Ex parte Markush. B. if the preferred version of the invention of the claim of Exhibit 6-8 has R being an ethyl group and X being fluorine. independent claim. . The claim is salvageable under 35 U. US Gov. after cancellation of that member. B. C and D. B. Id.1] Accordingly. B. or else the claim will be interpreted as allowing only one member to be used at a time.4 Recommendations re Markush Claims Markush groups should be used with extreme caution.4) Page 3 § 6.PLIREF-PATAPP § 6. . . Comm'r Pat. C or D. [FN114] When a Markush group is used. then all of the species lack novelty. Pat.C and D" since the Federal Circuit has interpreted such language to minimally require at least one element from each of *6-75 the categories A. The Equivalence must be disclosed in the prior art or be obvious within the terms of section 103. No Claim to Orig." or (iii) "at least one of the group including A. 340 Off. For example. . . it is recommended that claims reciting preferred versions of the invention be included in the application. By having a separate claim directed to the preferred version.E. and C. Gaz. the validity of that version may be salvaged in litigation. . and not one or more elements from one or more categories. the claim must explicitly say that. Even better. If it is possible to have only one element of the group care must be used to avoid such language as "at least one of A." [FN98]. and C to achieve the "amount effective" and not two of the compounds.05(h).4. Application s 6. C.P. The claim. The compound of claim 1 wherein R is an ethyl. selected from the group consisting of A. [FN99]. If it is possible to use more than one member of the Markush group at the same time when practicing the invention. The compound of claim 1 or 2 wherein X is fluorine. . the preferred version should be deleted from the claim of Exhibit 6-8 and written as a separate. [FN114. the entire claim may be invalid. § 2173. 126. and D. is no longer anticipated. instead of using "and". The reason for that is if the claim containing the Markush group is anticipated because one of *6-74 the species defined by the Markush group is rendered obvious by the prior art. selected from the group consisting of A. the applicant could have (i) used "or.4. the language A Lewis acid inhibitor in an amount effective . Works. [FN114.4. . Use of a Markush group can be interpreted as an admission that if any of the related species lacks novelty over prior art.4. 1924).4.4 FOR EDUCATIONAL USE ONLY How to Write Pat. is interpreted as allowing only one of A.C.2] To avoid this problem.4 (Cite as: PLIREF-PATAPP s 6. § 103 if the remaining species are not taught to be equivalent in the prior art: Actual equivalence is not enough to justify refusal of a patent on one member of a group when another member is in the prior art. the following language or an equivalent must be used: A Lewis acid inhibitor in an amount effective . if it is possible to have combinations of the members of the Markush group in the invention. and combinations thereof . 1925 Dec. C. B. [FN113] If a claim is anticipated because one member of a Markush group is found in the prior art. 3. © 2008 Thomson/West. Office 839 (Comm'r Pat. . Thus. the following claims should be included in the application: 2.

02. § 803. Works. v. [FN114.4 FOR EDUCATIONAL USE ONLY How to Write Pat. § 803.P.C.Q.Q.E. 664 (C. Off. Ex parte Burke.Q. M. . Ex parte Price. PLIREF-PATAPP s 6.C.P.S.Q.P. Cir. 1975).S. [FN114]. § 2173. Inc.P. 1965).P. In re Schechter.2d 716. 1981). 467 (Pat.2]. [FN106]. 5. In re Gaubert. US Gov. See Ex parte Head. 1980).P.3d 870 (Fed.P. Ex parte Palmer. 11 (Comm'r Pat.S.S.P.E. 187 U. Bd. Id.4.A.P. 7 U. Abbott Labs.C. [FN107]. 599. 206 U.05(h).2d 1191 (Fed. 1934 Dec.P. [FN109]. M.02. App. In re Ruff.P. 524 F. Gaz.S. 1958). 300 (C.Q. § 2173.02. 1930).P. [FN113]. 98 U. Baxter Pharm.4 END OF DOCUMENT © 2008 Thomson/West.S. In re Harnisch.C. [FN102]. 300 (C. Inc. App.S.. Office 509 (Comm'r Pat. M. [FN108]. Off. 340 (C.S. 631 F. Bd.4.2d 716.1].4 (Cite as: PLIREF-PATAPP s 6.05(h).P. 551 (Pat. Cir.P.E.3d 1274. In re Harnisch.P. [FN112].P.4) Page 4 [FN101]. [FN103].P. 358 F.4.P. 334 F. [FN105]. 2003).P.Q. 631 F. 214 U.2d 590. 441 Off. § 803.2d 185.A.. M. M. Comm'r Pat.Q.C. [FN104]. In re Harnisch.A. 150 U.E. v.C.A.A.S.A. 1953). Superguide Corp.P. [FN111]. [FN114. 631 F..P.4.P. No Claim to Orig. 1980). 118 U. 144 (C.2d 1222. DirectTV Enters. Pat.PLIREF-PATAPP § 6..Q. Application s 6. 1934). 1980). 206 U.Q.2d 716 (C. 256 F. 205 F.P. [FN110].P.P. Prods. 67 U. 2004).E.

they are considered limitations on the structure of the invention." [FN119] The exact scope of product-by-process claims is uncertain.PLIREF-PATAPP § 6. that is." "welded. [FN117] A product-by-process claim that claims a product that is substantially identical to or insignificantly different from prior art products will be rejected as lacking novelty or for being obvious." "interbonded by interfusion. even though the prior product was made by a different process. Works." [FN121] Therefore a product-by-process claim has the worst of all worlds.". in a 1992 decision." and "condensation product" can be used as adjectives to describe the physical characteristics of a product without changing the character of the claim into a product-by-process claim. US Gov. . The Patent Office examines the claims as if the process were not a defining limitation of the product. Application s 6. the Federal Circuit held that "the correct reading of product-by-process claims is that they are not limited to product prepared by the process set forth in the claims.4.4. [FN116] *6-76 • A composite. a different three-judge panel of the Federal Circuit ruled that "process terms in product-by-process *6-77 claims serve as limitations in determining infringement. a product-by-process claim for an electrical resistor formed by decomposing a hydrocarbon gas to deposit a carbon coating on a ceramic core is presented in Exhibit 6-9. No Claim to Orig. in which the product is not patentably distinguishable from the prior art cannot impart patentability to the old product. . October 2006 Chapter 6: Preparing the Claims § 6. "A [product or composition of matter] prepared by a process comprising the steps of . However. Although those words appear to be process limitations. "the addition of a process step in a product claim. . Such terms as "etched.4 Types of Claims *6-75 § 6. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. In a 1991 decision. As an example. a product-by-process claim is anticipated by a prior disclosure of the same product. © 2008 Thomson/West. thermal insulation panel characterized by dimensional stability and structural strength consisting essentially of expanded perlite particles which are interbonded to one another by interfusion between the surfaces of the perlite particles while in a pyroplastic state to form a porous perlite panel. A product-by-process claim is of the general form. [FN120.5 Product-by-Process Claims A product-by-process claim indirectly claims a product by reciting the process of fabricating the product. not words descriptive of a process. .4. the following claims were held not to be product-by-process claims: • An acid phosphate of a condensation product of formaldehyde with a salt of a compound selected from a group consisting of . the Federal Circuit has issued conflicting decisions as to the scope of such a claim in infringement litigation. Thus." [FN120] Similarly. .5) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. It can be anticipated by a product made by a different process.4.1] However.5 (Cite as: PLIREF-PATAPP s 6. but is infringed only by a product made by the process specified in the claim. a prior art product can anticipate the product or render the product obvious even if the process is novel and nonobvious. [FN115] For example. porous. [FN118] The tests of novelty and nonobviousness are applied to the product itself and not to the process. A product-by-process claim should preferably use the gerund form of a word (the form of the word having characteristics of both a verb and a noun) to describe the process of forming the product.5 FOR EDUCATIONAL USE ONLY How to Write Pat.

2d 276. [FN121].4. Cir.S. 1992). Faytex Corp. 542 (C. Inc.5 FOR EDUCATIONAL USE ONLY How to Write Pat. See In re Moeller.2d 1289. Apotex Corp. v. 453 F.Q. Supp.P. M.C. [FN122] Thus. No Claim to Orig. under the traditional view. 1967). PLIREF-PATAPP s 6.. or (2) if the precise nature of the mechanical or electrical differences between the nature of the carbon coating and prior art coatings were either unknown or could not be described.A.S. 1969).S. 162 U.P. Thus.S.A. 7 (D. In re Bilkington.5) Page 2 Traditionally. 1992)..P. 162 U. Product-by-process claims may also be drafted in the form of a dependent claim as in: 5. Scripps Clinic & Research Found. [FN123]. [FN116]. Inc. Thermoplastics Co. M.C.S. 1969).Q. Inc.Q. 18 U.Q.P.2d 565.S. 117 F.Q.S.2d 1345.4.1]. 162 U.2d 1013. the product-by-process claim of Exhibit 6-9 is used only if either (1) the prior art recited other methods of fabricating carbon-coated resistors such as by lacquering..P. 186 U. reh'g en banc denied.P.C. In re Steppan. 975 F.S. § 2113. v. 825 F.P. 48 U. Ex parte Hartmann.2d 1001 (Fed. In re Garnero. [FN119].S. 411 F. A district court has suggested that Atlantic states the controlling law. [FN122]. [FN123] Product-by-process claims are now allowed in the same patent application that contains claims defining the subject matter in terms of structure or properties.3d 1346 (Fed.Q.Q.A.P. *6-78 Product-by-process claims of varying scope can be included in a single patent application. and the resistor claimed is distinguishable only because the carbon deposition process was novel and nonobvious. v.P. The Patent Office Board of Appeals changed this rule in Ex parte Hartmann. Cir.2d 1138 (Fed. § 2173.P. 366 (1975).P. [FN124]. 1941). 2006). 970 F.P. US Gov. [FN118].P.5 (Cite as: PLIREF-PATAPP s 6.A. SmithKline Beecham Corp. 176 U. v. 23 U.E. In re Garnero. 394 F.2d 834.05(p) (citing Ex parte Pantzer & Feier. 1993).P. 927 F. Bd. 412 F. 143 (C. Mass.4. 1972)).P. [FN120]. [FN124] [FN115].. A polyethylene article having a surface treated in accordance with the process of claim 4. 412 F. Off.Q. Application s 6. 1969). Cir. Works.P. Genentech. 1991). 221 (C.5 END OF DOCUMENT © 2008 Thomson/West.Q. 145 (C.S.4. product-by-process claims were allowed only if the patentable features of the product were incapable of being described in terms of the product's structure or properties and could be described only via a description of its process of manufacture. [FN117]. .P. 156 U. Lumigen. 221 (C. 23 U.P. it is advisable to include both types of claims where appropriate.PLIREF-PATAPP § 6.Q. [FN120.E.2d 1565. Cir.C.2d 276.2d 1481 (Fed.P. App. Atl. 141 (Pat. Tropix.A.C.

Ex parte MacAdams.6 END OF DOCUMENT © 2008 Thomson/West.S. and phosphorous oxide 20%) is known in the prior art for making window glass. 763 F. No Claim to Orig.2d 353.Q.A. Cir.4. [FN127] A new process may still be obvious even when considered "as a whole. October 2006 Chapter 6: Preparing the Claims § 6. a claim directed to the method of using the same glass as a glass-to-metal sealant is not anticipated.C.4 Types of Claims *6-78 § 6.S. [FN128].6 (Cite as: PLIREF-PATAPP s 6. 399 F. 359 (Fed. Cir. 1964).2d 1406. manufacture. Application s 6. [FN126] a method of molding a novel plastic composition by *6-79 a known process was held patentable. There are conflicting decisions as to whether an otherwise obvious process is patentable because either or both (1) a specific starting material or (2) the product obtained from the process is novel and nonobvious. Although a claim to the glass composition by itself would be anticipated by the prior art composition." notwithstanding that specific starting materials or resulting products. PLIREF-PATAPP s 6.P.6 FOR EDUCATIONAL USE ONLY How to Write Pat. or material is patentable subject matter. 1978). App.Q. the new use of the glass composition in a glass-to-metal sealing process is patentable. 763 F. 445 (Pat. 359 (Fed.P. .Q. Off.S. In re Neugebauer.P.6 New-Use Claims Under 35 U. 330 F. 206 U. 226 U.4. For example.Q. [FN127]. would result in a patentable process. US Gov. [FN125]. are not found in the prior art.P.Q. 225 (C. or both. even simple steps such as dissolving or heating. A suitable claim would be: • A method for joining metal and glass components. 1985).S. comprising the steps of: (a) joining the metal and glass pieces together. Bd. 141 U. [FN128] Otherwise.4.P.6) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. [FN126]. In re Durden. In re Durden.S.C. silica 20%. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. a new use of a known process.2d 249. (b) heating the metal and glass components to an elevated temperature.PLIREF-PATAPP § 6. although a glass with a composition (sodium oxide 60%. 226 U. machine.C. Works. and (c) contacting the metal and glass pieces with a glass-to-metal sealant composition comprising: 40 to 70% by weight sodium. § 101. the use of a nonobvious starting material does not render every process unobvious. 1985).P. In re Kanter.S. and 15 to 25% by weight phosphorous. However. 331 (C. [FN125] In Ex parte MacAdams. composition of matter.A. 158 U. 1968).P.2d 1406. 10 to 30% by weight silica.4.4. when performed on a new compound.

5 Strategy of Claim Drafting The fundamental rules for drafting claims were presented in the sections above.PLIREF-PATAPP § 6. No Claim to Orig. Application s 6.5) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. However.5 END OF DOCUMENT © 2008 Thomson/West. In other words. This section of this chapter discusses the strategy of claim drafting. It is important to prepare claims that will survive litigation with their validity intact. October 2006 Chapter 6: Preparing the Claims *6-79 § 6.5 (Cite as: PLIREF-PATAPP s 6. Mastery of these fundamental rules will allow preparation of claims that pass muster with the Patent Office. PLIREF-PATAPP s 6. It is also important to prepare claims so infringement cannot be avoided without giving up the benefits of the claimed invention.5 How to Write Pat. US Gov. this section discusses how to effectively and efficiently prepare claims that will survive litigation. Works. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. . there is much more to claim drafting than merely preparing technically acceptable claims.

Inc. and step of and step for claims. A second technique of ensuring broad coverage is to include claims of varying scope within a single application. product and process claims. meansplus-function and function-only claims. Maxwell v.5. . First. and the other of which is limited to ranges which the inventor is not sure will actually function. 39 U.Q. (2) the process for producing the article. Sollac.. and (3) the process for using the article. [FN129] Two techniques are available to ensure that the claims encompass a sufficiently large scope of protection. 35 U. Narrow claims are used to describe the structure of specific embodiments of the invention.5 Strategy of Claim Drafting *6-79 § 6. independent and dependent claims. a full set of claims of varying scope should be included in the original application.5. Cir. Cir.1] If it is questionable whether anything within a broad claim would actually work in the invention.1 Obtaining Broad Coverage The claims should be drafted to encompass all possible embodiments of the inventive concept that are described in the specification. Broad claims must be included to ensure that the application claims the broadest definition of the invention that is permitted in light of the known prior art.P. without reading on prior art. [FN130. [FN130]. J. 344 F.3d 1234. To maximize the likelihood of that occurring.2d 1001 (Fed. Works. 2003). In such circumstances.5. AK Steel Corp. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.PLIREF-PATAPP § 6. Baker. *6-81 The claims should not be written so broadly as to include nonenabled subject matter.C. the claims that should be considered are claims directed to (1) the article. October 2006 Chapter 6: Preparing the Claims § 6. © 2008 Thomson/West. No Claim to Orig. for a simple article invention. An important reason for including claims of varying scope in the application as filed is the availability of royalties for infringement occurring in the time between publication of an application and issuance of a patent on the application.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.1 (Cite as: PLIREF-PATAPP s 6. 86 F.5.2d 1280 (Fed.P. § 154(d). [FN130] The royalties are available only if the invention as claimed in the issued patent is substantially identical to the invention as claimed in the published application. For example. v. the claims should be directed to as many categories of patentable invention as the subject matter of the invention permits. it is advisable to break up the claim into two claims.3d 1098. [FN129].1 FOR EDUCATIONAL USE ONLY How to Write Pat. The narrow claims are less likely to be invalid than the broad claims.S. Any embodiment of an invention disclosed in the specification but not *6-80 claimed is dedicated to the public and cannot be recovered by use of the doctrine of equivalents. the claims can be invalid for lack of enablement. Such a full set can include broad and narrow claims.Q. 68 U. [FN130. 1996). US Gov.S. one of which is limited to operable and enabled subject matter.S.1]. Application s 6.

. Application s 6. US Gov.1) Page 2 PLIREF-PATAPP s 6. Works.PLIREF-PATAPP § 6.5.5.5.5.1 (Cite as: PLIREF-PATAPP s 6.1 FOR EDUCATIONAL USE ONLY How to Write Pat.1 END OF DOCUMENT © 2008 Thomson/West. No Claim to Orig.

2 (Cite as: PLIREF-PATAPP s 6. The next step is working the picture claim into a broad claim by eliminating unnecessary limitations and elements.2 FOR EDUCATIONAL USE ONLY How to Write Pat. END OF DOCUMENT © 2008 Thomson/West. Descriptions of subelements and their cooperation with the element itself. 2. October 2006 Chapter 6: Preparing the Claims § 6. The materials used to construct the particular element and their chemical or physical structure. The third step is to rewrite the broad claim into claims of intermediate scope by adding elements or by describing elements in greater detail. Works.5 Strategy of Claim Drafting *6-81 § 6. US Gov. . The recommended first step for drafting claims is to write a "picture claim" that describes in detail all the features of a drawing or model of a specific embodiment of the invention.PLIREF-PATAPP § 6.5. Application s 6. shape. This focuses subsequent discussions with the examiner on the allowable scope of the claims and not the patentability of the invention.2 Drafting the Picture Claim A three-step approach can be used to obtain claims of broad.5. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. intermediate. Note that this picture claim literally describes every element shown in Exhibit 6-10. It may be advantageous to include the picture claim in the claim section either in its actual form or as a series of dependent claims. These narrow claims are relatively easy to draft. such as the optimum duration or temperature of the step. a picture claim describing the shaking apparatus of Exhibit 6-10 is presented in Exhibit 6-11(a). the examiner is more likely to accept the narrow claims in the first Office action. A detailed description of the physical characteristics of the element. The description of each element may include: 1. Being very narrow.5. and *6-82 4. As an example. The picture claim is simply a written description of all the features of a specific embodiment of the invention. No Claim to Orig. and narrow scope.5. Also. 3.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. these claims are more difficult to invalidate based on prior art. No effort is made to use special language or generic names to expand the breadth of the claim. and geometry. Details of the preferred conditions in a process step. including its size.

although the claimed device could not be used by itself for measuring position. The broadest claim can be. For example.3 Writing the Broadest Claim or Claims The broadest claim is the most difficult to prepare. there may © 2008 Thomson/West. Many patent applications do not have a single broad claim. the subelement can be claimed independently of the remainder of the device or process. and do not provide an opening for a competitor to avoid infringement. As long as the broad claim is not anticipated by art known to the inventor. directed to a subelement of an invention.3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. These claims crystallize the basic "inventive concept" by defining all the novel and nonobvious elements. The inventor should be asked to design around the patent. As long as a subelement satisfies the requirements of 35 U.C. For example.3 (Cite as: PLIREF-PATAPP s 6.C. there could be a broad claim claiming elements A + B + C and another broad claim claiming elements A + B + D. If the invention *6-83 has commercial value. At worst.S. the examiner will not allow the broadest claims. it is recommended that the practitioner be greedy when initially writing the application. competitors will spend great effort to design around the claims of the patent. the Federal Circuit found the claim proper because the claimed subelement (the mount) in fact served the purpose of mounting a stylus. Armed with a dictionary and a thesaurus. Application s 6. October 2006 Chapter 6: Preparing the Claims § 6.C. Thus it is important that the practitioner spend time with the inventor to prepare such a claim. 102. and particularly those for complex machines and devices. the minimum number of elements that form a functional combination capable of achieving a purpose of the invention.3 FOR EDUCATIONAL USE ONLY How to Write Pat. as well as elements C and D. and 103. It is most important for the patent to contain at least one claim that is impossible to design around. Thus. Instead.PLIREF-PATAPP § 6.5. It should encompass all possible embodiments of the invention without reading on the prior art. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. §§ 101.S.5. Often there are broad independent claims of overlapping scope. Works. Reversing the district court's holding of invalidity for lack of utility under 35 U.5. Broad claims are drafted by claiming only the essential elements. if the prior art teaches a suitcase with elements A and B and the client has invented a suitcase that has elements A and B. the practitioner and inventor should make certain that the words of the broad claims are accurate and precise. [FN131] *6-84 For many inventions. therefore. § 112. and whenever possible should be. the Federal Circuit considered a claim that was directed to a subelement of a measurement probe that included (1) a mount for a stylus and (2) electronic circuitry for determining the position in space of the probe. . § 101 (discussed in chapter 7) and indefiniteness under 35 U. No Claim to Orig. The broadest claim should be as broad as possible in view of the prior art. that is.S. the broadest claim should not necessarily be one claiming the elements A + B + C + D.5. The claim at issue called out only elements of the mount and did not specify the electronic circuitry. it cannot hurt to ask for the broad claim. US Gov.5 Strategy of Claim Drafting *6-82 § 6.

3. unnecessary limitations and unnecessary elements that are recited in the preamble. to draft a broader claim.3 (Cite as: PLIREF-PATAPP s 6.1 Defining the Novel and Nonobvious Element or Elements The broad claim should be drafted to emphasize the novel elements of the invention. Thus. a broad claim should include the language: 1. It is recommended that "composed of' and "having" not be used where definite language is needed in the claims.2 Avoid Unnecessary Limitations and Elements To draft the broadest possible claim.5. the language recited in the preamble does not affect the scope of the claim if the preamble "merely states a purpose or intended use and the remainder of the claim completely defines the invention. the preamble may limit the scope of the claim if "the claim cannot be read independently of the preamble and the preamble must be read to give meaning to the claim or is essential to point out the invention. closed transition terminology should be used only when the practitioner is aware of prior art that requires a narrow claim. For example. The following section illustrates this derivation process. but rather a multitude of claims directed to various patentable subelements or subsystems of the invention." should be used for virtually all claims. § 112.5.2. US Gov. [FN133.1 In the Preamble In general.5. an open transition word. § 6. substitute the words "which comprises" for "consisting of" in the transition of the picture claim. Generally. No Claim to Orig.3 FOR EDUCATIONAL USE ONLY How to Write Pat.3) Page 2 not be a single broad claim.PLIREF-PATAPP § 6. Thus. Language that may be construed as an additional structural limitation on the body of the claim should be removed from the preamble. comprising: (a) a container with apertures sized such that impurities are able to fall through while retaining the articles themselves . This preamble merely states a broad purpose of the invention without limiting its intended use. because of the need to interpret these transitional phrases *6-86 with a view to the specification." [FN132] However.". but small enough to allow impurities to fall through.5.S. Application s 6. transition. the preamble of the picture claim of Exhibit 6-11 should be modified to read. . . . the preamble of the Jepson-type claim clearly limits the claim by excluding the existing device or process from the improvement claimed. the only remaining issue is whether the remaining narrower dependent claims comply with the requirements of 35 U. if the salient feature that distinguishes the shaking apparatus of Exhibit 6-1 from prior art shaking apparatuses is the use of a container with its apertures sized large enough to retain articles.3. . Works.5. .1] This means that it will take a judge's decision to be sure what "composed of" means in a particular situation unless the specification defines the term or prosecution of the patent application clarifies the meaning. such as "comprises. © 2008 Thomson/West.2 In the Transition It is much easier to exclude limitations from the transitional phrases of a claim. § 6. *6-85 § 6.C. Narrow. and body of the claim must be deleted.3.5." [FN133] For example. A shaking apparatus.5. § 6.3. The claim should contain a barebones description of the novel and nonobvious elements. Once a broad claim is accepted by the examiner. "Apparatus for shaking articles .2. Exhibit 6-1 shows the final version of a broad claim that was drafted by eliminating all the unnecessary limitations and elements present in the picture claim of Exhibit 6-11.

2.3 (Cite as: PLIREF-PATAPP s 6. For example. The broad language of means clauses is construed to encompass corresponding structure. For example. Once the essential elements are identified. Thus. and determine if it is essential to define the "inventive concept" of the invention. and adhesives." "flexible. the "housing" should be deleted from the claim because it unduly limits the claim. it is important to be sure that the elements remaining in the claim are sufficiently interrelated. Works. for example." "round." and the claim thus reads on both spherical and cylindrical containers.5. . the number "four" should be omitted and replaced with the word "plurality.3. a tram that can operate on a track can be written as "a tram adapted for traveling along a track" so that the track itself is not a limitation in the claim. it is not necessary for the invention to have four legs. The invention works equally well having three or five legs. review the claim word by word to question the necessity of each word that limits the claim. It is also not necessary to define the motor as an "electric motor" because the motor could be gasoline or dieselpowered. A limitation directed only to the environment in which the invention operates can be eliminated from a claim. Similarly. A claim directed to. Means clauses are often used to define conventional elements of mechanical combinations.3 FOR EDUCATIONAL USE ONLY How to Write Pat.1 Using Means Clauses Means clauses offer a simple method for broadly defining an element by its function rather than defining it based on its physical characteristics. the inventor should be asked if the element must be so limited. For example. § 6. such as "rigid. the phrase "hollow and rectangular" unnecessarily limits the shape of the receptacle. it is necessary to carefully read over each element of the picture claim.3.5. US Gov. For each of these words.5." such as a "plurality of legs. Application s 6. such as screws." or "three. § 6.3) Page 3 It is better to use well-defined transitional language when claim clarity and definiteness are desired. if the claim contains an element which reads "a housing surrounding the drive shaft. [FN134] *6-88 A means clause can encompass a single element." "elongated.5. for example. nuts and bolts.5. or a train of fifty cooperating elements--whatever is needed to perform the recited function. "rigid" is deleted. For example.3.PLIREF-PATAPP § 6. the oscillating © 2008 Thomson/West.3.3 In the Body To remove unnecessary elements from the body of the claim. Also. The picture claim of Exhibit 6-11 contains several words and phrases that unnecessarily limit the claim. the description of the hollow and rectangular receptacle to hold articles can be more broadly described as a "container. if it does not. a cylindrical or spherical receptacle would be equivalent. material." are eliminated if possible. the word "rigid" is left in the claim. or process steps described in the specification and their equivalents. "Does the element have to *6-87 be rigid?" If it does. No Claim to Orig." and it is known that the machine works without the housing. Similarly." Unnecessary adjectives such as "metal" or "brass" should also be removed. a part of an element. For example. All unnecessary adjectives or numerical designations. "a support member" reads on both parallel legs and sets of springs that are used to support the container. Language that describes a species rather than a genus can also limit the scope of the claim. each word is carefully chosen to avoid unnecessary limitations. After all unnecessary elements have been removed. A means clause should be used to describe an element when the function of that element is more important than any particular embodiment or construction that is used to perform a function. "means for fastening the support to the base" can be used to describe conventional fastening means.3 Defining Elements by Their Function § 6.5.

3. Similarly. it is recommended that functional language be used.1. even though the Federal Circuit has stated that the word "equivalent" in section 112 does © 2008 Thomson/West. paragraph 6 equivalent." However.5. both claims with functional language and claims with means clauses can be used. To maximize patent coverage. A much broader claim is obtained by using a means clause to define the oscillating mechanism. as discussed in the next section. the Federal Circuit noted that the word "equivalent" is not to be confused with the "doctrine of equivalents. the first indicia relied upon by the Patent Office creates problems.1). an insubstantial variant of an invention may be developed after the patent is granted. or acts described in the patent specification. In view of the limited scope of "means" clauses (see the discussion in section 6. The means clause equally applies to a pistoncylinder mechanism. [FN137] In its Guidelines. it could still be an equivalent under the doctrine of equivalents. the Patent Office attempted to instruct examiners as what the "equivalent" means under section 112. and to provide claims of varying scope. in that it uses the Doctrine of Equivalents standard. material. the prior art element performs the function specified in the claim in substantially the same manner as the function is performed by the corresponding element described in the specification. Reinke Manufacturing Co. The Federal Circuit hypothesizes that because of technological advances. and produces substantially the same results as the corresponding element disclosed in the specification.5. [FN135] According to the Valmont decision." This functional language allows the claim to encompass any of several different forms of oscillating mechanisms.3 FOR EDUCATIONAL USE ONLY How to Write Pat. No Claim to Orig. the prior art structure must perform the identical function recited in the claim." [FN136] In that decision. material or acts disclosed in the specification represents an insubstantial change which adds nothing of significance to the prior art element. One problem with using means clauses is that the exact scope of means clauses is uncertain because the term "equivalent" used in section 112 is indefinite. a means-plus-function limitation reads on an accused device only if the accused device (1) performs the identical function specified in the claims. as in "a means for oscillating the container on the legs to shake the articles. Application s 6.5. That is. A detailed definition of each element of the oscillating mechanism limits the scope of the claim. the Federal Circuit confused matters by defining the word "equivalent" as used in paragraph 6 of section 112 and "equivalent" in the doctrine of equivalents as both referring to an "insubstantial change. the Patent Office will apply the following indicia to determine whether one element is equivalent to another: *6-90 (1) Whether the prior art performs the function specified in the claim in substantially the same way.PLIREF-PATAPP § 6. The Patent Office Guidelines declare that for prior art to be equivalent to the structure disclosed in a patent application. (3) Whether the prior art element is a structural equivalent of the corresponding element disclosed in the specification being examined. if broad claim coverage is desired. After that test is met. (4) Whether the structure. Works. supra. The Federal Circuit *6-89 discussed the meaning of "equivalent" in Valmont Industries Inc. such as a piston and cylinder. and (2) "employs means identical to or the equivalent of the structures." This expression is much broader because it reads on both the spring mounting and the parallel legs.5.3) Page 4 means of the shaking apparatus of Exhibit 6-10 can be constructed from other arrangements.4. v. US Gov. ." The Federal Circuit claims there is an important difference between the doctrine of equivalents and paragraph 6 of section 112. If this variant is found not to be a section 112. It is not known whether courts will adopt these guidelines.3 (Cite as: PLIREF-PATAPP s 6. Of course. the legs can be more broadly expressed as "means for mounting the container on the base for oscillating movement with respect thereto. (2) Whether a person of ordinary skill in the art would have recognized the interchangeablity of the element shown in prior art for the corresponding element disclosed in the specification. rather than means clauses.

the Patent Office suggests that the following reasons (which are not intended to be inclusive) be presented: (1) Teachings in the specification that particular prior art is not equivalent. § 6. the only way to get the claim allowed will be to establish significant prosecution history estoppel with regard to the breadth of the means clause. In other words. the examiner will then give an anticipation and/or obviousness rejection. to be certain that "means for" language in the claims is interpreted under section 112. Works.C. paragraph 6.3." Mean-plus-function clauses create challenges when writing the specification with regard to the corresponding structure. then. each time a means-plus-function language is used. In other words.PLIREF-PATAPP § 6. The reversal rate by the Federal Circuit. US Gov. a presentation of a means clause in a patent application involves some risk.5.3 herein be used.2 Using Functional Language © 2008 Thomson/West. In order to prove to the Patent Office that the prior art structure is not equivalent to applicant's structure. that says: "The term 'means for . paragraph 2 of 35 U. The only exception to that procedure will be if there is an "explicit definition provided in the specification for an equivalent. or (3) Rule 132 affidavit evidence of facts tending to show nonequivalence. Clearly. if the Patent Office finds a prior art element that performs the function specified in means clause. it is recommended that the closing language described in section 7.C. Section 112.3 (Cite as: PLIREF-PATAPP s 6.S. is very high.3) Page 5 not mean the same thing as "equivalent" under the Doctrine of Equivalents. paragraph 6 by the courts.10.5. create prosecution history estoppel. . No Claim to Orig.5. Another problem with means clauses in spite of verbiage to the contrary in the Guidelines. Similarly. § 112. [FN139] Accordingly. [FN138] *6-92 Another problem with means clauses is that there is a lack of predictability as to whether or not the claim will be interpreted as a "means-plus-function" clause.5. which will prevent any broad interpretation of the means clause.5.3. Another potential problem with the use of means clause can be the failure to include in the specification structure for performing the function of the means clause." In the absence of that exception. add language to the specification. requires that such structures be disclosed. material or acts disclosed in the application.10. *6-91 if the examiner finds a prior art structure that performs the same function. which considers interpretation of a means-plus-function clause to be a matter of law. . unfortunately.S. These challenges are discussed in section 7. (2) Teachings in the prior art reference itself that may tend to show non-equivalence. to avoid claim language which does not use "means" from being interpreted under section 112. . If the examiner finds a structure in the prior art that performs the same function.3. the only way the Patent Office will issue a claim that has a "means" clause when the prior art has structure.' as used herein.5. is to be interpreted according to 35 U. including in the claims. ¶ 6. In particular. or acts that perform the same function. is by the applicant presenting arguments that. material. approaching 50% in 1997. the burden will shift to the applicant to show that the element shown in the prior art is not an equivalent of the structure. Application s 6.3. the examiner has made a prima facie case of nonpatentability and the burden shifts to the applicant to prove non-equivalence. the net effect of the Guidelines is applicants will receive the same rejections for anticipation/obviousness for "means clause" language that they have always received.3 FOR EDUCATIONAL USE ONLY How to Write Pat.

rather. . Thus the use of the term "detent mechanism" is not to be interpreted as a meansplus-function element.3) Page 6 Functional expressions provide an alternative technique of broadly defining an element. [FN143] the Court of Customs and Patent Appeals held the following language valid: "having sufficient flexibility and wet strength to permit . the claim turns out to read on the prior art. the phrase "an effective amount of [compound X] for [forming a desired function]" was held proper. . *6-94 The Federal Circuit has acknowledged that although the use of the term "means" is not necessarily to trigger paragraph 6 of section 112. the C. § 6." "cutters." [FN141] *6-93 Recent cases have upheld very broad functional language. For example. [FN140] A claim that recites functional language without any supporting structure may be rejected as purely "functional." Functional language can also be used to broadly claim quantities of materials. . while a different formulation generally does not. No Claim to Orig. [FN145] In In re Ludtke. namely. in a claim for a new use of a chemical compound that was known in the prior art.5 Verifying Claim Structure with a Diagram A diagrammatic sketch or "stick picture" of the broad claim can provide confirmation that all essential elements and necessary cooperation. would be less than . The net effect of broadening the picture claim of Exhibit 6-11 is the claim of Exhibit 6-1(a). [FN144] the court allowed an ingredient in a composition-of-matter claim to be broadly claimed as "volatile neutralizing agent.5." "clamp. it is important to review this claim to ensure that it does not read on the prior art. US Gov." "screwdriver.4 Comparing the Broadest Claim Against the Prior Art After the broadest claim has been written." and "having sufficient adhesive characteristics to firmly bond ." Similarly. in In re Echerd. . Missing or extraneous elements or lack of cooperation would be readily apparent.C.5. For example. suppose an inventor determines that a cellulosic member inserted into soil near a plant can be used to determine when the plant needs watering.P. the base." "graspers. The diagrammatic sketch shows the claim elements." "lock. . The sketch should precisely conform to the language recited in the claim.PLIREF-PATAPP § 6. ." and "suture applicators. For example.3. In general. when studious efforts are made to eliminate any unnecessary limitations from a claim.3 FOR EDUCATIONAL USE ONLY How to Write Pat. It is important to take this "mental step" to try to determine if the broadest claim inadvertently reads on the prior art. The claim should not be drafted so broadly that it would read on a filtered cigarette containing cellulose inserted in soil to extinguish the cigarette." "brake.5. but nothing more.A. Exhibit 6-12 is a schematic sketch of the broad claim of Exhibit 6-1(a). whereby said parachute will sequentially open and thus gradually decelerate. the Federal Circuit considers "detent mechanism" to define a mechanism utilizing functional terms. parallel legs. functional expressions (other than means clauses) should be used only to describe a function or result that necessarily follows from some previously defined structure. upheld a claim directed to a parachute canopy that contained extremely broad functional language: [FN146] said plurality of lines [B] providing a radial separation between each of said panels [A] upon deployment [of the parachute] creating a region of high porosity between each of the said panels such that the critical velocity . . and means for oscillating the container and their interconnection. Application s 6. have been included in *6-95 the claim.3 (Cite as: PLIREF-PATAPP s 6. showing only the elements and cooperation defined in the claim--it should not be based on the drawings of the invention.5. The court noted that many devices take the names of functions they perform. . . Not infrequently. including "filter. that term generally invokes paragraph 6 of section 112.5. © 2008 Thomson/West." [FN147] § 6. the container. [FN142] For example. Works. in In re Boller.3.

T. 321 (C.A. 385 U. 57 U. 1973).. [FN143]. cert.P.S. Inc. 1971).P.3 (Cite as: PLIREF-PATAPP s 6.3 FOR EDUCATIONAL USE ONLY How to Write Pat. Gaz. 246 F.C. Inc.3d 1291 (Fed. Farmer's Supply Serv. Valmont Indus. 164 U. denied. In re Halleck.P. 332 F.2d 1783 (Fed. Pat...P. [FN138]. Penney Co.2d 1881 (Fed..1]. 790 F. Yoncha Lynn.A.2d 911. Kundupoglu. [FN132].5.Q. 138 U.3d 1336.P.5. 945 F.2d 1173 (Fed. [FN140]. 1965). The Law of Means-Plus-Function Language (parts I and II). 57 U. Crystal Semiconductor Corp.3) Page 7 [FN131]. Cir. Cir. 217 (C. 1929). Al-Site Corp.C. AFG Indus. No Claim to Orig. Cir. 169 U.C. Cir. 91 F. Reinke Mfg. Inc. Co.Q. 655 F.Q.. Marston v. 353 F. 270 (I.3d 1580.2d 382.. 814 (Fed.S. [FN141].P. In re Ludtke. PLIREF-PATAPP s 6.Q.Q.Q. 1963).S.P. 46 U. 1996).P. Inc.Q. [FN133. Id. Works. Renishaw PLC.57).S..2d 1161 (Fed.S. 174 F. 226 (C. 1981). Cir. 176 U.S. Inc. 1583-84.3d 1303..2d 632.P.S.S.P. In re Boller.P. 210 U. 172.Q. 388 Off. US Gov. 1929 Dec.Q. VSI Int'l. 319 F. [FN135].PLIREF-PATAPP § 6..C. 145 F. 2000.2d 1953 (Fed.S.Q.A. Carl Zeiss Stiftung v. v. 412 F. [FN134]. App. [FN146].2d 212. v. 224 U..2d 882.P. In re Fuller. 141 U. v.P.P. 986. AIPLA Q.2d 1776 (Fed.C. v. Cir.Q.P.2d 1451 (Fed.A.P. Greenberg v. Computers. . 1998). 422 F. [FN144]. v.P. 563 (C. 42 U. [FN147]. 1971).J.2d 210.5.Q.P. 471 F. 25 U. 229 U.S. Home Depot.Q.C.2d 976.3 END OF DOCUMENT © 2008 Thomson/West. 169 U. 740 (C. § 112. Cardinal Indus.Q..S.S.A. [FN136].C. Cir. 1993). In re Swinehart. Cardinal IG Co. v. In re Echerd.P. In re Fuetterer. 1991). 1964). Cir. Office 279 (Pat. 39 U. 1970). [FN137]. U. In re Ludtke. [FN145].A. 148 U. Chiuminatta Concrete Concepts Inc.2d 259.S. 441 F. 983 F. [FN142]. Porter v. Inc. Cir.5. [FN133].P.C. 2001). 28:1 and 2.. In re Hallmann.Q. 647 (C. 439 F.C. Default Proof Credit Card Sys. Ethicon Endo-Surgery. Inc.Q. 974 (1966). Off.3d 1239.P.2d 660.A 1971).. Application s 6.A.. 609 (C. [FN139].C. 1984).S. J.2d 1752 (Fed. 239 F. 1986).P. 1999).S.Q. Comm'r Pat. Winter (at 39-79) and Spring (at 141. 35 U. 2005). Bd.S.A.S. In re Dossel.P. 169 U.P.. In re Certain Pers. 2001). Cir. 25 (4th Cir.P.P.S.2d 1039. 1997).3d 1308.Q.S.S. 563 (C. Inc.S.C. 50 U. Tritech Microelectronics Int'l.

An example of this is claim 1 of U. 4. This increases the chance of catching an infringer and can increase the number of potential infringers. These include: [FN147. a new chemical composition can often lend itself to claims directed to methods of using the composition and methods of making the composition. (5) Unauthorized importation of products made abroad using a process patented in the United States. there are some significant advantages associated with method claims as compared other types of claims. Patent No. Works. which states: A method of treating the blade of a razor head comprising applying an effective amount of a mixture of a non-foaming lubricant and solubilizer via an aerosolization system directly to said razor blade immediately before shaving such that shaving can be performed in the absence of first applying any shaving preparation directly to the area to be shaved. law and minimize exclusions.5. Consider claim 12 of U.S.4) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.5.974. A method of connecting a replaceable razor cartridge to a handle in a proper orientation.S. No Claim to Orig. 6.5. and connecting said handle connecting structure to said cartridge connecting structure.S. (4) A method claim can be used to cover the performance achieved with the invented apparatus.319.1] (1) Method claims can have the breadth associated with functional language without the problems associated with "means-plus-function" language. Application s 6. certain products are excluded from infringement. (2) Methods claims do not need structural limitations. October 2006 Chapter 6: Preparing the Claims § 6. can be *6-97 enjoined. it is advisable to include in the patent application claims directed to all possible pro- © 2008 Thomson/West.2] However.PLIREF-PATAPP § 6. independent of the structure of the apparatus.5 Strategy of Claim Drafting *6-95 § 6.903 for protecting a replaceable razor cartridge: 12. Further. namely those materially changed by subsequent processes or those that become a trivial and nonessential component of another product. even when the product is not patented. US Gov. mating said key structure on said handle connecting structure with said cutaway portion on said cartridge connecting structure.052. Patent No.4 Include Different Statutory Classes of Claims Whenever possible it is advisable to include different statutory classes of claims in an application. . moving said handle connecting structure toward said cartridge connecting structure along said connection axis. A new machine often can also be claimed with regard to the method of using the machine and the product produced by the machine.5.4 (Cite as: PLIREF-PATAPP s 6. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. [FN147. comprising aligning a key structure on a handle connecting structure of said handle on one side of a connection axis but not the other side with a cutaway portion functioning as a keyway on a cartridge connecting structure of said cartridge on one side of said connection axis but not the other side.4 FOR EDUCATIONAL USE ONLY How to Write Pat. (3) A method claim can protect the replacement part that is not patentable by itself so the competitor selling the *6-96 replacement part can be sued for inducing or contributory patent infringement. For example. To take advantage of this provision of U.

2000 meeting. Since patentees frequently fail to mark patented products. § 1337(a) (ITC proceeding).S. No Claim to Orig. § 287 for a patent containing only a method claim as opposed to a patent claiming a product. Daulton. . US Gov.merchantgould.4) Page 2 cesses that result in a material change of the product. an issued patent containing only method claims--either as a result of compliance with a restriction requirement or intentional prosecution strategy. 35 U.4 FOR EDUCATIONAL USE ONLY How to Write Pat.com/attachments/65.4 END OF DOCUMENT © 2008 Thomson/West. such as by filing multiple applications-can allow for recovery of damages even in the absence of marking. PLIREF-PATAPP s 6. available at < www.2]. § 271(g) (federal court proceeding).C.5.doc>.S. Some of these ideas are well presented in Julie R. Application s 6. Works.1].4 (Cite as: PLIREF-PATAPP s 6. AIPLA Oct. [FN147.5.S. (6) There is no duty to mark under 35 U. [FN147. Five General Principles of Method Claiming.5.C. 19 U.5.C. or both a method and a product.PLIREF-PATAPP § 6.

For example. US Gov. Application s 6. § 271. the problem of suing a customer is circumvented by having an apparatus claim in the patent because with an apparatus claim it is possible to sue the competitor selling a machine for direct infringement. [FN148] Since most patentees do not *6-98 like to sue potential customers. Such a claim would be read: • A machine for manufacturing shoes comprising: (a) means for retaining a shoe sole in a selected position. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. The competitor may be sued for contributory infringement or for inducing infringement. and (c) means for stitching the upper to the shoe sole. [FN148].5. Works. only the person using the machine would directly infringe the patent. . and (c) stitching the upper to the shoe sole.5. (b) means for placing an upper on top of the shoe sole. See 35 U. the party selling a machine to practice the process would not be a direct infringer. The easiest way to do this is to change each step of the process claim into an apparatus claim by adding "means for" language. For example. (b) placing an upper on top of the shoe sole. consider a process claim with the following steps: • A method for manufacturing shoes comprising: (a) retaining a shoe sole in a selected position. whenever possible.C. to include claims directed to an apparatus for practicing the claimed process. This is done to ensure that the patentee can sue a person who manufactures machinery that can perform the process.5 (Cite as: PLIREF-PATAPP s 6.S. END OF DOCUMENT © 2008 Thomson/West.5 Strategy of Claim Drafting *6-97 § 6.5. October 2006 Chapter 6: Preparing the Claims § 6.5.5 Converting Process Claims to Apparatus Claims In an application for a process patent.5 FOR EDUCATIONAL USE ONLY How to Write Pat. it is a good idea. if the applicant has invented a new method for making shoes. No Claim to Orig.PLIREF-PATAPP § 6.5) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. This process claim can be easily converted into an apparatus claim by adding "means for" language for each step. Other dependent and independent apparatus claims can be drafted by specifying the "means for" language in more detail.

but is inherent in its use.5. Example 1.6) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.5. C "for preventing injection of air bubbles into a patient. B. Add structure that is not critical to the claimed invention. .5. Another reason to add "meaningless" limitations to a claim is that they may help avoid invalidity during subsequent litigation. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. the more likely an examiner will believe that the claim is sufficiently narrow to be allowable. A new type of syringe that prevents air bubbles from being injected into a patient has been invented. Works. For example. PLIREF-PATAPP s 6. without affecting the scope of the claimed subject matter. No Claim to Orig.5. if the only foreseeable practical use of a new thermostat is in a toaster oven. Application s 6.6 Adding Limitations to a Claim Without Narrowing the Claim Although there is no conscious effort by the Patent Office to disallow short claims. October 2006 Chapter 6: Preparing the Claims § 6. at least some of the claims should define the structure of the toaster oven including the thermostat. US Gov. *6-99 Consider the following examples of techniques to apparently limit a claim.6 FOR EDUCATIONAL USE ONLY How to Write Pat.PLIREF-PATAPP § 6.5 Strategy of Claim Drafting *6-98 § 6. The claim can be lengthened by adding the following functional language without unduly narrowing the claim: Structure A.6 (Cite as: PLIREF-PATAPP s 6.5.6 END OF DOCUMENT © 2008 Thomson/West." Example 2. it is only human nature that the longer the claim. Thus. it can be advantageous to add length to a claim without narrowing the claim.

5.5. When negotiating a license or arguing damages before a jury.7 Claim the Environment of the Invention It is always desirable to have a high royalty base in litigation. No Claim to Orig. Referring to the prior "toaster oven" example. PLIREF-PATAPP s 6. a patent directed to a novel waterbed mattress should also include claims for the combination of the frame and mattress to increase the possible royalty base. most waterbed mattresses are used with waterbed frames.7 FOR EDUCATIONAL USE ONLY How to Write Pat. As another example. Therefore. and many manufacturers provide frames with the mattress. October 2006 Chapter 6: Preparing the Claims § 6.PLIREF-PATAPP § 6. Works.7 END OF DOCUMENT © 2008 Thomson/West.7 (Cite as: PLIREF-PATAPP s 6.5. US Gov. it would be better to work from a high royalty base that includes the entire toaster oven.5.5 Strategy of Claim Drafting *6-99 § 6. .5. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. a claim directed to a thermostat for a toaster oven has an inherently smaller royalty base than a claim directed to a toaster oven that includes the patentable thermostat. One way to do this is by claiming the environment of an invention. Application s 6.7) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.

5.8.8 (Cite as: PLIREF-PATAPP s 6. Works. © 2008 Thomson/West.5. A claim directed to a stitching machine states that the machine comprises a widget. October 2006 Chapter 6: Preparing the Claims § 6." Example 2. 3.8 Using Dependent Claims § 6. . they tend to survive or fall along with the independent claims from which they depend." separate dependent claims can recite "four legs" and *6-101 "six legs. In general. if any feature of a dependent claim is truly important and may be patentable in its own right.5. Example 4. and (b) mixing compounds A and B together. The method of claim 1 wherein the steps of mixing and melting occur simultaneously. US Gov. such determinations are relatively rare.5. Example 3. even if dependent claims are separately argued before a judge or jury. the dependent claims may be being misused or their subject matter should probably be placed in additional independent claims." This makes it clear that the language "at least four legs" reads on four legs and any number of legs greater than four legs. Dependent claims serve the following principal functions: 1. An independent claim states that element A is "proximate to" element B.8) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Although theoretically a court and jury can uphold a dependent claim while finding its parent independent claim invalid. To make it clear that the independent claim does not require elements A and B to be in contact with one other. Dependent claims can be added to make it clear that the order of steps is immaterial. it is strongly recommended that this feature be presented in an independent claim.5. [FN148. a dependent claim can state that the machine "comprises two widgets. Therefore.1 Strategic Use of Dependent Claims Dependent claims are often overly used by new practitioners. The method of claim 1 wherein the step of mixing takes place before the step of melting. A process claim recites: 1. A reasonable guideline to follow is that no independent claim should be the "parent" of many more than five dependent claims. For example: 2.5 Strategy of Claim Drafting *6-100 § 6. A method for manufacturing C comprising the steps of: (a) melting compound A. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. To make it clear that there can be more than one widget. Dependent claims can be used to define the scope of the independent claim. Application s 6.1] Example 1. thereby producing C from the reaction of A and B. If the independent claim recites "at least four legs. a dependent claim that states "element A is in contact with element B" can be added.8 FOR EDUCATIONAL USE ONLY How to Write Pat. If there are more than five dependent claims.PLIREF-PATAPP § 6. No Claim to Orig.

and (c) using the mixer. according to this doctrine. No Claim to Orig. [FN150] *6-103 As a corollary to the dedication rule.5. that combination was dedicated to the public. if a claim recites an element that is "sufficiently long. A method claim dependent on a composition or apparatus claim is a relatively inexpensive way to add a method claim to an application. by failing to claim a particular combination. a dependent claim directly to a method of using a mixer could have the following format: A method of mixing ingredients comprising the steps of: (a) selecting the mixer of claim 1. US Gov. the doctrine of claim differentiation is just one factor that courts consider when interpreting a claim. Thus.PLIREF-PATAPP § 6. According to the doctrine. Including an additional element or alternate structure in a dependent claim can avoid an argument in litigation that. mixing A and B.1] § 6. [FN151] 7. For example. if a feature appears in a dependent claim.8) Page 2 This use of dependent claims is based upon the doctrine of claim differentiation. the practitioner should be prepared to present an argument to the examiner for allowance of the dependent claim. Dependent claims can be used to present subject matter that may be patentable even if the parent independent claim is not patentable.2] However. 4.8 (Cite as: PLIREF-PATAPP s 6. . When drafting a dependent claim of this nature. in any order. then such a dependent claim should be included." a dependent claim can specify that the element is "at least five inches long. Dependent claims can be used to alleviate potential problems regarding indefinite claim language. Therefore. courts have held that subject matter that would have been foreseeable from the subject matter claimed is likewise dedicated. subject matter that was alternatively disclosed but unclaimed is deemed to have been dedicated to the public. the independent claim from which the dependent claim depends is not interpreted to include this limitation. Thus the Federal Circuit has held that the doctrine cannot by itself restore to a broad claim an interpretation inconsistent with arguments made to the Patent Office regarding the scope of an independent claim. [FN148.5. As a practical matter. and not combine statutory classes. 3. 5.8 FOR EDUCATIONAL USE ONLY How to Write Pat." The dependent claim is more definite and may avoid subsequent prosecution or litigation problems. into the mixer. [FN151. Many clients brag about getting a patent containing twenty-five claims without ever considering the breadth of each claim.8.2 Strategic Use of Multiple Dependent Claims Multiple dependent claims have their advantages and disadvantages and should not necessarily be used in © 2008 Thomson/West. practitioners need to satisfy many unsophisticated clients who believe that the value of a patent is related to the number of claims rather than the breadth of the claims.5. dependent claims can serve to keep the client happy! 6. If arguments can be made for why the preferred version of the Markush claim is patentable. (b) adding ingredients A and B.5. Works. where the argument is in addition to the arguments presented for allowing the parent independent claim. Application s 6. Under the dedication rule. [FN149] *6-102 2. dependent claims depending on a parent claim containing a Markush group can be used to present preferred versions of the invention. claims are presumed not to cover identical subject matter. For example. It is important that the claim be clearly a method claim. As discussed above.

and translation costs if the application is filed in a foreign country. 3. That reduces the cost of revising the specification or making amendments. Among the disadvantages of multiple dependent claims are the following: 1.2d 1321 (Fed. . Inc. rather than multiple times. 48 U. 126 F. Cir. Inc. v. . There is an extra filing fee just for presenting a multiple dependent claim.P. Multiple dependent claims save secretarial time. Advantages of multiple dependent claims include the following: 1. Anitec Printing Plates.com.S. Balancing the advantages and disadvantages of multiple dependent claims. 39 U. .S.2d 1001 (Fed. it makes sense to use the multiple dependent claims up front rather than having to revise the application before it is filed foreign. 104 U.2].8) Page 3 every application.5. . IPIXL Holdings. 67 U. such as those claims that are directed to features of the invention that are independently nonobvious.. Miller v. Harold Schoenhause v. Maxwell v. 117 S. 4. Inc. it is recommended that multiple dependent claims be used only for important dependent claims. the filing fee can mount up rapidly. If the dependent claim needs to be changed. [FN149].Q. Inc.5. Devon Indus. 2003). J.3d 534. Most examiners will not determine the patentability of a multiple dependent claim separately for each claim from which it depends. 2. Application s 6.5. Works. attorneys' time. 159 F.3d 1437. 314 F.5.S. [FN151.Q. Sunrace Roots Enter. Inc. v. Co. Inc. a multiple dependent claim will be allowed only if either its parent claims are patentable or if the subject matter of the multiple dependent claim on its own is considered patentable.PLIREF-PATAPP § 6. Inc.S.. L. denied. 2. Hoechst Marion Roussel. [FN151]. or those claims containing*6-105 limitations the applicant would be willing to include in the broadest claim in order to obtain a patent.8 (Cite as: PLIREF-PATAPP s 6. . . Amazon. US Gov..3d 1377 (Fed. cert. 44 U. Amgen. Cir. when multiple dependent claims are used in applications.3d 1420. 2005) ("the system of claim 2 wherein . 440 F. [FN150].1].Q.3d 1284 (Fed.P. a multiple *6-104 dependent claim that reads "The article of any one of claims 1. 45 U. 1998). 1996). It is easier to understand the claim structure.. Sage Prods. Cir. PLIREF-PATAPP s 6. 2006). ATD Corp... Thus. No Claim to Orig. 132 F. There is a tendency to overuse multiple dependent claims so that they inappropriately depend on other claims. v.5 . 3. Inc. Genesco. the user uses the input means . Thus. it only has to be changed once. It becomes easy to be sloppy in claim drafting. 1244 (1997). 350 (1881). Cir." is considered to be five dependent claims for purposes of calculating filing fees. Ct. Multiple dependent claims are commonly used in foreign countries. [FN148.8 END OF DOCUMENT © 2008 Thomson/West. Inc. 1997).8 FOR EDUCATIONAL USE ONLY How to Write Pat.S.1].Q. Cir. Brass Co. Cir.3d 1098. Each multiple dependent claim is considered for filing fee purposes as the number of claims to which the dependent claim refers. [FN148.2d 1103 (1997).3d 1313 (Fed. v.. For those applications being filed in foreign countries. v. Cir. 86 F. Baker.Q. 430 F.S. For example.C." is indefinite). Fromson v. .P.2d 1438 (Fed...P. Sram Corp.L. 4. Lydall. 2003).2d 1269 (Fed.P.

Products that are sold as assemblages to be used by the consumer can be claimed as kits.PLIREF-PATAPP § 6.2]..2] [FN151. . . a patent directed to a pooper scooper could claim: • A kit of parts for scooping poop from the ground comprising: (a) a long handled scraper.9) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. PLIREF-PATAPP s 6.9 (Cite as: PLIREF-PATAPP s 6. and (c) a container for combining reagent 1 and reagent 2 with urine. *6-106 Inclusion of printed matter describing a method of using a kit is generally not of patentable significance. US Gov. because there needs to be a new and unobvious functional relationship between the printed matter and another portion of the kit. a diagnostic product for detecting pregnancy can comprise two or three test tubes and particular reagents. No Claim to Orig.5. . Cir.5. it is also appropriate to claim the invention as a kit because that is how it is sold. A suitable claim would be: • A kit for detecting pregnancy comprising: (a) reagent 1. and (b) a long handled receptacle for receiving poop scraped from grass by the scraper. October 2006 Chapter 6: Preparing the Claims § 6. or as a chemical composition if the reagents are novel. (b) reagent 2 which when combined with reagent 1 produces .3d 1336 (Fed.5. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. In re Ngai.5. Many products are sold unassembled or contain a variety of parts that are used together. For example.9 Using Kit Claims A very valuable type of claim to use for some inventions is a "kit" claim. For example. when reagents 1 and 2 are combined with urine. [FN151.9 END OF DOCUMENT © 2008 Thomson/West. 367 F. wherein the presence of the color blue in the test tube. 2004).9 FOR EDUCATIONAL USE ONLY How to Write Pat. Kit claims are particularly valuable for those products.5. Works. Such an invention is typically claimed as a method for detecting pregnancy. However. Application s 6. indicates that the urine donor is pregnant.5 Strategy of Claim Drafting *6-105 § 6.

PLIREF-PATAPP s 6.5 Strategy of Claim Drafting *6-106 § 6. Application s 6. It is important to always ask the inventor what will be sold. US Gov.10 FOR EDUCATIONAL USE ONLY How to Write Pat. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. a competitor selling the identical shaker mechanism. No Claim to Orig.5.10 END OF DOCUMENT © 2008 Thomson/West.5. . consider a client in the business of selling a shaker for classifying sand where the customer provides the container that is shaken by the shaker. would not be a direct infringer (although possibly a contributory infringer or liable for inducing infringement). At least some claims in the application should claim the shaker apparatus without the container.10) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.10 Claim What Is Sold It is extremely important that the claims cover what the client will be selling. Otherwise. It is remarkable how many patents issue that fail to claim the commercial version of the client's product. For example.10 (Cite as: PLIREF-PATAPP s 6. Works.5.PLIREF-PATAPP § 6.5. but with no container.5. October 2006 Chapter 6: Preparing the Claims § 6.

the examiner has the discretion to reject all the claims without specifying with particularity © 2008 Thomson/West.5. An apparatus comprising: A. element 1. using a format such as: A method according to claim 1 that has one or more of the following characteristics: A. A method of heating a reaction comprising the step of selecting the apparatus of claim 1 . F. Works. B. A method of constructing the apparatus of claim 1 . and B. .. . Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. .11 (Cite as: PLIREF-PATAPP s 6.. Combine a number of features of relatively minor importance into one dependent claim. and to keep filing fees reasonable.5. [FN152] The following techniques are available to keep the filing fee reasonable. .11 FOR EDUCATIONAL USE ONLY How to Write Pat. [FN155] When the application contains an unreasonable number of claims. both because the PTO requires this.. No Claim to Orig.11 Number of Claims--Avoid Undue Multiplicity The application should present a "reasonable" number of claims. . Claim 3.5 Strategy of Claim Drafting *6-106 § 6. 4. *6-107 1. Application s 6. 2. [FN154] An excessively large number of claims can mislead the public by making the subject matter of the invention and the breadth of the claims difficult to understand. . If a restriction requirement is expected. . An unreasonable number of claims can be rejected on grounds of undue multiplicity [FN153] if *6-108 (1) the excessive number of claims makes it difficult to understand what is claimed or (2) duplicate claims that are substantially similar are presented. . where element 2 has at least one of the following characteristics: (i) characteristic 1 (ii) characteristic 2. limit dependent claims to those independent claims expected to be elected.. Such a claim can read: 1. US Gov. and . 3. . and (iii) characteristic 3 The number of claims considered reasonable is determined on a case-by-case basis given the complexity and quantity of patentable features. . . without adversely affecting the scope of protection. . element 2.11) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.5. .PLIREF-PATAPP § 6. October 2006 Chapter 6: Preparing the Claims § 6. .. Rewrite claims which ordinarily would be written as independent claims as dependent claims such as: Claim 2. A similar approach can be used to minimize the number of independent claims. and still have all the important features examined as independent claims.5.

12 (Comm'r Pat." [FN158] For example. [FN156].11 END OF DOCUMENT © 2008 Thomson/West.P. Ex parte Birnbaum.11) Page 2 the grounds for rejecting each individual claim. Works. "The term 'about' has an ordinary meaning of 'approximately' in the absence of a clear expression and description to the contrary. App.Q. [FN152]. 1927).) 463 (1873). 635 (Pat. [FN155]. 84 U.S.11 (Cite as: PLIREF-PATAPP s 6. 161 U. (17 Wall. Application s 6. See Carlton v. US Gov. M. [FN156] At the time of rejecting the claims. the examiner generally specifies the number of claims that he or she considers reasonable in the circumstances to allow the applicant to select this number of claims from the original application for further examination.E.5. [FN154]. an application that recited 325 claims covering seventy pages was held to be a "flagrant abuse" of the applicant's privilege to claim the invention in different phraseology. PLIREF-PATAPP s 6. .5.5. Comm'r Pat. [FN153].F. § 2173. Off.P. [FN157]. Id. § 1. M.R. [FN158]. a claim that adds or changes even a small feature from any other claim will generally not be rejected as duplicative. a claim that differs from another claim only by the recitation of "two" elements rather than a "pair" of elements is considered a duplicate claim.P. 1968). 37 C. For example.11 FOR EDUCATIONAL USE ONLY How to Write Pat. Bokee.E. §2173.P.05(n). Bd.75(b). [FN157] Claims that are identical in scope can be rejected as duplicative. 1927 Dec. However.PLIREF-PATAPP § 6.05(n).S. No Claim to Orig.5. Ex parte McCullough.P. The difference can be as small as reciting an element by a different name.

[FN158.12) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.5. A numerical limitation in a claim that does not use "about' has been narrowly construed when other numerical limitations in the same claim used "about." it is more difficult to argue for the criticality of the 75° C limitation than if the claim merely said "less than 75° C. to indicate that the precise number is not critical.9:1. The term "about" has an ordinary meaning of "approximately" in the absence of a clear expression and description to the contrary. [FN160] Use of "about" inevitably results in some ambiguity in a claim since it "avoids a strict numerical boundary to the specified parameter. The use of "about" to broaden a claim term can backfire if it is not used throughout a claim." [FN161] It is clear that use of the word "approximately" broadens the scope of a claim. Application s 6. [FN162. the phrase "substantially constant" can be language of approximation. while the *6-111 phrase "substantially below" can signify language of magnitude.12 Use of "About" and Other Terms of Approximation Terms of approximation are frequently used in the claims when the invention does not lend itself to absolute precision. [FN162.5.12 (Cite as: PLIREF-PATAPP s 6.5. if the prior art teaches operating a process at 80° C and the claim uses the language "less than about 75° C. However. Typical uses include: • a temperature of from about 50° C to about 60° C • a temperature of less than about 60° C • at a pressure greater than about 2 atmospheres • a distance of at least about 60 centimeters Generally the use of the word "about" does not render a claim indefinite. No Claim to Orig. . Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Works. not insubstantial.3] The term "substantially" can be a term of approximation or a term of magnitude. the word "about" is commonly used in claims where there are no numerical limitations. For example. [FN162] and accordingly. use of "about" likewise broadens a claim. [FN159] but the *6-110 phrase "about 40:1" does not encompass a four-fold increase to 162.1] The term "generally" can be used to impart a lack of precision to a claim. use of "about" does create difficulties when prosecuting an application.1] Moreover.12 FOR EDUCATIONAL USE ONLY How to Write Pat. It is more difficult to argue that a particular numerical limitation is critical to the patentability of an invention when the word "about" is used. such as "generally parallel" envisioning some amount of deviation from exactly parallel.5 Strategy of Claim Drafting *6-109 § 6.4] © 2008 Thomson/West.5.PLIREF-PATAPP § 6. that is.2] The claim language "generally convex" means that a majority of points are convex. use of "about" is helpful during litigation to broaden the scope of a claim. October 2006 Chapter 6: Preparing the Claims § 6. For example. For example." [FN162. US Gov." A claim requiring use of a bath having a cyanate content of between "about 25 and 40%" encompasses a bath having a cyanate content in the range of 46% and 50%. [FN162.

v.).S. Deering Precision Instruments v.S. Conopco. 67 U..2d 1692 (Fed.Q.Q.P. BJ Servs.. May Dep't Stores.S.1]. Cir.2d 1086 (Fed.. Kolen Corp.. Dillon Co. 36 U. 415 F. Vector Distribution Sys. Cir.12 END OF DOCUMENT © 2008 Thomson/West. Cir. US Gov. 2005).3d 1335 (Fed. Inc. Inc. Co.Q. Am. Anchor Wall Sys.S.3d 1314 (Fed.. 2005). 2003). v. USA.P.5. v.P. 2000). v. PLIREF-PATAPP s 6.Q. 65 F. Cir.3d 1364 (Fed.2d 1225 (Fed. Inc. Motor City Metal Treating. Plastipak Packaging..5. 32 U. Rodine. [FN162. Proctor & Gamble Co. 1995) (a molar ratio "about 5:1 to about 7:1" is not literally infringed by a ratio of 4:1. 886.2d 1225 (Fed. PLC.PLIREF-PATAPP § 6.S.3d 1368.3d 1377. Inc. 1995) (change from "at least 600 tpi" to "at least approximately 600 tpi" improperly broadened a claim during reexamination). 440 F. [FN162].S.Q. Cir. [FN159]. Cir. 400 F. Quantum Corp. 1994). Jeneric/Pentron. 67 U.P. No Claim to Orig. Application s 6.2].Q. 340 F. Container.Q. 325 (1971). [FN162. 347 F. v. Inc.P.5. Cir. N. Cir. Merck & Co. 2005)." Thus "substantially flattened" requires neither a perfectly flat surface nor one that is flat within a manufacturing tolerance.4].P.2d 1162 (Fed. 205 F.S. .1]. Inc.Q. Inc. 77 (6th Cir.P.12 (Cite as: PLIREF-PATAPP s 6. Inc. Pall Corp. 2003). [FN162. but is infringed under the doctrine of equivalents). [FN162. 171 U.3d 1577.2d 77. 169 U.3d 1211. Micron Separations. 338 F. Cir..5].3d 901 (Fed. 66 F. [FN161]. Teva Pharms..12) Page 2 The term "substantial" can be a modifier that implies "approximate" rather than "perfect. v. denied. 2d 1865 (Fed.. cert. Playtex Prods.S. [FN162. Halliburton Energy Servs.S. v.3d 1298. 36 U. v. [FN160]. 54 U. Inc. v. Works.5. 1217-20.12 FOR EDUCATIONAL USE ONLY How to Write Pat.P. Rockwood Retaining Walls. v. 2003).5] [FN158.3]. Cir. [FN162. 404 U. 395 F.

it can be expected that the Patent Office will find the claimed invention prima facie obvious and so reject the claimed invention.1 Avoid Precise Numbers It is important to avoid overly precise numbers.6]. Functional limitations have the advantages of clearly defining the invention. it is recommended that a dependent claim be used to quantify the functional limit.3 Numerical Limitations Can Require Criticality If the only difference between a claimed invention and the prior art is differences in numerical limits.P. Moreover.5." By adding the extra decimal.13) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G." § 6. it is recommended that a description of the criticality be included in the specification. it is better to use functional limitations in claims rather than numerical limitations.13 Use of Numerical Limitations § 6. For example.13 FOR EDUCATIONAL USE ONLY How to Write Pat. No Claim to Orig. If an inventor is operating a claimed process at a temperature between 30° C and 40° C.2 Use Functional Language in Lieu of Numerical Limits Whenever possible. the claim should not state "from 30.5. .5. Works. [FN162." A reason for this is that later developments in the *6-112 field may discover a catalyst that allows the reaction to occur in just one hour. it is generally necessary to show the criticality of the numerical limitation.5.13. M.0° C. it generally makes no sense to include a series of independent or dependent claims that differ from the prior art only in numerical limitations unless the inventor is prepared to show the criticality of the numerical limitations. § 2144. [FN162. such a claim has more limited scope under the doctrine of equivalents than if the claim merely stated "from 30° C to 40° C. it is better to use the language "heating the ingredients sufficiently long that substantially all the ingredients are reacted" than the language "heating the reactants for at least two hours. [FN162. an appropriate dependent claim to quantify the limit "sufficiently long" is "The method of claim 1. © 2008 Thomson/West. and inherently excluding nonoperative versions of the invention. numbers should not be carried to decimal points more accurate than is reasonable.13 (Cite as: PLIREF-PATAPP s 6. Application s 6.P." § 6. where the numerical limits are overlapped by the prior art.PLIREF-PATAPP § 6.E. For example.13. being hard to design around.13. However.5.5 Strategy of Claim Drafting *6-111 § 6.5. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. US Gov.0° C to 40. October 2006 Chapter 6: Preparing the Claims § 6.5.6] To overcome the rejection. wherein the step of reacting the ingredients comprises reacting the ingredients for at least one hour. Thus. For example.7] Accordingly. such as by showing unexpected results relative to the prior art.05. there is an inherent level of indefiniteness in the use of functional language.

13 END OF DOCUMENT © 2008 Thomson/West.PLIREF-PATAPP § 6. . US Gov.5.13) Page 2 [FN162.5.5. Application s 6.13 FOR EDUCATIONAL USE ONLY How to Write Pat. Works. No Claim to Orig.7].5. PLIREF-PATAPP s 6.13 (Cite as: PLIREF-PATAPP s 6. Id.

a purchaser of the patented article from the owner of the patent may also be able to use the patented method.14 END OF DOCUMENT © 2008 Thomson/West. either under an implied license or as a result of "patent exhaustion. if there are two separate patents.14 Avoid the Doctrines of Patent Exhaustion and Implied License Under some circumstances. it is advisable to file two patent applications rather than one application. US Gov. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Application s 6. Such a finding would allow the seller of the patented article or composition to prevent use in the patented method. in view of the doctrine of patent exhaustion and implied license. According to those doctrines. where the article or composition is not capable of use other than in the patented method.5.5 Strategy of Claim Drafting *6-112 § 6.14 (Cite as: PLIREF-PATAPP s 6.PLIREF-PATAPP § 6.14 FOR EDUCATIONAL USE ONLY How to Write Pat. Works. No Claim to Orig." The cases dealing with these doctrines usually are involved with a single patent.5. October 2006 Chapter 6: Preparing the Claims § 6. PLIREF-PATAPP s 6. However. and (ii) a method of using the article or composition.5. or collect a royalty for their use in the patented method. when *6-113 the claims are directed to (i) an article or composition. either by initially filing two applications or by not contesting a restriction requirement. there is a greater possibility of a court's finding that the article or composition has uses other than in the patented method. .5.5. Thus it can be desirable to have two patents. These doctrines apply even if the patent in question has claims directed to a method of use.14) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.

3d 1357 (Fed.5. v.S. 1997). 2001)." was interpreted to be limited to a single sodium phosphate. 40 U.. v.. 43 U. the phrases "a cup" and "the cup" did not mean "one or more than one" but only "one. Works. v. Regents of the Univ. Inc. KCJ Corp. v. "a metallic gas-confining chamber" was interpreted to recite one chamber and not one or more than one chamber. and only one. v.15 END OF DOCUMENT © 2008 Thomson/West.S..2] [FN163].." it may not have been necessary. Tritech Microelectronics Int'l.15) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G." [FN163] However. Cir. Tate Access Floors.15 Carefully Use "a" and "an" The indefinite articles "a" and "an..2d 1545..15 FOR EDUCATIONAL USE ONLY How to Write Pat. [FN166. [FN165]. 2000). 2005).Q." [FN166] Also. Corp.S. Inc. Interface Architectual Res. 122 F.. 99 F." or similar language. v.5. and not more than one. in at least one reported case." because of the presence of "consisting.5.3d 1299 (Fed. use "at least one.S.V. 2004). v.Q. Insituform Techs. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. of Cal. Applyyourself. 1997). [FN164].D. 2005)." when used in open-ended claims containing the transitional phrase "comprising. 223 F.3d 1225 (Fed.5. Inc.P. 418 F.1]. 1996).2]. N. Cir. (Fed. Crystal Semiconductor Corp.2d 1321 (N. v. Cir. ICOS Vision Sys. CollegeNet. [FN166.3d 1098. Cat Contracting.3d 1019. there are court decisions where the indefinite article "a" has been interpreted to mean "one.3d 1351. 1997). [FN166]..15 (Cite as: PLIREF-PATAPP s 6." Thus the clause "a morphologically identifiable chromosome or cell nucleus" was interpreted to mean only one chromosome or cell *6-114 nucleus.1] Accordingly. Otherwise. [FN165] Likewise. Norian Corp. Stryker Corp. Inc. Inc. 55 U. Oncor Inc.2d 1602 (Fed. October 2006 Chapter 6: Preparing the Claims § 6.. If the language "comprising at least one" were used instead of "comprising. 2002).PLIREF-PATAPP § 6. [FN164] Similarly.Q.3d 1009 (Fed. v. Cir.3d 1321 (Fed.Q. No Claim to Orig. Cir.S. [FN166. 246 F.P. to appeal to the Federal Circuit. [FN166. unless an interpretation limiting the claim to only one of the elements is acceptable." "one or more. Kinetic Concepts. 363 F. Scanner Techs. Exitron Corp. Application s 6.P. Cir. Corp." generally mean "one or more. Cal. petition for reh'g granted and decision clarified. PLIREF-PATAPP s 6.. the claim language "a solution consisting of water and a sodium phosphate. 57 U.2d 1835 (Fed.3d 1336. Inc. 279 F. 44 U. Abtox. Cir.2d 1953 (Fed. Inc. Cir.. 365 F. exclude the term "a" from the claims in order to reduce ambiguity.Q.5.P. Inc.5 Strategy of Claim Drafting *6-113 § 6. Inc.P. . US Gov. 131 F. Cir.

PLIREF-PATAPP s 6. Application s 6.16 FOR EDUCATIONAL USE ONLY How to Write Pat. in a surgical procedure claim. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.PLIREF-PATAPP § 6. limits the liability of medical practitioners and others with regard to infringement of medical and surgical procedure patents. This section can vitiate the value of patents for medical procedures.16 (Cite as: PLIREF-PATAPP s 6.16 END OF DOCUMENT © 2008 Thomson/West. *6-115 For example. Among the techniques that may be effective to avoid the impact of that provision are: 1.5. so that manufacturers of the device can be liable for contributory infringement.5. § 287(c) Section 287(c) of 35 U.C.16 Avoid 35 U.S.16) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. US Gov.5. and state in the specification that an objective of the invention is to ensure that the surgical technique is conducted to minimize the opportunity for infection. Recite in the claim the use of a composition of matter where use of the composition directly contributes to achievement of the objective of the claimed method.5 Strategy of Claim Drafting *6-114 § 6.S. Recite in the claim a device that has no substantially noninfringing use. October 2006 Chapter 6: Preparing the Claims § 6. 2.5. include in the claim a treatment with an antibiotic. No Claim to Orig.5. .C. Works.

US Gov.2d 1065 (Fed. Application s 6.17 (Cite as: PLIREF-PATAPP s 6.5. Inc. Indus. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Toro Co. .Q." Although most practitioners would assume the two terms have the same meaning. the Federal Circuit has held otherwise. White Consol.PLIREF-PATAPP § 6. No Claim to Orig. 53 U.3d 1295.17 FOR EDUCATIONAL USE ONLY How to Write Pat.5 Strategy of Claim Drafting *6-115 § 6." [FN167].17 Beware of "Including" The transitional phrase "comprising" should be used rather than "including. v.S..17 END OF DOCUMENT © 2008 Thomson/West.P. Thus a claim that required an air inlet cover "including" means for increasing air pressure was interpreted to require that the "means" element be in an "attachment relationship" to the cover. [FN167] Such a narrow interpretation of a claim would most likely have been avoided by using "comprising" instead of "including. PLIREF-PATAPP s 6.5. Works.5. 1999). 199 F. Cir.17) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. October 2006 Chapter 6: Preparing the Claims § 6.5.5.

2] and can result in the application of laches.5.3d 1373 (Fed. Inc. v. 277 F. 2005) (disclosure-dedication rule against recapturing claimed subject matter using the doctrine of equivalents applies only if the disclosed but unclaimed subject matter is identified as an alternative to a claim limitation). White Consol.S.PLIREF-PATAPP § 6. Nev. PSC Computer Prods. [FN168.5. Teva Pharms.5.S.4] [FN168]. Cir. but see Johnson & Johnson Assocs. However. 1996). 383 F.. 2002) (apparently overruling YBM Magnex). [FN168.3] Another reason for claiming all disclosed embodiments and versions of the invention is to elicit a restriction requirement. after remand. § 121 does not immunize the subsequent patent from a double patenting rejection. cert.5 Strategy of Claim Drafting *6-115 § 6.C. 35 U.Q. a subsequent patent directed to restricted out claims is not subject to a double patenting rejection under 35 U. [FN168. Jan..18 (Cite as: PLIREF-PATAPP s 6.P.S.P. can result in rejection by the Patent Office of a pending application based on this doctrine. Symbol Techs. Inc.3d 1364 (Fed. J. Cir. .3d 1361 (Fed. v. 285 F. Inc. 2003). Application s 6. USA.2]. 2004 WL 161331 (D.E. Cir. Co.. cf.18 FOR EDUCATIONAL USE ONLY How to Write Pat. Inc. Inc. v.3d 1326 (Fed. Pfizer Inc.C. Toro Co. 349 F. Lemelson Med. [FN168. No Claim to Orig.. Inc. 429 F. Cir.. Geneva Pharms. 145 F.). at least in extreme circumstances. [FN168. [FN168. Int'l Trade Comm'n. © 2008 Thomson/West. [FN168. GlaxoSmithKline PLC.3]. 46 U. & Research Found. 355 F. 23. Cir. 2004).. 1998) (limiting Maxwell to its facts). Works. [FN168.3d 1317.S.. denied. 303 F. [FN168] Thus. Another reason why it is important to claim all disclosed embodiments in the application is the resurgence of the doctrine of prosecution history laches. Cir. v. § 112). § 121. when appropriate.4]. The Federal Circuit has held that the doctrine of equivalents does not extend to what is disclosed but not literally claimed. 2004) (the disclosure-dedication rule does not require that the description of the unclaimed feature satisfy 35 U.Q. 825 (2002). 537 U. if the claims in an issued patent literally *6-116 cover only one of two embodiments. Maxwell v. Indus. Cir. Inc.3d 1046 (Fed. Inc. 2002). 86 F. Inc. and effectively unenforceability of a patent in a litigation context.1].2d 1001 (Fed. if the claims of a subsequent application were not presented in the original application..C. Serv. 2004) (patentee dedicated plastic clips to the public by explicitly claiming only clips made of metal while disclosing the prior art included clips made of plastic). Foxconn Int'l. Educ.18 Claim All Disclosed Embodiments It is important to claim all disclosed embodiments in an application. R.5.18) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.2d 1843 (Fed..S. Baker.. October 2006 Chapter 6: Preparing the Claims § 6. YBM Magnex. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.3d 1362 (Fed. An undue delay in presenting claims. If there is a restriction requirement. v..3d 1098. 39 U. In re Bogese. Cir.3d 1353 (Fed. v. US Gov..1] This can be avoided by including claims directed to all embodiments disclosed as dependent claims from a generic claim. the second embodiment may be dedicated to the public.S. v. Cir.

18 END OF DOCUMENT © 2008 Thomson/West.18 (Cite as: PLIREF-PATAPP s 6. Works. . Application s 6.PLIREF-PATAPP § 6.18 FOR EDUCATIONAL USE ONLY How to Write Pat.5.5.18) Page 2 PLIREF-PATAPP s 6.5. US Gov.5. No Claim to Orig.

and any patent attorney trying to write a noninfringement opinion letter.2.3.19 END OF DOCUMENT © 2008 Thomson/West. *6-118 (8) Use the same term in the claims to refer to different elements. (5) Leave the word "means" out of "means-plus-function" clauses so it is not clear that the clause is a means-plus-function clause.) (12) Include limitations in the preamble that are not repeated in the body of the claim.4.19) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. will tell you that it is best to have claims in a patent with some ambiguity. consider the following strategies to add ambiguity to the claims: (1) Use means-plus-function clauses. since these clauses are interpreted to cover the structure in the specification that performs the function. (2) Use "step for" claims for the same reason one would use "means for" claims. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.5 Strategy of Claim Drafting *6-117 § 6. The ambiguity is clear in the statutory definition. . exactly what is "equivalent" raises difficult-to-answer issues.19 (Cite as: PLIREF-PATAPP s 6. Also. No Claim to Orig. Application s 6.19 Include Ambiguous Claims Any litigator trying to sue on a patent. Once a practitioner knows how to write nonambiguous claims. (See section 6.3.5. § 112 indefiniteness challenge.PLIREF-PATAPP § 6. Of course it is important to have some nonambiguous claims in the patent.C. To make life more difficult for infringers.) (13) Do not organize the claims with paragraphs and subparagraphs. US Gov. PLIREF-PATAPP s 6. (9) Use words of ambiguity such as "substantially" and "about. (3) Use claims with functional limitations comparable to the "means for" language. (7) Use different terms in the claims for the same element.5. (4) Include some structure in the "means for" clauses so it is not clear whether the clause is a meansplus-function clause. (6) Call the same element different things in the specification. (See § 6. (11) Use "having" and "composed of" as transitions instead of "comprising" or "consisting essentially of" because the former transitions do not have a definite meaning without reference to the specification.19 FOR EDUCATIONAL USE ONLY How to Write Pat.3.5. since there can be an issue as to exactly what structure in the specification performs the function.5." (10) Use ranges without bottom limits or ranges without top limits.S. October 2006 Chapter 6: Preparing the Claims § 6. the next challenge is to intentionally write ambiguous claims. so that at least some of the claims will definitely survive a 35 U.5. and equivalents thereto. Works.

claim every species of the genus independently.5] created challenges for the patent practitioner. § 112.20) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. v. particularly if the application originates overseas. issued species claim.PLIREF-PATAPP § 6.20 FOR EDUCATIONAL USE ONLY How to Write Pat.20 (Cite as: PLIREF-PATAPP s 6. (4) Be sure that the claims do not inadvertently cover the prior art. Works.. (3) Claim all the equivalents of every claim element so there is no need to rely on the doctrine of equivalents. *6-120 (7) Carefully avoid informalities such as ambiguous language or missing antecedents so the claims do not have to be amended.5 Strategy of Claim Drafting *6-118 § 6.6]. With this claim structure. . 122 S.5.115(a). Ct. US Gov. No Claim to Orig.F. According to Festo. there are some initial claiming strategies available that may make it possible to avoid Festo. [FN168. October 2006 Chapter 6: Preparing the Claims § 6. However. § 1. It is beyond the scope of the book to discuss prosecution strategies to avoid Festo.5. (8) If the claims of the application will need amendment. the availability of the doctrine of equivalents is very limited. It may be better when asserting a patent to have the doctrine of equivalents available for a narrow claim than no doctrine of equivalents being available for a relatively broad claim.5. *6-119 To avoid Festo it is necessary to avoid prosecution history estoppel.5.5]. (2) Include "means-plus-function" and "step-for" elements because a literal infringement analysis of such an element includes an "equivalents" analysis under 35 U. § 1. These are: (1) Instead of claiming a genus. Application s 6.6] so any narrowing of the claim may not amount to prosecution history estoppel.R. (5) Submit multiple independent claims so that some claims can issue without amendment.C. see also 37 C.R.20 Claim to Avoid Festo The Supreme Court in Festo [FN168. because of the overlapping coverage provided by claim B. or at least make it unclear whether or not prosecution estoppel applies. Festo Corp. 37 C.F. 1831 (2002). file a preliminary amendment as part of the original disclosure [FN168. As to unamended. when there is prosecution history estoppel relating to a claim element such as by narrowing the claim element to avoid prior art.S. [FN168. but only claim up to the prior art to avoid amendments during prosecution. © 2008 Thomson/West. it can be difficult to determine if prosecution history estoppel applies if claim A is cancelled. For example claim A can have a broad range for pH and a narrow range for temperature. or (2) There is some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question. and the reverse can be present in claim B. Shoketsu Kinzoku Kogyo Kabushiki Co. there would be no prosecution history estoppel.205(a). (6) Include claims of overlapping scope. A difference between the charged infringement and the literal meaning of a claim may qualify for equivalents (an insubstantial difference) when: (1) The equivalent was unforeseeable at the time of the application. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.

5.20 FOR EDUCATIONAL USE ONLY How to Write Pat. US Gov.PLIREF-PATAPP § 6. No Claim to Orig.5. .20) Page 2 PLIREF-PATAPP s 6.5.5. Application s 6.20 END OF DOCUMENT © 2008 Thomson/West.20 (Cite as: PLIREF-PATAPP s 6. Works.

2001)..21 FOR EDUCATIONAL USE ONLY How to Write Pat. .5. Works.21 (Cite as: PLIREF-PATAPP s 6.5.S. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. v.7]. Am. Cir.P. Inc.21 Do Not Include Theory in the Claims It is not uncommon to include the theory behind why an invention works in the specification. October 2006 Chapter 6: Preparing the Claims § 6.Q. US Gov.21 END OF DOCUMENT © 2008 Thomson/West. 60 U. If the theory turns out to be wrong. No Claim to Orig. EMI Group N.7] [FN168. then the claims may be invalid for including an inoperable or impossible claim limitation.5. Application s 6.2d 1423 (Fed.21) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. PLIREF-PATAPP s 6.5.5. the theory should not work its way into the claims. [FN168. Cypress Semiconductor Corp.PLIREF-PATAPP § 6. However..5 Strategy of Claim Drafting *6-120 § 6.

22) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. 265 F. Inc. Inc.3d 1326. If one of the alternatives is anticipated by the prior art.. Of course.8] It is safer to put each alternative in its own claim.22 (Cite as: PLIREF-PATAPP s 6. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. A difficulty with the expression "A or B" is that it can be interpreted to mean: (i) either A or B. Schumer v.3d 1304 (Fed. Cir. US Gov. .. Inc. No Claim to Orig. or both A and B. [FN168. 308 F. 2001). Computer Sys. 264 F. Works.PLIREF-PATAPP § 6. there is infringement.22 END OF DOCUMENT © 2008 Thomson/West. either as an independent claim. Application s 6. if an alleged infringer performs just one of the alternatives. Brown v.5 Strategy of Claim Drafting *6-120 § 6.5.5.3d 1349 (Fed.P.2d 1135 (Fed.5. Applied Concepts." If the latter *6-121 is meant.22 Carefully Use Alternative Language Carefully use alternative language such as "A or B" or a Markush group in the claims.8]. 2002).. v. PLIREF-PATAPP s 6.22 FOR EDUCATIONAL USE ONLY How to Write Pat. Cir. Cir. or by a series of dependent claims.9]. then the entire claim is invalid. Kustom Signals. but not both. and combinations thereof.S. 60 U.9] [FN168. if the former is meant. use language such as "only one of A and B. use language such as "an element selected from the group consisting of A. Lab.5. 2001) ("magnitude or frequency" does not include both magnitude and frequency). October 2006 Chapter 6: Preparing the Claims § 6.5. [FN168. or (ii) A or B. To avoid an ambiguity. 3M." [FN168.Q. B.

23) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.5 Strategy of Claim Drafting *6-121 § 6. PLIREF-PATAPP s 6.10.1 on defining terms in the specification. it is strongly recommended that either a different term be chosen. No Claim to Orig. and any important word in the claim should be compared to the dictionary definition.PLIREF-PATAPP § 6.5. claims should be drafted with a dictionary in hand. See section 7. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Application s 6.23 Use a Dictionary When Drafting Claims Exactly what a claim means is uncertain until the claim has been interpreted by a court.10].10] [FN168.5. US Gov.5.3. .5.5. or the meaning intended by the term be explicitly defined in the specification. Accordingly. [FN168. only one of which is satisfactory. October 2006 Chapter 6: Preparing the Claims § 6. Works.23 END OF DOCUMENT © 2008 Thomson/West. If none of the dictionary definitions is in accord with what the term is supposed to mean. or if there are multiple alternative definitions.5.23 FOR EDUCATIONAL USE ONLY How to Write Pat.23 (Cite as: PLIREF-PATAPP s 6.

A "distributed claim" is a claim directed to a method or a system where the steps of a patented process can occur in different locations. a system claim can be infringed even where a portion of the system was used outside the United States. which can occur with claims in the field of computer networking.5 Strategy of Claim Drafting *6-121 § 6. a claim directed to the client side of the transaction provides for inducing infringement in the United States even if the server is located overseas.12].12] [FN168. 33:3. v. See Memley et al. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.P.PLIREF-PATAPP § 6. where a process can involve steps performed both on the client side and on the server side. 75 U.Q.24 (Cite as: PLIREF-PATAPP s 6.5. Inc. Similarly." This avoids geographic problems if the server is in the United States. even if the client is overseas.5.11]. However. Cir. Ltd.3d 1282.S. Method claims provide particular problems with regard to distributed claims. Application s 6." have the step *6-122 "receiving a request from a client.11] As a specific example of a strategy to avoid this problem. at 255-84. consider an invention involving communication between a server and a client. . Works.5. NTP. 2005). PLIREF-PATAPP s 6. Research in Motion. It is desirable to avoid both situations in view of the difficulty of finding a single person liable for infringement. [FN168.5. US Gov..24 END OF DOCUMENT © 2008 Thomson/West. No Claim to Orig. In order for there to be infringement of a method claim. [FN168. 418 F.. [FN168. including steps performed outside the United States.24) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.2d 1763 (Fed. AIPLA QUARTERLY JOURNAL. it is necessary that all of the steps be performed within the United States or its territories. October 2006 Chapter 6: Preparing the Claims § 6.24 FOR EDUCATIONAL USE ONLY How to Write Pat.5. Divided Infringement Claims. Instead of having the step of a client "transmitting a request to a server.24 Avoid Divided and Distributed Claims A "divided claim" is a claim that is not infringed by a single entity.

A method of using the chemical compound of claim 1. Even if two or more inventions are related. § 121. in most cases it is better for a client to have all patentable claims issue in a single patent. A chemical compound having features . do not include a full set of dependent claims from each independent claim. Include a linking claim in the application. operation. the Patent Office will often issue a restriction requirement.25) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. .PLIREF-PATAPP § 6. that is. According to 35 U. If a linking claim is allowable. 4. they are distinct if the *6-123 inventions are not connected in at least one of design. have members of the group be few in number and closely related so that a © 2008 Thomson/West. Through proper claim drafting. rather than multiple patents. A mixture including the chemical compound of claim 1.5. US Gov. In view of the high cost of government fees for filing a patent application.25 Drafting Claims to Avoid Restriction Requirements The Patent Office frequently issues restriction requirements. as well as the high cost of maintenance fees for issued patents. or effect. the applicant is entitled to retain in the application claims directed to the nonelected invention or inventions. claiming that there are multiple inventions and multiple species in a patent application.5 Strategy of Claim Drafting *6-122 § 6. For example. No Claim to Orig. a "method of making and using XYZ" links claims directed to a method of making XYZ and a claim directed to a method of using XYZ. and if a search in different classes is required.5. 3. not independent.5.C. The term "independent" means there is no disclosed relationship between claimed inventions. .5. For a Markush claim. Consult the classification index when claim drafting.25 (Cite as: PLIREF-PATAPP s 6. The greater the number of claims. the more likely that an examiner will issue a restriction requirement to avoid being overburdened. .15] 5. there must be two or more "independent and distinct" inventions. for a restriction requirement to be proper. One of the factors considered when determining if a restriction requirement is proper is the burden on the examiner. [FN168.13] The following tips may be helpful to avoid a restriction requirement. October 2006 Chapter 6: Preparing the Claims § 6. 1. 2. if there are two or more independent or distinct inventions. the Patent Office interprets "and" to mean "or. even if there was an earlier restriction requirement. . Limit the number of claims in the application. If they are really needed." Accordingly. However. A linking claim is a claim that reads on various distinct inventions.14] 2. [FN168. A method of making the chemical compound of claim 1. Works. For example. A kit including the compound of claim 1. [FN168.25 FOR EDUCATIONAL USE ONLY How to Write Pat. a claim set that might avoid a restriction requirement has the following form: 1. Write various claims of different statutory classes as dependent claims from the main claim. For example. that is evidence that there is a great burden on the examiner. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. it may be possible to avoid restriction issues. and where at least one invention is patentable (novel and nonobvious) over the other (even though they may be unpatentable over the prior art). *6-124 3. 5.S. usually they can be added after a Notice of Allowance by Rule 312 Amendment. Application s 6. 4.

P. § 8. Review M. M.16]. PLIREF-PATAPP s 6.05 during claim drafting. This section specifies when the examiner may or may not restrict with respect to a variety of related inventions. Application s 6. § 802.PLIREF-PATAPP § 6.E. Works. [FN168.25 (Cite as: PLIREF-PATAPP s 6.14].P. M. No Claim to Orig.P.5. US Gov.P. M.P.25 FOR EDUCATIONAL USE ONLY How to Write Pat. [FN168.P.E.5. M.16] 6. § 806. [FN168.P.15].13]. § 803(II).E.E.P. .02. § 809.5.P.25 END OF DOCUMENT © 2008 Thomson/West.01. [FN168.25) Page 2 search and examination of the entire claim can be made without serious burden.P.03.5. [FN168.E.

6 Claim Deficiencies--What Not to Do This section presents some of the more common errors in claim drafting.6 END OF DOCUMENT © 2008 Thomson/West. US Gov. . Works.6) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. PLIREF-PATAPP s 6. The exhibits include a section that criticizes these claims.PLIREF-PATAPP § 6.6 How to Write Pat. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Application s 6. a checklist is provided as Exhibit 6-13. As a practical guide to avoiding these errors. October 2006 Chapter 6: Preparing the Claims *6-124 § 6.6 (Cite as: PLIREF-PATAPP s 6. No Claim to Orig. and two patent agent exams containing poorly drafted claims are provided as Exhibits 6-14 and 6-15.

US Gov. October 2006 Chapter 6: Preparing the Claims § 6. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. . inconsistent terminology can be used to the advantage of the patentee to change the scope of the claims. PLIREF-PATAPP s 6. Application s 6.6.PLIREF-PATAPP § 6. No Claim to Orig. However.1 Use of Inconsistent Terminology Consistent terminology should be used throughout the claims. if the same element is referred to as "bar" and "lever" in separate claims. For example.6 Claim Deficiencies--What Not to Do *6-124 § 6. A single element should not have different names in *6-125 the claims.6.6.1 (Cite as: PLIREF-PATAPP s 6.1 END OF DOCUMENT © 2008 Thomson/West.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Works.6. One way to ensure the use of consistent terminology is to label the drawings with the name of each element before attempting to draft the claims and use that terminology for the claims.6. Inconsistent terminology should be used consciously and not as a result of sloppy claim-drafting practice.1 FOR EDUCATIONAL USE ONLY How to Write Pat. the scope of each claim is slightly different.

The proper form of the verb is "including. Application s 6. Example 1. . PLIREF-PATAPP s 6. .2 END OF DOCUMENT © 2008 Thomson/West. No Claim to Orig. "What is claimed is: A pencil comprising . Works.2 (Cite as: PLIREF-PATAPP s 6.6. US Gov.6. the claim should read. (parts A and B).PLIREF-PATAPP § 6.6.6." which uses the correct verb form. . Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. "What is claimed is: A pencil comprises .2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.2 Wrong Verb Form The form of the verb used in the transition between the preamble and body must comply with the rule that the claim is a single sentence.2 FOR EDUCATIONAL USE ONLY How to Write Pat. The verb form chosen preferably is in the present tense unless a past or future event is being described. "A suction cleaner includes a ." is incorrect.6 Claim Deficiencies--What Not to Do *6-125 § 6." Maintaining the proper verb form is easily accomplished by selecting a single verb style. . . . (parts A and B)" does not form a complete sentence because the form of the verb "comprises" is incorrect. such as "ing" or "es. Example 2.6. . Instead." and using the same style consistently throughout the claim. October 2006 Chapter 6: Preparing the Claims § 6.

" is improper if the gear is not previously introduced. To put it another way.PLIREF-PATAPP § 6. For example." or "at least two levers." A reference to the gear as "the plastic gear" without first defining the gear being plastic is an improper indirect limitation." or "first and second levers.17] If a claim is a dependent claim.6.3. they should be defined in the claims as "two levers.2 Antecedent Basis in the Specification The claims can lack antecedent support in the specification if (1) an element introduced in the claims is not described at all in the specification.3 (Cite as: PLIREF-PATAPP s 6.1 Antecedent Basis in the Claim One of the most common problems found in claims of novice patent writers is lack of antecedent basis in the claims. © 2008 Thomson/West. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. [FN169] Therefore. the qualification "the rear pair of wheels" is improper if the rear wheels are not previously introduced in the claims.6. (3) the language used to describe an element in the claim is misdescriptive. Whenever a definite article is used in a claim before an element of the claim.3 FOR EDUCATIONAL USE ONLY How to Write Pat. as in "the gear is plastic" or "the gear is comprised of plastic. a claim having a key element lacking an antecedent basis can still be valid if the claim "is not insolubly ambiguous. For example. Support. October 2006 Chapter 6: Preparing the Claims § 6. Works. If a plurality of identical elements is present.3 Lack of Antecedent Basis.6.6 Claim Deficiencies--What Not to Do *6-125 § 6. if "a gear" has been introduced. No Claim to Orig. if there are two levers in an invention. ." [FN168. or Both § 6." "said." etc. (2) the description of the element in the claim is inconsistent with that provided in the specification.6. US Gov. Similarly.3. or (4) it is not clear which of several elements described in the specification is referred to in the claim." and "such" cannot be used unless the following noun has already been introduced in the claim. . the antecedent basis can be found in the dependent claim or any claim upon which the claim is dependent. Modification or qualification of elements must be properly introduced. the definite articles "the. check to be certain the exact same element has already been introduced in the claim.6. [FN170] § 6.3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. However. a qualification describing the material used to fabricate the *6-127 gear should be separately introduced. Application s 6. a statement of cooperation between two elements such as "rotating cam connected to the gear ." or "a plurality of levers. since a dependent claim incorporates by reference all of the claims from which it depends.6. *6-126 Every element in a claim must be properly introduced before the element can be modified or qualified. the elements should be introduced in plural to allow for subsequent independent claims to limit or distinguish between the elements introduced as a plurality. .

1987). 435 F.3d 1366 (Fed. such as a rivet 10. App.PLIREF-PATAPP § 6." With modern word processing programs. Ex parte Moelands.3) Page 2 All terms and phrases used in the claims must find "clear support or antecedent basis" in the description so that the meaning of the terms in the claims can be ascertained without ambiguity. it should not be called "a holder" in the specification. it should be added to the specification or the language in the claim should be changed. For example. . See M.R. or the drawing should be modified.3 Antecedent Basis in the Drawings The drawings must also support the claims by presenting every element claimed. [FN172]. each element or connection within the claims.83(a).6. [FN168.S.P.3. if a distinguishing adjective is used to differentiate between similar elements.3 FOR EDUCATIONAL USE ONLY How to Write Pat. word by word. 37 C. the inventor may wish to change the name of an element that was originally "a lever" to "a bar. the element can be first introduced in the specification as "a bar. [FN171] To satisfy the requirement that the specification support the claims. such a change is relatively easy. For example.Q. 36 U.6. Off. US Gov." the same adjective should be used consistently. incomplete substitution. For example." the specification should describe the structure as: "a fastener. Int'l Trade Comm'n.75(d). 2006) (even though "said zinc anode" lacked antecedent basis. Occasionally. § 1. If an element in the claim cannot be found in the drawings.05(e).R. § 2173. the claims were not unclear or ambiguous). Application s 6. Inc. Alternatively. Bd. .3 END OF DOCUMENT © 2008 Thomson/West.3 (Cite as: PLIREF-PATAPP s 6.F. Similarly. Energizer Holdings. § 1. [FN169]. Cir. . a decision is made to rename an element after the patent application is written. § 6. [FN170]. ." Once a particular name is selected for an element. if a rivet-type fastener is used in an embodiment of the invention and the *6-128 applicant wishes to broadly claim "fastener" or "fastening means. either the element should be removed from the claim. If the language is missing in the specification. Works." This technique requires fewer changes in the specification and prevents subsequent problems that may arise from an inadvertent. PLIREF-PATAPP s 6.E. No Claim to Orig. such as "a base rotating member and a connector rotating member.6. if a container is called "a box" in the claims. the same name should be consistently used in both the specification and the claims to identify the element.17]. v.P.6. also referred to below as a lever.6. [FN172] An effective technique for verifying antecedent basis in the drawings is to take a set of drawings and label the drawing using the claimed elements.P. An effective way of verifying antecedent support is to check off.2d 1474 (Pat.F. 37 C. every element or connection recited in the claim must be derived from some corresponding element or connection that is described in greater detail within the specification or drawings. as supporting language is found in the specification. [FN171].

As a new article of manufacture a plywood panel having a face ply . The court held the specification did not define "removably. said grooves extending substantially lengthwise of the grain in said ply. [FN173] The scope of the invention claimed must be understandable to the ordinary person skilled in the art of the invention. and configuration of the grooves. expanding and the like .. after issuance of the patent.6. a claim for three-wheeled personal mobility vehicle was found invalid for indefiniteness with regard to the phrase "removably" connected.PLIREF-PATAPP § 6.4 Indefiniteness A vague or indefinite claim can be rejected under 35 U.6. The court held that the number. . Application s 6. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. [FN178] On *6-130 the other hand." and the patentee's connection that "removably" refers to a connection which can be severed without use of tools was not supported either by a dictionary definition or the patent itself. October 2006 Chapter 6: Preparing the Claims § 6. in view of the specification.S. [FN182] *6-131 In another case. was held not to be sufficiently definite to convey the scope of what was claimed to those skilled in the art. . [FN181] the court allowed indefinite language (italicized below) because the nature of the invention and the nature of the variables involved precluded objective quantification: 1. and generally across its width. frequent grooves being of material depth to pass through any hard growth layer encountered. [FN176] It is against the policy of the patent statutes to bar patent protection for inventions that are incapable of precise definition. and the depth of the grooving were all variable within a defined set of limits." [FN179] Attempts to "corral the art by use of comprehensive indefinite terms" [FN180] are frowned upon and construed against the patentee. to define the claims in a way that is best suited to maximize the patentee's patent monopoly. Therefore.4 (Cite as: PLIREF-PATAPP s 6. § 112 if it does not "particularly point out and distinctly claim" the invention. No Claim to Orig. [FN174] The degree of precision required in the claim is a flexible standard.6 Claim Deficiencies--What Not to Do *6-129 § 6. US Gov. but each groove being of the same depth throughout its length.6. .4 FOR EDUCATIONAL USE ONLY How to Write Pat. .C.4) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. size. [FN177] Consequently. For example. in Georgia-Pacific. "vague and imprecise terms in a patent afford the patentee an opportunity. The claims must clearly delineate the scope of the invention without ambiguity to prevent innocent infringement by the public and to provide a distinct basis for the examiner to establish the patentability of the invention. the size of the ribs. [FN183] The court held that the dimensions of the filament must be pro- © 2008 Thomson/West. [FN175] For example. the courts are lenient when the claims are as precise as the subject of the invention permits. the claim. . Works. and being sufficiently closely spaced to localize within the individual ribs or groups of ribs the normal stresses arising from shrinking. the exposed surface of said face ply having a plurality of substantially continuous grooves of random depth over the surfaces. a claim for a light bulb filled with "dry nitrogen at a pressure materially in excess of that corresponding to 50 millimeters of mercury" and containing "a filament of tungsten of large effective diameter" was held sufficiently definite. The infinite permutations of the variables within those defined limits precluded a more definite statement of those limitations.6.

" "substantially constant. [FN185] It is unclear how. *6-133 However. For example: • A shrimp vein remover.4. However." and "at least substantially hot" can be acceptable." "generally parallel. and means operatively associated with said supporting member for relatively moving the shrimp with respect to said member to cause separation of the vein from the shrimp meat. small." "sufficient to enhance. why. § 6. [FN187] Thus. is not indefinite per se.1 Words of Degree and Relational Terms Words of degree and relational terms are red flags in a claim as creating potential problems of indefiniteness. high. This is a problem of claim interpretation for the court. Further. Among terms that are usually unacceptable.6. they are not necessarily indefinite.6. US Gov. [FN189] which must determine whether the correct version would be discerned by one skilled in the art. [FN190] In Hybritech. [FN186] or if they are used in commercial practice to define tolerance levels or qualities with sufficient specificity. and long.1] "normally empty." "substantial portions at least.4) Page 2 portioned to the designed wattage as determined from rules that are familiar to a competent electrical engineer. because the indefiniteness in the claim increased the expense © 2008 Thomson/West. tall." "relatively small." "heat-insulating." "relatively shallow. unless clearly defined in the specification. a claim referred to minimum "affinity" of antibodies. that is. comparative expressions are generally acceptable. larger than. Although the claim did not specify whether the minimum affinity referred to "functional affinity" or "intrinsic affinity. In contrast. the following more specific claim was held valid in the same case: *6-132 • A shrimp vein remover comprising: a supporting member." the claim was upheld because the evidence indicated that "someone tutored in the art would understand it to mean functional affinity.6. or for what purpose the shrimp-moving means is "operatively associated" with the vein-engaging means. [FN184] On the other hand. Contrarily. That was poor claim drafting. and means associated with at least one of said above-named means for effecting relative movement there between. terms such as "about. are: large." [FN188] A claim that has two plausible interpretations. holding that it failed to define the scope of the invention with certainty because the structural and functional connections in the claim were incomprehensible. The court invalidated this claim. shrimp moving means operatively associated with said vein-engaging means. each of which is definite and clear in scope." [FN187. short. Works. big." "non-reinforcing condition. faster than. fast.PLIREF-PATAPP § 6. Application s 6.6. the application should not have been written so that there were two plausible interpretations. the following terms were held to be indefinite because of inadequate guidance in the specification: "relatively flat. the claim failed to define how the shrimp is deveined. a claim that is so peculiarly worded that it becomes incomprehensible in its totality is indefinite even if each element of the claim is properly defined in the specification." "length of the order of 5 mm." and "major portion. a lip projecting at an acute angle from the supporting member and having a smooth rounded free edge for engaging beneath the vein of a shrimp and for wedging the vein between the lip and the supporting member. They do not render claims indefinite when they are defined in the specification. No Claim to Orig." "slight excess. The particular meaning of "affinity" should have been defined in the specifications. Qualifiers such as "resilient" or "flexible" are also usually accepted as terms that define a particular quality with a reasonable degree of precision. smaller than." Nevertheless.4 (Cite as: PLIREF-PATAPP s 6." "substantially spare. .4 FOR EDUCATIONAL USE ONLY How to Write Pat. comprising: hook-like vein-engaging means." "nearly flat a substantial part. quick.

it was held that "about 6%" renders the claim indefinite since nothing defines the range and nothing indicates why 6% is critical.6. such as by using "first connecting means" in one independent claim and "connector" in another © 2008 Thomson/West." and not a "connector" or "connecting element.1] As discussed in § 6. The previously defined element should be referred to by name even if that name must be repeated several times within a single clause. *6-134 a process claim that defined the amount of acid required as the amount necessary to achieve selective action and polymerization under refrigeration was indefinite." [FN195] Relational terms are especially prohibited when they are used to describe features or relationships that are essential to the novelty of the invention.4. US Gov. "a handle connected to the gear. the term "aesthetically pleasing" as *6-135 applied to a user interface of a computerized kiosk rendered a claim invalid for indefiniteness. [FN196] Terms that cannot be evaluated by an objective means are indefinite. relational terms. the ambiguity of the example above can be eliminated by replacing "which" with "handle" and "it" with "gear" to read." or "small. because it defined a quantity by a desired end result and because of the lack of a precise refrigeration temperature range. Application s 6." "relatively.8. [FN194] However. a subsequent reference to "the wheel" that does not distinguish between the front and rear wheels is indefinite." can be considered vague and indefinite. a claim that reads. Words of degree. For example. without changing the name. a patent claim "must be a certain guide not a collection of pregnant suggestions. For example. "smaller than the external arm. "heat-insulating" are used in claims." or "having a specific gravity greater than 1.4 FOR EDUCATIONAL USE ONLY How to Write Pat.6." or. [FN191] Similarly.5." Comparatives. the gear. This form of indefiniteness can be cured by relating the comparative property to some definite external standard. dependent claims with numerical limitations can be used to be sure to include in the application claims that do not create indefiniteness issues. [FN193] Problems of indefiniteness can arise when relational terms such as "substantially. when words of degree and relational terms are used. if "front wheels" and "rear wheels" are introduced. When more than one element is listed in a single clause. however. An ambiguous reference to a previously introduced element can also make a claim indefinite.6. and ranges can create problems when used in claims to vaguely define some quantity that is not defined with sufficient specificity within the claims or specification. § 6.4 (Cite as: PLIREF-PATAPP s 6. [FN192] The court held that "there are no critical limits which set off the new results claimed. a "connecting member" is always a "member" or "connecting member. "a handle connected to the gear. . indefinite articles and pronouns should not be used to refer back to previously recited elements. more specifically. For example. For example." *6-136 The same name for an element must be used consistently throughout a claim and dependent claims in the chain." However." "closely.PLIREF-PATAPP § 6. or the axis.2 Indefinite References to Antecedent Elements A claim can be indefinite if it is unclear which of two previously introduced elements is referred to by the claim. to refer to "the front wheel" or "the rear wheel" using an adjective to distinguish between the two types of wheel. Works. [FN196. with the handle supported on the axis to pivot about the gear. For example. which is supported on the axis to pivot about it. For example. It would be proper." "heavy.6." or "substantially equal to [some other element defined in the claim]" can define a quantitative relationship without indefiniteness. For example." is ambiguous because it is not clear if "which" and "it" refer to the handle. such as "thick. These words do not per se render the claim indefinite. names can change between different series of claims. No Claim to Orig.4) Page 3 of litigating the patent.

6." are allowed. 81 (Fed.4) Page 4 independent claim. 38 U.6. v.Q. Jones Knitting Corp.S. US Gov. Inc.S." or "them." [FN202] Thus.2d 1368 (C." are considered improper because they render the breadth or scope of the claim indefinite.. § 121 if the application as a whole lacks "unity of invention. "the objection to an alternative claim is its uncertainty--the difficulty or impossibility of determining the precise limits of the invention.P. if the alternative elements are sufficiently related." "they.Q.3 Alternative Expressions Alternative expressions. 1537.C. This problem can usually be solved by replacing the pronoun with the specific element referred to by the pronoun.4 (Cite as: PLIREF-PATAPP s 6..S. Hybritech. cert. denied. . Works.D.2d 1367. [FN173]. cert.S." "its. 118 U.P.Q. [FN174]. A disadvantage of use of alternative language (A or B) in a claim is that if one of the alternatives is anticipated by prior art. [FN201] However. 643 (1938). would be called by the same shortened name. § 6. adjectives can be dropped in a claim. For example. it is advisable to avoid the use of alternative language in claims.2d 945. the Patent Office has relaxed this policy. 231 U.). A generic expression that describes the qualities or characteristics of the alternative elements can be used. Inc. 305 U.Q. Monoclonal Antibodies.6.. 149 U.PLIREF-PATAPP § 6. such as "glass or plastic" or "a spring or a weight for urging the carriage against the stop. 1606 (1987).2d 451. United States Plywood Corp.. denied. the name "translucent elongated connector" can be shortened to "elongated connector. [FN177]. such as a motor" or "a holder. Cal. v. v. Also. allowing alternative elements that bear some relationship to one another. denied.). Pneumatic Tool Co. is indefinite.S. 884 (1958). Inc. "rigid. and thus. 22 U. such as "rods or bars. For example. 258 (10th Cir. Means clauses can also be used to avoid alternative language. Chi.4.S." [FN197] Attempted alternatives or hedged expressions. [FN176]. cert. 1966). Ga.Q.S. Supp. transparent material" can be used to claim alternatives such as plastic or glass. alternative expressions reading on equivalent elements. Hughes Tool Co. In re Burke. 258 F. [FN175]." is a red flag that there may be an indefiniteness problem. 361 F.P. alternative claiming can still be rejected under 35 U. such as "it. 97 F.S." but not if the claim also has an "opaque elongated connector. when stripped of some of its adjectives. v. Application s 6. [FN198] However. 122 (2d Cir.-Pac.P. Corp.4 FOR EDUCATIONAL USE ONLY How to Write Pat.P. Cir. 802 F. as long as there is no other element whose designation. 1986). they may be recited in the form of a Markush claim as discussed in section 6. 659 (3d Cir. [FN202. 358 U. Use of a pronoun in a claim. 107 S.3.10 above." because the term "elongated connector" could refer to either of two elements (the translucent or opaque connector). the claim is invalid. No Claim to Orig. 786 F.2d 124. [FN200] Recent decisions further expand this rule. even though the strict policy against the use of alternative language has been relaxed. Morgan. Ct.6. [FN199] For example. © 2008 Thomson/West. The Patent Office initially adopted a strict policy barring the use of alternative language in a claim. 1992).1] There are several methods of avoiding alternative expressions." are also improper attempts to present two *6-137 claims (one broad and one narrow) within a single claim structure. Moreover. holding that alternative language cannot be rejected on grounds that the language is indefinite even if the alternatives recited are not equivalents. preferably a perforated box. such as "a drive means.

Abbott Labs. [FN187]. Cir.Q. Cir. denied. Id. 731 F.).2d 1651 (Bd.P. 361 F.. Atl. Jones Knitting Corp.S.P. 659 (3d Cir. 1971). Mathis v. 857 F.6. at 1000. Morgan.S. Laitram Corp. v. Orthokinetics. 1988). 8 U. Ga.Q. [FN182]. 417 F. 23 U. rev'd on other grounds. Bendix Corp. v. 233 F. [FN179]. 1000 (2d Cir. 190 U. 1986).P. cert. 731 F. 1988).. v.P. Works. 14 (E. Indus.. Cir. 884 (1958). Md. v.).2d 553. Inc.P.-Pac. Co. [FN186]. 118 U. [FN194].S. [FN189]. 1989)... at 138. Inc.P.P. 1971). 266 F. 183 (2d. Supp. Cal. 221 U. 358 U.1]... 1969). Plum Tree Software.4) Page 5 [FN178].S. Cir. Crating & Packing. 1984). Datamize LLC v. 1920). Cir. © 2008 Thomson/West. Inc. 23 U.4 FOR EDUCATIONAL USE ONLY How to Write Pat. 149 U.S.2d 1551 (Fed.2d 1446.D.Q.P. 23 U.Q. 171 U. Cir.S. Cir.. 770 (1945).. [FN185].P.N.P. Standard Oil Co. 449 F. 311 F.P.3d 1342 (Fed.S. 1946).1]. Id..S. 301 F. [FN196. denied. LLC v. 249 F.Q.D. United States Plywood Corp. 301 F. aff'd on attorney fee award. 1987) (unpublished opinion). 1 U.S. La.. 221 U. App. Indus.S. 806 F. Corp. v. 258 F. Supp. Inc. v.Q. 1064 (E. See Musher Found. Alba Trading Co. aff'd. v. 406 U. Ex parte Oetiker.. Elec. Hybritech. Norton Co. cert. Inc. Application s 6.S.P.Q.Q.3d 1116 (Fed. [FN180]. 518 (1972). . 73. 66 U.2d 874 (Fed. 1 U.Q. Seattle Box Co.Q. 1987). 1984).2d 1513. v. 1517 (C. [FN191]. v. 2005). 162 U. Cir. Tide Water Assoc. 1966). 1917). Supp.6. 568 (Fed. 994. Cir.S.Q. aff'd.P.2d 749.Q. [FN190]. 134 n. v. No Claim to Orig.2. Deepsouth Packing Co.S. Pat.. 849 F.2d 818. Inc. 879 (1956). Sales Affiliates. denied. aff'd.. 1011 (C. 1992). Burroughs Wellcome Co. Deepsouth Packing Co. Inc.Q.2d 1001.6. Inc. [FN188]. Kintner v. 150 F.PLIREF-PATAPP § 6.Q. Cir. Verve.Y..D.S.Q. 159 (2d Cir.2d 1565. v. 568 (Fed.S. Crane Cams.S.D. v.P. 1988)..S. 1992). Oil Co.Q.2d 124.Q. [FN187. Inc.D. 1191 (Fed.S. La.P. See Seattle Box Co.2d 885. 1969). 1037.P. [FN192]. [FN195].).4 (Cite as: PLIREF-PATAPP s 6. cert. & Interf. Helene Curtis Indus.2d 818.P.2d 579. Inc.2d 148. Laitram Corp. [FN196]. 326 U. [FN181]. [FN184].2d 108 (Fed. 77 (S..S. 449 (2d Cir..2d 1661 (Fed. 352 U.Q. 41 (3d Cir. 122 (2d Cir.2d 1641. 69 U. Gen. Hydro Air Indus. US Gov. 443 F. Hoffman-LaRoche. Commc'n Co. [FN193]. Safety Travel Chairs.S.2d 451.P.S.2d 928 (5th Cir. 818 F. 160. 154 F. 4 U. 7 U. 1064. Crating & Packing. [FN183].2d 1602 (D. v. 2002).S. Nitro Tungsten Lamp Co. v. Cal. 1037. 10 U. aff'd on merits.

2001). [FN199]. See M.P.E. § 2173. 486 F. [FN202].A.05(h). [FN198]. § 2173.4) Page 6 [FN197]. M. 206 U.4 FOR EDUCATIONAL USE ONLY How to Write Pat.C.1].P. Works. [FN201]. 631 F.01. 3M. Pat. No Claim to Orig.P.Q.E. [FN202.6. US Gov. Comm'r Pat.Q. PLIREF-PATAPP s 6. Gaz. [FN200].P. Brown v. Cir. In re Harnisch. 1879). .P. M.A 1973). In re Wolfrum. Office 882 (Comm'r Pat.6. 620 (C. 1980). 15 Off. 300 (C. 179 U. 265 F.4 END OF DOCUMENT © 2008 Thomson/West.P.PLIREF-PATAPP § 6.6.05(h).P.E.C.P.S.2d 588. Application s 6.4 (Cite as: PLIREF-PATAPP s 6. § 2173.P. Ex parte Reid.S.6.P.3d 1349 (Fed. 1879 Dec.2d 716. 70.

Apparatus for shaking articles in a container.4. No Claim to Orig.6. However. 2. functional language other than means clauses is unacceptable if (1) it encompasses more than what is disclosed in the specification or recited as antecedent support in the claim. [FN206] Means clauses are to be avoided when an equivalent generic word covers the same breadth as the means clause. In addition. For example. the claims do not comply with 35 U. [FN203] The claims are supposed to give fair notice to competitors of the scope of the invention. which comprises: means for isolating the container to shake the articles.6.6 Claim Deficiencies--What Not to Do *6-138 § 6.S.5 Deficient Functional Language Functional language that describes an invention by what it accomplishes rather than by a description of its structure is not objectionable per se (see section 6. A Fourier transform processor comprising incremental means for incrementally generating the Fourier transformed output signals in response to the incremental input signals." or by use of an open transition word such as "comprising.5. means for forcing the flow of air while preventing injury to the operator [where the device at question was a fan with rubber blades].3.5) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. § 112. It would be inappropriate to claim "means for supporting" to avoid recitation of the number of legs on the shaking apparatus.4. a claim that recites a single element cannot define that element using "means for" language under the rationale that such a claim covers every conceivable means for achieving a desired result without the implicit limitation imposed by the associated combination of elements. § 112.6. [FN204] Examples of improper single means claims are: *6-139 1." Similarly. the function of an element in a claim that recites a combination of elements can be recited by a means clause (see section 6.6.S. For example." © 2008 Thomson/West.5 FOR EDUCATIONAL USE ONLY How to Write Pat. ." because the generic word "base" provides an equally broad definition. Generic words are easier to understand than means clauses.5. functional language cannot be used in a limited number of situations.PLIREF-PATAPP § 6. Similarly. In a device of the class described. US Gov. [FN205] 3. means clauses cannot be used in claims that describe a single element. means clauses should not be used to avoid specifying the number of elements of a particular type.3. If they fail to do that.2).1). or (3) it lacks novelty or is obvious. However.C.5 (Cite as: PLIREF-PATAPP s 6. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Numerical limitations can be avoided by language such as "a plurality of legs. Application s 6.1.C. or (2) the function accomplished is indefinite or ambiguous.5. "means for holding" should be avoided in favor of the more generic "container.1 Meaningless Means Clauses Under 35 U. § 6. "the base" of a shaking apparatus should not be defined as "means for supporting. Works.6. October 2006 Chapter 6: Preparing the Claims § 6.1.

that is. a claim reading. 169 U. [FN214] For example.Q. The name of the ingredient is recited. *6-141 This claim was rejected because it did not name the ingredients used. 708 F. © 2008 Thomson/West.3 Nonexistent Novelty and Nonobviousness A newly discovered function of a previously known product is not patentable unless the structure of the invention is also novel and nonobvious.A 1971).P. Cir. "A woolen cloth having a tendency to wear rough rather than smooth. 439 F.5 (Cite as: PLIREF-PATAPP s 6. lacking sufficient support from the specification.5. and it was not supported by the disclosure because only a limited number of examples were disclosed.2d 210. 2.6. [FN209] For example. such as "mounted on." fails to distinguish the class. Application s 6." a more precise or more specific phrase. US Gov. in addition to its function. The breadth of the functional language is supported by disclosing numerous alternative materials that are equivalent in function. [FN212] The structure recited to support functional language should not be defined by the use of vague and indefinite phrases." or statutorily approved form such as a means clause." Other suitable alternatives that may pass muster are "configured" and "shaped.S. [FN204].5. 195 (Fed. [FN211] A claim that does not meet this standard is: • A liquefiable substance having a liquefaction temperature from between 40° C to about 300° C and being compatible with the ingredients in the powdered detergent composition. it read on materials such as low melting metals that would not work in the composition. [FN215] [FN203]. by decreasing the animal grease content and adding silk threads to support a claim to the desired result. No Claim to Orig. [FN210] The claim is overly broad because it does not limit the functional language by describing the process of manufacturing the cloth.5) Page 2 § 6.S. Works. [FN208] A claim that recites only a desired end result unattached to any mechanism that is used to achieve that result will be rejected as overly broad because it covers any conceivable means that anyone may ever discover. The function specified does not encompass materials that would not work. the breadth of the functional language must be limited by recitation of some structure or method that supports the function claimed.6.PLIREF-PATAPP § 6.6. [FN213] Although the Patent Office will frequently accept use of the word "adapted.P. an overly broad rejection can be avoided if: 1.5 FOR EDUCATIONAL USE ONLY How to Write Pat. The functional language can be limited by describing the physical structure of the cloth.2 Overly Broad Functional language that implicitly encompasses every possible device that can possibly perform the recited function is overly broad. 218 U. 226 (C. a newly discovered corrosion-resistant property of a class of alloys claimed by reciting that the class is "characterized by good corrosion resistance in hot brine." § 6. The author has had success in the Patent Office by replacing the word "adapted" by "sized.2d 712. In re Hyatt.P. For example. should be used. 1983).C. In re Swinehart.Q.6. When claiming an ingredient of a composition-of-matter or process claim by its function." claims a desired result--that the cloth does not become shiny with wear. [FN207] When an element is defined by functional *6-140 language (other than means clauses). and 3. . the phrase "adapted" for performing some function was held indefinite because it did not specify how the article was adapted to perform the specified function. when the range of compositions specified for the class includes a composition known in the prior art.6." such as "sized to fit into the aperture.

138 U.A.6.Q. 1967). Application s 6. 778 F. In re Land & Rogers.A 1971).P. See In re Fuetterer.C. No Claim to Orig.P. US Gov. App.PLIREF-PATAPP § 6.5 (Cite as: PLIREF-PATAPP s 6. Bd.6. From the August 1963 patent agent exam. 69 U. See Ex parte Slob. 227 U. 319 F.S. 54 F. Works.P. Off. 3 U. [FN208].P.S. 1963). Holland Furniture Co. 439 F. 277 U. 172 (Pat. Perkins Glue Co. v. [FN206]. 157 U.P..2d 62. 1946). 217 (C. 51 (C.P. PLIREF-PATAPP s 6.2d 866. 1929). In re Fuller. 1929).2d 135.C.2d 62.P. 621 (C. [FN207].Q.S. [FN215].S.6.Q. 35 F.5 END OF DOCUMENT © 2008 Thomson/West.Q. 245 (1928).S.A.C. In re Hutchinson.2d 775. [FN209]. [FN214].P.C.A.Q. [FN212].S.Q. of Am.P. Id. 773 (Fed. 138 (C. [FN213]. In re Fuller.S. Id. 51 (C. 3 U.S. .5 FOR EDUCATIONAL USE ONLY How to Write Pat. 151 U.5) Page 3 [FN205].Q.P.C. Cir. 1985).P. 226 (C.C. 35 F. In re Swinehart.S. Banner.P. 169 U.P.P. Titanium Metals Corp.A. 1966).A.2d 259.Q. 368 F. [FN210].2d 210.6. v. [FN211].

a claim that reads "a combination steam and dry iron comprising elements A.6 Claim Deficiencies--What Not to Do *6-142 § 6.6. and C. The claim is improper because it is not necessary to include the phrase "equivalents thereof" to describe the invention.6. equivalent outlet means are presumed under the doctrine of equivalents. US Gov. . Application s 6. PLIREF-PATAPP s 6.PLIREF-PATAPP § 6.6 FOR EDUCATIONAL USE ONLY How to Write Pat. said housing having . For example. . in the claim "a golf ball washer comprising (1) a first housing.6.6 END OF DOCUMENT © 2008 Thomson/West. No Claim to Orig.6 Surplusage Surplus or laudatory statements are not permitted in the claims. [FN216] Similarly. October 2006 Chapter 6: Preparing the Claims § 6. thus to iron clothes more effectively than heretofore" is objectionable because the italicized clause is laudatory. This is proper if a later dependent claim introduces a second housing. For example. [FN216]. .. (1) outlet means or equivalents thereof at the bottom of said tank . The claims must be limited to a technical description of the invention. B.6. Unnecessary words that do not provide any relevant information are surplus and should be removed.6 (Cite as: PLIREF-PATAPP s 6. without unnecessary laudatory statements narrating the merits of the invention.6. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Another example is: • An apparatus for converting foam to a liquid comprising a tank means to hold a quantity of liquid. a claim to "a new and novel process for rendering a structure resistant to penetration and shattering" is also improper because the phrase "new and novel" is surplus.6) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. . ." it is unnecessary to distinguish the housing by the word "first" if there is only a single housing. Works.

failing to meet the particularity and definiteness requirements of 35 U. soft. 122 U.7 FOR EDUCATIONAL USE ONLY How to Write Pat." [FN223] Similarly. US Gov. Bd. and the manufacturer of "FLEXO WAX C-LIGHT" could change the thickness at will. 40 (Pat. [FN226] [FN217]. Works. . it is strongly recommended not to use trademarks or common names used in *6-143 the trade (trade names) within a claim. [FN218] Another rejected claim read: • A floor mat comprising a supporting layer and an outer tacky layer of synthetic wax known as "Flexo Wax C-Light" having a tread surface that is tacky.7 (Cite as: PLIREF-PATAPP s 6.2d 76. change the nature of the product denoted by the trade name. Off. since the characteristics of this wax were defined in the specification. 156 F. 70 U. [FN220] Another reason to avoid the use of trade terms is to avoid limiting the life of the claim to the life of the trademarked product.S. 1938). 21.P." was allowed because the specification recited a method for preparing "NAVILLITE. § 112 does not prohibit the use of trademarks in a claim. Off. If the trademarked material becomes unavailable. A patent reciting trade terms in a claim remains operative and useful only as long as the trademarked material is available in the market." [FN221] *6-144 Although use of trade terms is not recommended.6. [FN219]. [FN222] Thus. 42 U.6.A. Ex parte Bolton. October 2006 Chapter 6: Preparing the Claims § 6.Q. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.6. because the manufacturer of "FORMICA" could. Comm'r Pat.S. trade terms may be used in claims if the examiner finds that the meaning of the trade term is sufficiently defined in the specification to impart a specific limitation to the claim.Q. the patent disclosure is no longer "enabling. 212 (C. at its discretion. because the product described by the trade term may be changed at any time at the discretion of its manufacturer.C.Q. said tread surface acting to remove particles of dirt and dust from the sole of a contacting shoe.7) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.6 Claim Deficiencies--What Not to Do *6-142 § 6. the trade name "STANOLINO" was allowed in a claim. © 2008 Thomson/West. 27 (Pat. . Bd. a claim that specified an ingredient by its trade term. rough.S.P. . [FN217] Thus.S.7 Tainted Trademarks Although the literal language of 35 U. [FN225] Every effort should be made to provide greater information about the product by (1) stating a common or generic name for the product and (2) using language of the form "a product X (a descriptive name) sold under the trademark Y" to describe the trademark in the specification.6. Trade terms are generally considered indefinite. [FN224] If a trademark is used in the claims. App. Ex parte Bickell.P. [FN219] This claim was rejected as vague and indefinite because the thickness of the outer tacky layer was essential to the invention.C.C.P.S. 1959 Dec. and adhesive. § 112. No Claim to Orig. in Ex parte Canter. "NAVILLITE. App. 1946). In re Dense.PLIREF-PATAPP § 6. the Patent Office rejected a claim for the use of "FORMICA" as a substitute for wood in wooden separators. it should be capitalized. Application s 6. 1957). . [FN218].

[FN224].6.P. 1945). [FN221].P.7 END OF DOCUMENT © 2008 Thomson/West.PLIREF-PATAPP § 6.P. § 608. Ex parte Canter. Butler. OFF. App.6. 71 U. Works. Ex parte Stephens.P.01(v). [FN223]. SOC'Y 339 (1969). 304 (Pat.P. . § 608.6. If the product cannot be otherwise defined. 51 J. App. Rules Defining the Use of Trade Terms in Patent Applications. [FN222]. Application s 6.7 (Cite as: PLIREF-PATAPP s 6.7) Page 2 [FN220].P. Bd.S. Id. US Gov. 372 (Pat. [FN225]. 1946). M. [FN226].S.01(v). the applicant can amend the patent application by providing the composition or the method of making the trademarked material. PLIREF-PATAPP s 6. PAT. No Claim to Orig. Bd. Id. Off.7 FOR EDUCATIONAL USE ONLY How to Write Pat. M.E.Q.6.E. 70 U.Q. Off. and the composition or process of making the trademarked material is known at the time of filing the patent application.

Id.8 Incomplete Claims A claim is incomplete if it omits essential elements or steps or fails to define necessary cooperation between elements. 35 U. No Claim to Orig. .P. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Works.S.6.C.6.PLIREF-PATAPP § 6. A rejection is less likely if the claim is incomplete with respect to nonessential elements.8 (Cite as: PLIREF-PATAPP s 6.P. October 2006 Chapter 6: Preparing the Claims § 6. § 2172. US Gov.8 END OF DOCUMENT © 2008 Thomson/West. [FN228] However. § 112 requires the claims to specify what the applicant claims as the invention and not what the examiner believes the invention to be.8 FOR EDUCATIONAL USE ONLY How to Write Pat. Thus. Application s 6.6 Claim Deficiencies--What Not to Do *6-144 § 6.E. [FN228].6.6. [FN227].8) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.01. [FN227] A claim that is incomplete with respect to elements that are essential to the novelty or utility of the invention will be rejected.6. unnecessary limitations *6-145 should not be added to a claim merely because the examiner believes the claim is incomplete. PLIREF-PATAPP s 6. M.

[FN229] For example. rather than by specifying what it is. This is a broad statement of something to avoid rather than a statement defining structure. a claim to a method of making a vaccine by growing a certain virus in an artificial tissue culture.6 Claim Deficiencies--What Not to Do *6-145 § 6. In certain situations. Similarly.9) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. [FN231] A negative limitation is rejected only if it is indefinite [FN232] or unduly broad. [FN240] Negative limitations also provide a useful method for avoiding the limiting breadth of closed transition words like "consisting. US Gov.9 Negative Limitations A negative limitation is a statement that describes an element by specifying what it is not. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. if it is nonobvious to eliminate the element D from a prior art combination comprising A + B + C + D. "devoid of avian tissue. a negative limitation claim could read "comprising A plus B plus C and absent suffi- © 2008 Thomson/West. a claim to a method "without using external attenuation" was rejected as indefinite. Works." [FN235] and "nonalcoholic.6. a claim cannot merely recite that a space is unobstructed. negative limitations that were used to exclude an element that would otherwise anticipate or render the claim obvious from prior art were rejected. In the past." "nonpoisonous. For example.9 FOR EDUCATIONAL USE ONLY How to Write Pat. No Claim to Orig.6. [FN238] a negative limitation that read "absent sufficient CN [cyanide] ions to prevent decomposition . Application s 6. the same claim was accepted when modified to read. as in "noncircular." [FN230] Of course." [FN236] These forms of negative limitation are allowed because there is no antonym or positive language that is capable of expressing the same concepts with equivalent clarity and precision. . in In re Duva. [FN234] Negative limitations are unavoidable in situations where they constitute the only practical way of stating a concept. Similarly. negative limitations can be allowed even if positive language providing an equivalent description is available. negative limitations are not prohibited per se." "colorless. the applicant could have achieved the same result without any problem by using a Markush group or a series of Markush groups that positively specified the members of the group. ." as sufficiently definite. . *6-146 "without using hot gas blast attenuation." was held proper as sufficiently particular and definite.9 (Cite as: PLIREF-PATAPP s 6. However." "nonmagnetic. October 2006 Chapter 6: Preparing the Claims § 6. [FN233] For example.PLIREF-PATAPP § 6. the claim reading: "chosen from a group in the periodic system separated from the group containing silver by at least three other groups and excepting nickel. a claim drafted to exclude anticipation by a prior art reference that used nickel was invalidated. [FN239] Duva also established that a negative limitation even at the "point of novelty" of the invention can be proper.6.6." was held proper even though a positive expression could have been used." For example. Currently. [FN237] Holes and apertures can also be claimed by negative limitations.

PLIREF-PATAPP § 6. 1963).C. 318 F. [FN233]. 1967). 1983). Corp. 1953).S. Langdon.6. In re Bankowski.9 FOR EDUCATIONAL USE ONLY How to Write Pat. Guardian Indus. Id.A.2d 402. [FN240]. [FN232]. only the prior claim would cover the combination A + B + C + E. [FN238].A. [FN229]. Duva. app.S. In re Duva. 90 (C." Although the claim could be drafted as "consisting of A + B + C.P. dismissed.Q.P. [FN230].C.2d 871 (Fed.P.2d at 404.Q. 77 F. Cir. 835 F.9 END OF DOCUMENT © 2008 Thomson/West. 205 F. 783.P. [FN234].9) Page 2 cient D to .2d at 921. . 77 F.S. 138 U.2d 778. 1034 (E. 318 F. 75 (C.P.A. 415 (C. aff'd.. . [FN237].S. 1935). [FN235].2d 178 (Fed. at 407-08. 25 U. 1987). v.C.Q. 387 F. [FN236]. 770 F. 75 (C.C.2d 778. US Gov. PLIREF-PATAPP s 6.Q.P.P.C." which *6-147 would exclude D. See Johns-Manville Corp.6. Id. .S.A. Supp. Works. Mich.6. 156 U. In re Langdon.P. In re Bankowski. No Claim to Orig. Id. Cir. Id.9 (Cite as: PLIREF-PATAPP s 6. In re Schechter.D. 1985). 98 U. 138 U.6. 387 F. 144 (C.P.2d 185. [FN239].A. [FN231].2d 920.Q. Application s 6.P. 586 F. 1963).

v. Cir. EMI Group N.C.S.6.10 (Cite as: PLIREF-PATAPP s 6.C. [FN241] Therefore. US Gov. 35 U..S. requires that the invention to be useful. when a claim merely reads on an inoperable embodiment.10) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Works. 60 U.S.6.10 FOR EDUCATIONAL USE ONLY How to Write Pat. such a claim would not be allowable. Am. 2001). 20 U.6 Claim Deficiencies--What Not to Do *6-147 § 6. Cypress Semiconductor Corp. Inc.2d 488. 947 F. Cir. [FN241]. No Claim to Orig. Application s 6. 1991). for that claim to be allowable the embodiment described within the claim must show utility. then the claimed invention has no utility and the claimed invention is not enabled.6.Q.P.P. that is. Moreover. Therefore. In re Vaeck.10 END OF DOCUMENT © 2008 Thomson/West. § 112 requires that the invention be enabled.6. Because each claim identifies an embodiment of the invention. .S. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.10 Nonexistent Operability Section 101 of title 35 of the U. October 2006 Chapter 6: Preparing the Claims § 6.2d 1438 (Fed.PLIREF-PATAPP § 6.2d 1423 (Fed.Q. PLIREF-PATAPP s 6.6.. such that one skilled in the art would be able to practice the invention without undue experimentation.

Application s 6.7) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. US Gov. No Claim to Orig. Works.7 (Cite as: PLIREF-PATAPP s 6. PLIREF-PATAPP s 6. October 2006 Chapter 6: Preparing the Claims *6-147 § 6.7 How to Write Pat.PLIREF-PATAPP § 6. it is recommended that the checklist of Exhibit 6-13 be used to verify the form of the claims and avoid any claim deficiencies. Exhibits 6-14 and 6-15 provide examples of what not to do when writing claims.7 END OF DOCUMENT © 2008 Thomson/West. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. .7 Checklist of Claim Deficiencies After the claims have been prepared.

No Claim to Orig. 6-1(a) (Publication page references are not available for this document.PLIREF-PATAPP 6 Exh. and (d) means for oscillating the container on the legs to shake the articles. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. . Apparatus for shaking articles. Drawings of the shaking apparatus are depicted in Exhibit 6-10. Application 6 Exh. (b) a base. PLIREF-PATAPP 6 Exh. 6-1(a) FOR EDUCATIONAL USE ONLY How to Write Pat.) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. 6-1(A) END OF DOCUMENT © 2008 Thomson/West. December 2001 Chapter 6: Preparing the Claims Exhibits 6-10 and 6-12 [FNa1] (a) (Preamble) (Transition) (Body) What is claimed is: 1. US Gov. (c) a plurality of parallel legs. each leg being con nected pivotally at one end to the container and at the other end to the base to support the container for oscillating movement with respect to the base. [FNa1]. the apparatus comprising: (a) a container for the articles. Works. A corresponding picture claim appears in Exhibit 6-11.

December 2001 Chapter 6: Preparing the Claims [FNaa1] (b) (Preamble) (Transition) (Body) What is claimed is: 1. which comprises: (a) a turntable on which the barrel is mounted for rotation therewith. No Claim to Orig. (c) rotating means for rotating the turntable so that the point of collection of the strand varies cir cularly with respect to the bottom of the barrel. 6-1(b) FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh.PLIREF-PATAPP 6 Exh. Apparatus for collecting an advancing strand in a barrel. [FNaa1]. 6-1(b) (Publication page references are not available for this document. PLIREF-PATAPP 6 Exh. 6-1(B) END OF DOCUMENT © 2008 Thomson/West. Corresponding Jepson claim appears in Exhibit 6-5. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9.) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. . US Gov. Works. and (d) reciprocating means for reciprocating the guide so that the point of collection varies radially with respect to the bottom of the barrel. (b) a strand guide positioned above the barrel for guiding the advancing strand into the barrel.

Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. 6-2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 6 Exh. No Claim to Orig. Works. December 2001 Chapter 6: Preparing the Claims *6EX-3 Exhibit 6-2: Proper and Improper Cooperation Among Elements of a Claim (a) Proper Cooperation TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE (b) Improper Cooperation TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE END OF DOCUMENT © 2008 Thomson/West.PLIREF-PATAPP 6 Exh. 6-2 (Cite as: PLIREF-PATAPP 6 Exh. 6-2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. US Gov. .

No Claim to Orig. 6-3 (Cite as: PLIREF-PATAPP 6 Exh. 6-3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. 6-3 FOR EDUCATIONAL USE ONLY How to Write Pat. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. Application 6 Exh. US Gov. December 2001 Chapter 6: Preparing the Claims *6EX-5 Exhibit 6-3: Dependent Claim Sequences (a) Proper Form TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE (b) Proper Form TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE (c) Sequential Clusters Improper Form TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE (d) Sequential Clusters (Proper Form) TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 6 Exh. .PLIREF-PATAPP 6 Exh. Works. 6-3 END OF DOCUMENT © 2008 Thomson/West.

further comprising.... The widget of claim 1 further comprising.. The widget of claim 2. The widget of either claims 3 or 4.. 3. PROPER IMPROPER PROPER PROPER 4.. 5. 6-4 END OF DOCUMENT © 2008 Thomson/West.... December 2001 Chapter 6: Preparing the Claims *6EX-7 Exhibit 6-4: Improper Multiple Dependent Claim Sequence 1. wherein. 6.. US Gov. Application 6 Exh. 7. No Claim to Orig. 6-4 (Cite as: PLIREF-PATAPP 6 Exh. . The widget according to either of claims 2 or 3. Works. wherein. The widget according to claim 3.. wherein. PLIREF-PATAPP 6 Exh. 2. The widget of claim 4..PLIREF-PATAPP 6 Exh. A widget. comprising. 6-4 FOR EDUCATIONAL USE ONLY How to Write Pat. wherein... 6-4) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9.

In a strand-collecting apparatus of the type in which an advancing strand is collected in a barrel mounted on a rotating turntable. 6-5 FOR EDUCATIONAL USE ONLY How to Write Pat. PLIREF-PATAPP 6 Exh. Corresponds to claim of Exhibit 6-1(b). for accumulating the strand after it has been severed. 6-5 (Publication page references are not available for this document. b) a cutter. and c) an accumulator. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. Works. December 2001 Chapter 6: Preparing the Claims [FNa1] 1. . operated by the detecting means. for severing the strand when a predetermined amount has been collected. operated by the detecting means.) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.PLIREF-PATAPP 6 Exh. Application 6 Exh. No Claim to Orig. [FNa1]. US Gov. 6-5 END OF DOCUMENT © 2008 Thomson/West. the improvement comprising: a) means for detecting when a predetermined amount of strand has been collected in the barrel. and in which a reciprocating strand is positioned above the barrel to guide the advancing strand into the barrel.

December 2001 Chapter 6: Preparing the Claims [FNa1] 1. Application 6 Exh. 6-6 END OF DOCUMENT © 2008 Thomson/West. Corresponds to claim of Exhibit 6-1(b). Works.PLIREF-PATAPP 6 Exh. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9.) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. 6-6 (Publication page references are not available for this document. In a method for collecting an advancing strand in a barrel. 6-6 FOR EDUCATIONAL USE ONLY How to Write Pat. the improvement comprising: reciprocating the guide back and forth above the barrel so that the point of collection varies radially with respect to the bottom of the barrel. PLIREF-PATAPP 6 Exh. US Gov. No Claim to Orig. [FNa1]. . of the type wherein the advancing strand is guided into the barrel and the barrel is rotated to the point of collection circularly with respect to the bottom of the barrel.

PLIREF-PATAPP 6 Exh. wherein the improvement comprises: 0. December 2001 Chapter 6: Preparing the Claims *6EX-13 Exhibit 6-7: Jepson Composition-of Matter Claim 2.5 to three times the zinc acetate concentration.5 to 1 gram per liter of boric acid.5. 6-7) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. US Gov. an alkaline pH modifying substance in an amount sufficient to adjust the pH to a value of from 4 to 5. An improved zinc-electroplating solution of the type containing an equal solution of zinc acetate. 6-7 (Cite as: PLIREF-PATAPP 6 Exh. 6-7 END OF DOCUMENT © 2008 Thomson/West. Works. Application 6 Exh. from 30 to 90 grams per liter. . Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. boric acid. 6-7 FOR EDUCATIONAL USE ONLY How to Write Pat. from 1. No Claim to Orig. PLIREF-PATAPP 6 Exh.

6-8 (Cite as: PLIREF-PATAPP 6 Exh. US Gov. . 6-8 FOR EDUCATIONAL USE ONLY How to Write Pat. December 2001 Chapter 6: Preparing the Claims *6EX-15 Exhibit 6-8: Markush Claim 1. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. 6-8) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. and (2) X is a halogen selected from the group consisting of chlorine and fluorine.PLIREF-PATAPP 6 Exh. ethyl and isopropyl. PLIREF-PATAPP 6 Exh. A compound having the formula: R-CH=N-S-X. Works. wherein: (1) R is an alkyl group selected from the group consisting of methyl. No Claim to Orig. Application 6 Exh. 6-8 END OF DOCUMENT © 2008 Thomson/West.

No Claim to Orig. US Gov. 6-9 (Cite as: PLIREF-PATAPP 6 Exh. . PLIREF-PATAPP 6 Exh. 6-9 END OF DOCUMENT © 2008 Thomson/West.PLIREF-PATAPP 6 Exh. 6-9) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Works. Application 6 Exh. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. 6-9 FOR EDUCATIONAL USE ONLY How to Write Pat. b) a coating of carbon deposited on the core by decomposition of a hydrocarbon gas in the presence of the core [process]. December 2001 Chapter 6: Preparing the Claims *6EX-17 Exhibit 6-9: Product-by-Process Claim 1. A resistor [product] which comprises: a) a ceramic core.

Works. 6-10) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Application 6 Exh.PLIREF-PATAPP 6 Exh. December 2001 Chapter 6: Preparing the Claims *6EX-19 Exhibit 6-10: Drawings of Shaking Apparatus TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 6 Exh. 6-10 (Cite as: PLIREF-PATAPP 6 Exh. 6-10 END OF DOCUMENT © 2008 Thomson/West. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. US Gov. No Claim to Orig. 6-10 FOR EDUCATIONAL USE ONLY How to Write Pat. .

An apparatus for shaking articles to dislodge impurities. f) a rubber ring enclosing the metal cam. e) a rotary metal cam driven by the motor.) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. c) four parallel legs connected to the receptacle and the base by rotating pivotal members to allow the container to oscillate with respect to the base. December 2001 Chapter 6: Preparing the Claims Exhibits 6-10 and 6-12 [FNa1] 1. to permit oscillation of the container on the legs. US Gov. 6-11 END OF DOCUMENT © 2008 Thomson/West. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. Corresponding broad claim appears in Exhibit 6-1(a). 6-11 FOR EDUCATIONAL USE ONLY How to Write Pat. b) a rectangular metal platform that functions as a base. to limit surface wear. h) a link pivoted at one end to the cam follower and at its other end to the receptacle. [FNa1]. and j) a supporting member connected at one end to the base. d) an electrical motor attached to the base with its shaft perpendicular to the plane of the base. the supporting member maintaining the cam follower in engagement with the receptacle. No Claim to Orig. the apparatus consisting of: a) a hollow rectangular box that functions as a receptacle for the articles to be shaken. g) a cam follower engaging the cam.PLIREF-PATAPP 6 Exh. PLIREF-PATAPP 6 Exh. 6-11 (Publication page references are not available for this document. . i) a brass spring wrapped around the axis of the cam follower to oscillate such that the cam follower continuously engages the cam. Application 6 Exh. Works.

6-12 FOR EDUCATIONAL USE ONLY How to Write Pat. . December 2001 Chapter 6: Preparing the Claims Exhibit 6-1(a) TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 6 Exh.) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.PLIREF-PATAPP 6 Exh. Works. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. No Claim to Orig. 6-12 END OF DOCUMENT © 2008 Thomson/West. 6-12 (Publication page references are not available for this document. Application 6 Exh. US Gov.

4.PLIREF-PATAPP 6 Exh.5. US Gov.5.1) [ ] Are there indefinite references to antecedent elements (pronoun problems)? (§ 6.2) [ ] Is surplusage used? (§ 6.6.6.4) [ ] Is the claim definite? (§ 6.1.6) [ ] Are trademarks used? (§ 6.5) [ ] Is there a single means clause? (§ 6.2) [ ] in the drawings? (§ 6.6.4) [ ] Are words of degree and relation terms definite? (§ 6.1) [ ] in the specification? (§ 6.4.6.3. December 2001 Chapter 6: Preparing the Claims *6EX-25 Exhibit 6-13: Checklist of Possible Claim Deficiencies [References are to sections of this chapter.3) [ ] Is functional language properly used? (§ 6.5.6.3) [ ] Are the steps of a process in a proper order? (§ 6.6.6.3.3.3) [ ] in the claim? (§ 6.6.3.3.9) © 2008 Thomson/West. 6-13) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.2) [ ] Omnibus claim? (§ 6.6.2) [ ] Are elements recited in single clauses? (§ 6.1) [ ] Is claim a single sentence with a period? (§ 6.1) [ ] Unnecessary referrals to drawings? (§ 6.2) [ ] Are improper alternative expressions used? (?§ 6.3.5.2) [ ] Is cooperation between elements specified? (§ 6.8) [ ] Are negative limitations used? (§ 6.6. .6.2.2) [ ] Is there antecedent/support for each element: (§ 6.3.4.6.] [ ] Is the claim statutory? (§ 6.5. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9.5.6. 6-13 (Cite as: PLIREF-PATAPP 6 Exh.3) [ ] Is the relationship between elements defined? (§ 6. Application 6 Exh.2. 6-13 FOR EDUCATIONAL USE ONLY How to Write Pat.6. Works.6.1) [ ] Is functional language overly broad? (§ 6.7) [ ] Is the claim complete? (§ 6.1) [ ] Is correct verb form used? (§ 6.6.3.6.3) [ ] Is terminology consistent? (§ 6. No Claim to Orig.

6. 6. 6.3) [ ] Is the claimed subject matter nonobvious? (§§ 6. 6-13 FOR EDUCATIONAL USE ONLY How to Write Pat.5. Application 6 Exh. 6. Works.3. 6-13 END OF DOCUMENT © 2008 Thomson/West.4.5. . No Claim to Orig.6. 6-13 (Cite as: PLIREF-PATAPP 6 Exh.2.2.PLIREF-PATAPP 6 Exh.2. US Gov. 6.4.5.2.3. 6-13) Page 2 [ ] Is the claim subject matter novel over the prior art? (§§ 6.5.3) PLIREF-PATAPP 6 Exh.

6 is a view in perspective of the pivoted latch or retaining cover of the brush seat. Fig. 1 showing. of combined rotary and reciprocating agitating means. in a motor driven suction cleaner. 2 is a section upon the line 2-2 of Fig. In the drawing in which a preferred embodiment of the present invention is disclosed: Fig. of the combination of a rotary agitator. 6-14) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Still another object is the provision of a suction cleaner in which rotary agitating means are provided in the suction cleaner nozzle from which a reciprocating brush is driven. in a suction cleaner. A still further object is the provision. . Fig. Application 6 Exh. Fig. It is an object of the present invention to provide a new and improved suction cleaner. 1 discloses a side view of a modern suction cleaner.PLIREF-PATAPP 6 Exh. with a reciprocating brush whose direction of movement is parallel to the axis of the rotary agitator. *6EX-29 Fig. in dotted lines. A still further object is the provision. It is a further object to provide new and improved surface-agitating means in a motor-driven suction cleaner. with certain parts broken away. 5 is a partial view in perspective of the agitator-supporting frame showing the reciprocating brush set. 6-14 (Cite as: PLIREF-PATAPP 6 Exh. 7 is a view in perspective of the pivoted brush supporting frame. which is interiorly connected to the nozzle 1 by means of the air © 2008 Thomson/West. These and other objects will appear upon reading the following specification and claims and upon considering in connection therewith the attached drawing to which they relate. No Claim to Orig. with the present invention embodied therein. a fan chamber 2. Fig. December 2001 Chapter 6: Preparing the Claims *6EX-27 Exhibit 6-14: Example of Poor Claim Drafting TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE *6EX-28 Specification The present invention relates to suction cleaners and particularly to new and improved agitating means in suction cleaners. Fig. in a suction cleaner. embodying both positive beating and brushing means. and a horizontally reciprocating agitator comprising a brush. 3 is an enlarged section through the cleaner similar to that shown in Fig. Works. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. More specifically the invention comprises the provision. 6-14 FOR EDUCATIONAL USE ONLY How to Write Pat. US Gov. 4 is a view in perspective of a reciprocating brush element. the supporting frame of the rotary and reciprocating agitators pivoted downwardly from the nozzle mouth. 1. The present invention is disclosed embodied in a modern suction cleaner which comprises a main casting or casing including a nozzle 1. of a rotary agitator embodying positive agitating means and brushing means.

with the exception of a small central portion which is reduced in diameter to form a pulley 15. which extends through the agitator with each of its ends resting in a seat 20 in the side member 19 of the frame 18. with the result that upon the rotation of that body the brush 26 will be reciprocated back and forth as the roller *6EX-31 28 if moved by the cam. each of which extends parallel to the axis of the rotary agitator and has a length substantially equal to half the length of the agitator. with an upstanding lug 27 on which is mounted a roller or head 28 of such size that with the brush seated upon the front lip 24 the roller 28 extends within the adjacent cam race 22 in the cylindrical body 13 of the rotary agitator. however. This cross member 24 slopes downwardly from the lower end of the front wall of the nozzle 1 and forms the front lip of the nozzle thereby cooperating with the rear nozzle lip 23 in defining the nozzle mouth. but the shaft 7 of which extends downwardly through the fan chamber 2 where the fan 3 is mounted thereon. thereby permitting the brush a limited range of movement transversely of the agitator mouth. being secured thereto. These cam races are designated by the reference characters 22. rotatably supports the agitator. Upon the surface body 13 of the agitator. by ordinary and suitable means which form no part of the present invention. Application 6 Exh. A shaft 17. US Gov. differs from the usual nozzle lip through being provided with two transversely-extending openings or apertures 25. No Claim to Orig. 6-14 FOR EDUCATIONAL USE ONLY How to Write Pat. that is. 19 of the frame 18. 6-14 (Cite as: PLIREF-PATAPP 6 Exh. 22 and have a function which will be apparent from the following description. in its general appearance. Works. of which one is shown resting upon a supporting surface being indicated by reference character 10. To insure the permanent positioning and the correct alignment of each brush 26 with the aperture 25. as at 31. The length of each brush element 26 is slightly less than the length of the aperture 25 in the nozzle lip 24 through which the bristles extend. 26 is provided at its inner end. The cover member 29 is adapted to closely enclose the sides and top of the brush 26 to hold it in contact with the upper surface of the lip 24. differs but slightly from a common and well known type. and is adapted to resiliently clamp the forward edge of the cover which extends against it in the closed position. The shaft 7 extends into the rear end of the air passageway 3 where it carries a suitable pulley 9. Between the side members 19. © 2008 Thomson/West. .PLIREF-PATAPP 6 Exh. 6-14) Page 2 passageway 3. This agitator comprises a large diameter cylindrical body 13 on the surface of which are mounted helically-extending rigid beater elements 14. and holding the frame 18 within the nozzle. and an exhaust outlet 4 to which is detachably connected a dust bag 5. which is not shown. which is connected to the driving pulley 9 on the motor shaft 7 by a suitable belt 21. The lip 24. are encircling cam races positioned below *6EX-30 the periphery of the body. 26 which comprise rigid backs having the flexible brush bristles mounted therein. Carried by the cylindrical body 13 of the agitator and seated within the periphery thereof are longitudinally-extending brushes 16. 25. each brush element 26. and by means of a rear wheel 11. 26 in order to obtain the maximum agitation of the surface covering undergoing cleaning. a pivoted cover element 29 is provided which is pivotally mounted upon a pin 30 carried by the side of the transverse member or lip 24. is a front cross member 24 which extends closely adjacent and parallel to the front wall of the nozzle 1. Seated upon the lip 24 with their bristles projecting downwardly through the apertures 25. A motor casing 6 is positioned upon the main casing immediately above the fan chamber 2 and houses a suitable driving motor. Within the nozzle 1 of the cleaner and extending thereacross is a rotary agitator which. parallel to the longitudinal axis of the agitator itself. 25 are brush elements 26. 14 which extend substantially the length of the agitator. The cleaner is movably supported by means of front wheels. A pivoted handle 12 is mounted on the casing of the cleaner and provides means by which the operator can propel the machine over the surface covering undergoing cleaning. which is pivoted within the nozzle 1 at a point somewhat in the rear of the rear nozzle lip 23. immediately adjacent the sides of the pulley 15. 16 which are of a common and well-known type and which are removably secured in their seats in any suitable manner. relative to which it must slide. To prevent the unintentional displacement of the cover relative to the lip the forward edge of the lip is curved upwardly. To make use of this permissible movement of the brushes 26.

As the agitator is revolved the brushes 26. A suction cleaner according to claims 1 or 2. 14 upon the agitator function to violently vibrate the surface covering to dislodge the embedded foreign matter which is positioned therein. © 2008 Thomson/West. Although a "suction cleaner" is claimed. through extending below the nozzle lip. it is only necessary to pivot the supporting frame 18 downwardly to the position shown in dotted lines in Figure 3. and an additional brush agitator mounted to reciprocate relative to the surface being cleaned. a single brush agitator mounted on said other lip and extending across the full width of said nozzle. 6-14 FOR EDUCATIONAL USE ONLY How to Write Pat. 14 and the brush elements 16. The longitudinally-extending brushes 16. a supporting frame for the agitator pivotally mounted adjacent said lip. *6EX-33 SUCTION CLEANER CLAIMS What is claimed is: 1. the nozzle. Said nozzle being further provided with a rear lip.3. in which the nozzle has mounted therein forward of the rotary agitator two reciprocating agitators having brush elements made of nylon to ensure long wear. a flexible agitator roll mounted in said nozzle. adapted to reciprocate upon rotation of said rotary agitator drive means for said reciprocating agitator including a cam race. the same operation is necessary to release the other element. The beating elements 14. With the rotary agitator removed it is then possible to pivot each brush-holding cover 29 on its supporting pin 30. US Gov. The suction cleaner of this invention includes a motor. *6EX-32 To effect the removal of the agitators constructed in accordance with the present invention from the nozzle. 6-14 (Cite as: PLIREF-PATAPP 6 Exh. the latter carried by the motor shaft. With the frame so positioned the rotary agitator may be lifted therefrom. a recess 32 being conveniently provided in the forward edge of the nozzle lip into which an instrument such as a screwdriver may be inserted to wedge the cover free from the retaining forward edge of the lip. See § 6. there being two brush elements. 26.2. No Claim to Orig. 16 upon the agitator surface cooperate with the rigid beating elements 14. are reciprocated transversely or parallel to the longitudinal axis of the rotating agitator and. Claim 1 also lacks cooperation between elements to make the complete combination stated in the preamble. With the surface covering suspended against the nozzle lips the rotary agitator is rotated at high speed by the driving belt 21 which is connected. which are carried by the front nozzle lip 24 of the cleaner. and drive means connecting said motor and agitator to cause it to rotate. the supporting shaft sliding outwardly from its open-ended seat 20 in each end plate 19 of the frame. on said rotary agitator. . 14 and assist in the removal of the light dirt. Works. a single brush element extending across the full width of the nozzle may be used instead of two brush elements. formed on the front portion of the body having a lip. bend and agitate the pile of that covering in a direction as right angles to the direction of vibration and bending effected by the beating elements 14. covering undergoing cleaning against the nozzle lips. the suction-creating fan within the fan chamber is rotated by the driving motor resulting in a decrease in the pressure existing within the nozzle thereby effecting the lifting of the surface. If desired. 2. 6-14) Page 3 In the operation of a suction cleaner constructed in accordance with the present invention. A suction cleaner comprising a body supported by wheels. a rotary agitator. a drive motor mounted on said body forward of the rear pair of wheels. as is clearly indicated in Figure 1. Application 6 Exh. Is improperly composed of two sentences. between the pulleys 15 and 9. nothing is recited in the claim to produce suction. With the cover pivoted back it is then possible to remove the brush 26 by merely lifting it from the lip and withdrawing the bristles through the aperture 25 through which they were extended.PLIREF-PATAPP 6 Exh. 16 carried by the rotary agitator. contact the surface covering which is positioned adjacent thereto and function to deflect. as aforedescribed. 3. a suction creating means. CRITICISM OF SUCTION CLEANER CLAIMS Claim 1.

3. "[O]r 2" is improper recitation of a multi-dependent claim. so that it would be improper to add two more.3.2. The same could be said of "to ensure long wear" in claim 8.3." The verb should read "including" rather than "includes. Every feature of the invention specified in the claims must be shown in the drawings. "Said lip" is indefinite because two different lips have previously been recited. as "adapted to" phrases are used fairly often in practice." although the latter is much more common. The specification discloses "a rear wheel *6EX-34 11. "an additional brush agitator" is already an element of the parent claim.6. Also. See § 6." The "adapted to" phrase attempts to imply the mounting of the brush element (26) and its driving connection to the rotary agitator (13.) This may be a debatable point.6. A dependent claim may not add statements inconsistent with the structure of the parent claim. See § 6." This should read "a nozzle.. and is almost conventional for mechanical cases.1. © 2008 Thomson/West.6.1. Works.3..1. There is no antecedent in the claim for the "rear pair" of wheels.. "adapted to reciprocate . since the race can be considered a structural unit including the walls of the groove. See § 6. See § 6.4." See § 6. There is nothing *6EX-35 wrong with the transitional phrase "including" rather than "comprising. apparently as new elements. 6-14 (Cite as: PLIREF-PATAPP 6 Exh. "A single brush agitator" is not illustrated in the drawings. No Claim to Orig. There is nothing wrong with claiming a cam race when two are shown. See § 6. which actually do the guiding. "A cam race" is acceptable. 6-14 FOR EDUCATIONAL USE ONLY How to Write Pat. Line 2 and 3.3.3. Line 3. Line 1. "[O]f this invention" is surplusage. See § 6. Line 8. The use of "said" throughout the claim is disfavored as being overly legalistic.6. the specific example(s) disclosed.6.3." The claim must form a complete sentence. There is no connection or cooperation whatever between the elements. Line 11 and 12. Line 4.2. There is no support in the disclosure for the rear "pair" of wheels. Watch over little things like capital letters. the recitation of two agitators is inconsistent with "a single brush agitator" in the parent claim. and verb tenses. The agitator 14 is shown as a solid member. There is no support in the disclosure for a "flexible" agitator roll. 6-14) Page 4 Line 2. The claim has previously stated only that there are wheels. Application 6 Exh.6. See § 6. "[T]wo reciprocating agitators" is improper.5.6.1. Line 8." "Which includes" would be a satisfactory alternative." A claim may not be contrary to. This would be double inclusion of elements. Uses the wrong verb form "includes. See § 6. .2. See § 6. punctuation... Claim 3. as well as other elements. The drive means does include a cam race (22).6. Line 1.1. being the direct object of the (understood) phrase "What is claimed is . Claim 2 is directed to a catalog of elements. this is not an attempt to claim "a hole" positively.5.3. In general. periods.4.2. US Gov. Line 2. There is no antecedent in the claim for "the nozzle." may be considered by the Patent Office to be improper "functional language without supporting structure. See § 6.PLIREF-PATAPP 6 Exh. Line 10. Claim 2.1. If claim 3 is the parent claim. if the invention can work with one.3. If this claim is dependent from claim 1. or inconsistent with.3.6.6. See § 6.

6-14 END OF DOCUMENT © 2008 Thomson/West. No Claim to Orig. US Gov. 6-14) Page 5 Line 4. See § 6. Works. PLIREF-PATAPP 6 Exh. 6-14 FOR EDUCATIONAL USE ONLY How to Write Pat.PLIREF-PATAPP 6 Exh.2. 6-14 (Cite as: PLIREF-PATAPP 6 Exh.3.6. Application 6 Exh. ." The specification does not state of what material the brushes are made. There is no support in the disclosure for "nylon.

Works. The chambers are formed between the wall of the combination water and steam chamber 6 and the outside casing 14 of the iron. The operation © 2008 Thomson/West. The front steam chamber 12 may encircle the forward part of the iron and back along the sides of the iron as far as desired. However. The front ports 10 lead to the forward steam chamber 12 while the rear ports 11 connect with the rear steam chamber 13. The water chamber of the steam iron is indicated as 6 and the upper section of the chamber becomes a steam dome when the water is heated sufficiently by electrical element 7. In figure 3 front valve 15 is closed while rear valve 16 is open which would be their relative positions when the iron is being moved backward. US Gov. 6-15 FOR EDUCATIONAL USE ONLY How to Write Pat. However. Application 6 Exh. 6-15 (Cite as: PLIREF-PATAPP 6 Exh. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. Similarly the back steam chamber 13 may extend across the back as shown and also extend back along the sides of the iron as desired. in areas of the side walls beyond the limits of front steam chamber 12 and rear steam chamber 13 the casing 14 and wall 6 of the combined steam *6EX-39 and waterchamber are contiguous as seen as in Figures 2 and 5 of the accompanying drawing. In Figure 4 valve 15 is open and 16 is closed which would be their relative positions when the iron is being moved forward. he may shut off the supply of steam and use the device of this invention as a dry iron.PLIREF-PATAPP 6 Exh. December 2001 Chapter 6: Preparing the Claims *6EX-37 Exhibit 6-15: Example of Poor Claim Drafting TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE *6EX-38 Excerpts from Specification The feature of this invention is the supplying of steam to the article being ironed in advance of. No Claim to Orig. In Figure 1 the two steam valves 15 and 16 are shown in closed positions. The operation of the means for controlling the supply of steam is simple and coincides with the normal movement by hand of any iron over an article to be ironed. The heating element is encased in the bottom of the iron by a flat ironing surface 8 and connection between usual electric cords and the heating element 7 is made by wiring not shown to the electrical terminals 9. in order to accomplish one of the features of the iron of this invention the front and rear steam chambers cannot be connected. A steam valve 15 controls the passage of steam from the steam and water chamber 6 to the front steam chamber 12 and a similar valve 16 controls passage of steam into the rear chamber 13. . and while moving the iron across the article whether in a frontward or backward direction. An equally important feature of this invention is the controlling of the supply of steam through either the front or rear ports of the iron to the article being ironed as desired. A plurality of steam ports represented by 10 are located in the flat ironing surface 8 around the front end of the iron and a similar plurality of ports 11 are located in the flat surface 8 around or across the back end of the iron. 6-15) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. if the operator desires to iron dry.

This manipulation of the handle in turn closes steam valve 15 tight and allows steam valve 16 to open as shown in Figure 3.PLIREF-PATAPP 6 Exh. SAMPLE CLAIMS TO BE CRITICIZED 1. Similarly if the operator decides to pull the iron backwards across the article being ironed. *6EX-41 5. The obvious reason for so operating the handle of the steam iron is to simultaneously operate the steam valves and *6EX-40 thus supply moist steam through ports 10 when moving the iron forward while ironing. weights. An iron including push-pull valve means for automatically spraying steam ahead of the iron when moving forwardly and behind the iron when moving backwardly. so that the iron will slide backward over the article being ironed. he bears down on the forward end of the handle. Thus supplying moist-steam to the article being ironed eliminates otherwise sprinkling or wetting the article before ironing. he naturally presses on the rear of the handle so that the front of the iron will slide over the article being pressed. or in any other way connected to casing 14. wherein the water chamber is omitted and steam is supplied directly to the iron from a central steam boiler through a flexible hose. A strip of spring steel 21 is fastened to the underside of handle 17 by any means. A method as recited in claim 5. This movement of the handle causes steam valve 15 to open up whereas steam valve 16 is firmly shut as shown in Figure 4. A base 8. 6-15 (Cite as: PLIREF-PATAPP 6 Exh. 7. A method as recited in claim 4. a second plurality of openings formed in the rear section of the bottom plate. 4. No Claim to Orig. and is preformed so that its two end sections bear down on the heads of valve stems 23 and 24 so as to keep steam valves 15 and 16 closed as shown in Figure 1. 2. a heater 7. Apparatus as recited in claims 1 or 2. . Thus in the normal operation of the iron he inclines the handle down in the rear and it rocks on pin 18 so that the forward part of the handle is up. and thus on the front of the iron. The iron includes a bottom member. A combination steam and dry iron. thereby releasing pressure on the back end of the rockable handle and the back of the iron. and through ports 11 when moving the iron backward. 6. a plurality of steam ports 10-11. further comprising the step of moving the iron alternately forward and back to iron the clothes. further comprising a pair of leaf springs for actuating the valves when the handle is pivoted. exemplified or shown. and a toggle member connected to alternately activate the valve means whereby the iron may be operated either forwardly or backwardly to iron clothes more effectively than heretofore. a selective actuator 21 for the valves selected from the group consisting of springs. such as bolts 22. criticize errors in the following "sample" claims 1-7. a plurality of valves 15-16. comprising a body having a water chamber therein and front and rear steam chambers. 6-15 FOR EDUCATIONAL USE ONLY How to Write Pat. 6-15) Page 2 of these steam valves 15 and 16 is accomplished by handle 17 which is free to rock on pin 18 in trunnion 19 which is bolted by means 20. and a handle 17. 3. a first plurality of openings formed in the forward portion of the bottom plate and communicating with the front steam chamber. referred to. Application 6 Exh. and levers. Any and all novel features described. Problem Given the drawings and excerpts from the specification. When the operator of the steam iron decides to move it forward. Works. US Gov. © 2008 Thomson/West.

" as in line 3.1." No antecedent. § 112) permits means plus function clauses only in claims to combinations. In particular. US Gov. "a bottom member having a plurality of openings . the claim is "misdescriptive" and inconsistent with the specification. to a "catalog of elements.6. The statute (35 U.6. the claim is "incomplete" and "inconsistent with the disclosure. Thus. 6-15 (Cite as: PLIREF-PATAPP 6 Exh.2. No Claim to Orig. laudatory expressions of this type ("more effectively than heretofore") are not permitted. and this language is not used in the specification." See § 6." It is at least debatable whether or not "bottom members" inherently have forward or rear sections. See § 6. The statement about ironing more effectively does necessarily follow from the previously received structure. line 1. This should read. "bottom plate" is "indefinite." as defined in the specification.2. there is no specific description of the main point of the invention.4.6.3. this iron does not work "automatically.5." Mechanically this is not a "toggle member. There is insufficient structure recited to support the functional statement. Works.]. for example. This clause is vague and indefinite.3. It seems unclear whether "push-pull valve means" has any meaning. "the valve means. . See § 6. and nothing about heating the water. Line 7. Thus.. "plurality of openings" are made "elements" of the claim." Lines 4 and 6.PLIREF-PATAPP 6 Exh. "whereby. Claim 1. etc. *6EX-43 Line 7.2. See § 6.3. No connection of the second plurality of openings with the rear steam chamber. No antecedent for "the forward portion" or "the rear section. the claim may be objectionable as being overly broad at the pre- © 2008 Thomson/West." Thus." See § 6." The word "toggle" does not appear anywhere in the specification.6.5.S.3.5.." The function immediately following "whereby" has nothing to do with the claimed structure in that all ordinary irons may be operated either forwardly or backwardly.2. "connected to. Also.1.6. Holes should be negatively recited.." This should read bottom "member. One must use consistent terminology for the same element throughout the claim.3. in part. Claim 2. This is "surplusage. "toggle member. this claim does not set forth all of the elements necessary to "the invention. Line 6. Lines 7 and 8. Lines 8 and 9. See § 6.C.1. the claim is a "single means" claim. As an overall criticism. 6-15) Page 3 *6EX-42 Criticism of the Steam and Dry Iron Claim The following is a partial list of errors and questionable practices intentionally used in the "sample" claims. Line 3." See § 6. Terms and phrases used in the claims must find clear support or antecedent basis in the specification. This should have been made an element of the claim. 6-15 FOR EDUCATIONAL USE ONLY How to Write Pat.. "a bottom plate having a forward portion . by manipulating the handle to actuate valves. Application 6 Exh. [etc.3. for example. Lines 3 and 5.4.6. Line 1. Also.6.2. Lines 4 and 6. no connection between the water chamber and the steam chamber. Line 1.2. Better practice is. See § 6. Also.6.6. See § 6.6. which has to do with supplying steam selectively through front and rear ports as the iron is moved forward and back.6. the claim is drawn." It is doubtful whether this phrase sets forth enough structural cooperation with the other elements." See § 6. See § 6. See § 6. The claim consists of two sentences rather than one.

operable combination. that the drawing must show every feature of the *6EX-44 invention specified in the claims." Although multiple dependent claims are allowed. See § 6. or at least poor practice.6. 6-15) Page 4 cise point of novelty of the invention.4. The claim is merely a "catalog" of elements.1 and 6. Such claims have © 2008 Thomson/West.. line 1. See § 6. Line 1. It is probably objectionable.5. This type of claim is often called an "aggregation. This is a dependent method claim adding only further details of structure. See § 6. in lines 2 and 3 the weights and levers are not disclosed or shown.4.3. Claim 3. Line 4. when used.3.3. Application 6 Exh.. which is improper. Works. apparatus limitations should be avoided as far as possible in method claims. Lines 2 and 3. Dependent method claims should add method steps or further define *6EX-45 method steps. Thus.4. There is no antecedent for "when the handle is pivoted. and it may be improper to omit it altogether. No Claim to Orig.1. "selected from the group . and would be better defined (if included at all) in such terms as ". the steam "ports" (holes) are claimed positively. See § 6. "steam is supplied.4.3. this is not described in the excerpts from the specification which were given." This sounds like a method limitation. There is no objection to the use of reference characters in claims. form is improper.3. the characters should be enclosed in parentheses. to add dependent claims which add only highly conventional steps. US Gov." See § § 6. Claim 5." This uses Markush language for mechanical elements.2. because it lacks "support in the description. omitting the water chamber.3.. since the preceding claim (4) is not a method claim." Claim 4. Also. This runs afoul of rule 83.3. Claims normally have some form of preamble. this is an improper dependent claim because it is "inconsistent" with its parent claim." in either Claim 6 or "parent" Claims 5 and 4. Claim 6. no preamble.6. 6-15 (Cite as: PLIREF-PATAPP 6 Exh.. Line 2.5. line 1. The step added by the subclaim is only the overall step of moving the iron in the conventional manner. See § 6.1. See §§ 6.6.3. "claims 1 or 2.4. .1. § 112.2. This is a so-called "omnibus" claim.6. as noted earlier.. Line 2 and 3. but this is done very rarely. See § 6. because this is a broadening of the claims.PLIREF-PATAPP 6 Exh.5.3.7.6. which is improper under 35 U.1. Claim 7. Line 2.3. which is proper. steam boiler and water hose. and a flexible hose . the transition "including" is acceptable.2. but "comprising" is preferred.1. Lines 2 and 3..C. with no structural or operational cooperation set forth.4 and 6. See § 6. See § 6. Lines 1-4.S. A dependent claim must further restrict the preceding claim.4. However.1. Lines 1-4.4. etc. See § 6. The claim must be drawn to an assembled.3. See § 6. However. further comprising a central steam boiler. line 1. elements cannot be subtracted. 6-15 FOR EDUCATIONAL USE ONLY How to Write Pat." meaning as claimed. Also. Line 2. See § 6. which is improper. reference numerals.

See § 6.2. 6-15) Page 5 been held not "to particularly point out and distinctly claim" the invention. PLIREF-PATAPP 6 Exh.PLIREF-PATAPP 6 Exh. 6-15 END OF DOCUMENT © 2008 Thomson/West. 6-15 (Cite as: PLIREF-PATAPP 6 Exh. US Gov. . Works.1. Application 6 Exh. 6-15 FOR EDUCATIONAL USE ONLY How to Write Pat. No Claim to Orig.

§ 112 and the Utility Requirement This chapter deals with the nuts and bolts of writing the specification.S. No Claim to Orig. Works.PLIREF-PATAPP § 7. this chapter presents the legal requirements that must be followed.C. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.1 Introduction: The Requirements of 35 U.1 END OF DOCUMENT © 2008 Thomson/West. . October 2006 Chapter 7: Writing the Specification *7-5 § 7.1 (Cite as: PLIREF-PATAPP s 7. PLIREF-PATAPP s 7.1) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.1 How to Write Pat. Before discussing the "how to" aspects of writing the specification. US Gov. Application s 7.

or with which it is most nearly connected. these requirements can be summarized by the question. to make and use the same. § 112 and the Utility Requirement *7-5 § 7.1. The requirements of 35 U. § 112."). it is necessary to understand the legal requirements for the specification. in general. § 112 are threefold: 1. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. However. At a bare minimum. The Enablement Requirement ("enable any person skilled in the art .C. or if contested.S.1 35 U.PLIREF-PATAPP § 7. for some inventions. One of the purposes of this chapter is to answer the question of "how much" and "what" information needs to be in the application. PLIREF-PATAPP s 7.1 (Cite as: PLIREF-PATAPP s 7.1. The "Best Mode" Requirement ("set forth the best mode contemplated by the inventor of carrying out his invention"). 2. many hints and suggestions for writing an effective specification are presented. and "best mode" requirements? For example. The statutory requirements are set forth in 35 U. . because each practitioner must decide for each application exactly what needs to be described. Thus.1 Introduction: The Requirements of 35 U. In addition. For this purpose. and of the manner and process of making and using it. § 112. how much detail needs to be put into the application to satisfy the description. Works.S.1. If these legal requirements are not met. clear.S.1 END OF DOCUMENT © 2008 Thomson/West. and shall set forth the best mode contemplated by the inventor of carrying out his invention. .1.C. After presenting the legal requirements of 35 U. these legal requirements need to be satisfied. enablement.C. in such full.C. "How much do I really need to put in the specification?" In other words. At the practical level. October 2006 Chapter 7: Writing the Specification § 7. the legal requirements under 35 U. No Claim to Orig.S. this chapter presents a systematic approach for preparing the specification.S.1. one does not need to put the exact dimensions of each of the components of a rifle.C. Application s 7. concise. the exact dimensions can be critical and thus would need to be disclosed. which states: The specification shall contain a written description of the invention. An understanding of those legal requirements is important for every patent practitioner. the patent will be invalidated. exact dimensions are generally not included in the application. and *7-6 3. § 112 are discussed. US Gov.C. there are few absolute rules.S.1 FOR EDUCATIONAL USE ONLY How to Write Pat. no patent will issue. § 112 To write an effective patent application.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. and exact terms as to enable any person skilled in the art to which it pertains. The Description Requirement ("shall contain a written description of the invention"). .

all that needs to be included in the application regarding utility is some claim for utility. for most inventions. In that situation. Even a small degree of utility is sufficient to satisfy the utility requirement. The specification of utility needs to be specific. [FN7] Utility requires that the claimed invention have a significant and presently available benefit to the public.C. which needs to be addressed in the specification. or cold fusion.1. reject applications for lack of utility. that is. because it provides some identifiable benefit. . where the utility of the gene was unclear.S. such rejections are more common in the chemical and biotechnological arts. Application s 7. and does. [FN6] Thus. namely chapters 13 and 14.2 Utility Another legal requirement of an invention. that is. According to 35 U. while a statement that the claimed compound is better than known anti-tumor substances with known anti-tumor activity against leukemia tumor models is adequate. § 112.2 (Cite as: PLIREF-PATAPP s 7. does the issue arise in the mechanical and electrical arts. or mechanical or electrical cures for diseases. Merely asserting that a compound is useful for the "treatment of diseases" and is an "anti-tumor substance" can be an insufficient disclosure of utility. the utility requirement is satisfied by specifying some utility for the invention. and (2) measure the level of a mRNA © 2008 Thomson/West.1.2 FOR EDUCATIONAL USE ONLY How to Write Pat. [FN3] However. § 112 and the Utility Requirement *7-6 § 7.C. The only time proof may be required is if the Patent Office raises an issue as to utility. § 101. Works. the concept of utility is discussed in the chapters dealing with those technologies. Such rejections are extremely rare in the mechanical and electrical arts.1 Introduction: The Requirements of 35 U.*7-8 the invention need not accomplish all the objectives specified in the application. A claim directed to expressed sequence tags (ESTs small pieces of a DNA sequence) which can (1) serve as a marker for an underlying gene. [FN2] Even an invention whose intent was to deceive purchasers into believing they were getting a premixed drink rather than a post-mixed drink is useful. [FN5] Furthermore. as long as the invention can be used to achieve at least one of the stated objectives. there is a failure to teach how to use *7-7 the invention as required by section 112. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.C. US Gov.PLIREF-PATAPP § 7.1. as a practical matter. is the "utility" requirement. [FN4] Proof is generally not required. a patentable invention has to be "useful.S. [FN1] Therefore. Only when the inventor is claiming a perpetual motion machine. Therefore. The reader is referred to those chapters if there is concern that questions may arise in the Patent Office about lack of utility. the utility claimed seems unreasonable.S. In general. October 2006 Chapter 7: Writing the Specification § 7. that one product can be altered to make it look like another. the Patent Office can.1. under the theory that if the written description fails to illuminate a credible utility. No Claim to Orig.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. evidence of utility would have to be presented." Utility is also required by 35 U.

" "insubstantial.S. An assay that measures the presence of a material which has a stated correlation © 2008 Thomson/West. An invention has a well-established utility if a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention (for example. *7-10 5. 6. properties or applications of a product or process). unless countervailing evidence can be provided that shows that one of ordinary skill in the art would have a legitimate basis to doubt the credibility of such a statement. If there is an assertion that the invention is useful for a particular practical purpose (that is. affidavits or declarations from experts in the art. patents or printed publications) that is probative of the applicant's assertions. would ordinarily be insufficient absent a disclosure of what condition can be diagnosed.C. *7-11 2. did not satisfy the utility requirement. The application need only provide one credible assertion of specific and substantial utility for each claimed invention to satisfy the utility requirement. A "substantial utility" is a utility that defines a "real world" use.PLIREF-PATAPP § 7. 3. In its training materials. Utilities that require or constitute carrying out further research to identify or reasonably confirm a "real world" context of use are not substantial utilities. 4. The definitions of key terms are: 1.1] Because of inconsistent and overly stringent application of the utility requirement in the biotechnology arts. [FN9] According to the Patent Office. US Gov. The claimed invention must have (i) a well-established utility. the Patent Office elaborates on these guidelines by providing definitions of key terms and applying the guidelines to many specific situations. See below for a definition of "credible" utility. it has a "specific and substantial utility") and the assertion would be considered credible by a person of ordinary skill in the art." and "credible.1.1. Patent Office personnel will accept an opinion from a qualified expert that is based upon relevant facts whose accuracy is not being questioned. A "specific utility" is a utility that is specific to the subject matter claimed. The requirement that there be a specific and substantial utility excludes "throw-away. See below for definitions of "specific." 2." or "nonspecific" utilities. substantial. [FN7. Works. The Patent Office will treat as true a statement of fact made by an applicant in relation to an asserted utility. Credibility is assessed from the perspective of one of ordinary skill in the art in view of the disclosure and any other evidence of record (for example. No Claim to Orig.1. both a therapeutic method of treating a known or newly discovered disease and an assay method for identifying compounds that themselves have a "substantial utility" define a "real world" context of use. . they are applicable to all inventions. the utility requirement is satisfied. such as diagnosing an unspecified disease. a claim to a polynucleotide whose use is disclosed simply as a "gene probe" or "chromosome marker" would not be considered to be specific in the absence of a disclosure of a specific DNA target. [FN8] Although these guidelines and the accompanying discussion of the law are particularly directed to biotechnology inventions. test data. as a way of satisfying the utility requirement of 35 U. For example. *7-9 and thus are discussed here. Similarly. and credible. This contrasts with a general utility that would be applicable to the broad class of the invention.2) Page 2 in a tissue sample.2 (Cite as: PLIREF-PATAPP s 7. [FN10] Since most of the specific fact situations are in the biological arts. such as the use of a complex invention as landfill. For example. the Patent Office established guidelines for examiners with regard to the utility requirement. an attorney/agent preparing an application in these arts should carefully review those training materials to anticipate the utility rejections that may await an application in the Patent Office. Similarly. and the well-established utility is specific. or (ii) the specification must assert for the claimed invention at least one specific and substantial utility that is credible. a general statement of diagnostic utility. § 101. the applicable legal principles are: 1." "substantial.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Application s 7.

2d 1703 (Fed. [FN4]. 108 U. 421 F. 1991).Q. [FN7. In re Joyce A. [FN5]. Inc. 2000) (cold fusion not patentable because applicant provided no persuasive objective evidence sufficient to overcome the reasonable doubt established by PTO).S.2d 1173 (Fed. Inc. Orange Bang. Cir. 51 U.1. 56 U.. Cir. It is recommended for safety that multiple credible utilities be asserted in an application. See In re Chilowsky.2d 457. chromosome markers. Juicy Whip. 66 Fed.Q. Cir. or forensic or diagnostic markers. A method of treating an unspecified disease or condition. substantial and credible utility. Cir. 229 F. [FN1]. On the other hand.P. 945 F.P. For example. see also Synopsis of Application of the Revised Utility Guidelines. tennis shoe soles. Cir.2d 1464 (Fed. if the claimed invention is directed to an automobile tire composition.S.2) Page 3 to a predisposition to the onset of a particular disease condition would also define a "real world" context of use in identifying potential candidates for preventive measures or further monitoring.P.2d 1700 (Fed. 1984).P. Cir. [FN6].uspto. 51 F. [FN7]. 49 U.P. However.PLIREF-PATAPP § 7.Q.S. A "credible utility" is an asserted utility where the assertion of utility is believable to a person of ordinary skill in the art based on the totality of evidence and reasoning provided.S.Q. one disadvantage of asserting multiple utilities that must be considered is that the scope of analogous art applicable under section 103 can be broadened unduly to include a reference outside the scope of the principal utility.S. iii.1. these can be disclosed in the application. 232 F. A method of assaying for or identifying a material that itself has no "specific and/or substantial utility.1.A. or (B) the facts upon which the assertion is based are inconsistent with the logic underlying the *7-12 assertion. Accordingly. 1956).gov/web/menu/utility. Reg. Stiftung v. do not define "substantial utilities": i. if the Patent Office reasonably applies these standards. [FN2]. no perpetual motion machines would be considered to be currently available. Renishaw plc. available at <http:// www. ii. In re Swartz. such as bicycle tires. 1999). 321 (C. In re Fisher. if there are other possible credible utilities for the composition. therefore.2d 1436 (Fed. 473 (Fed. [FN3]. [FN8]. nucleic acids could be used as probes. the following are examples of situations that require or constitute carrying out further research to identify or reasonably confirm a "real world" context of use and.2 (Cite as: PLIREF-PATAPP s 7. However.P. 34 U.3d 1353. No Claim to Orig. 165 F. [FN11] For example. v. Basic research such as studying the properties of the claimed product itself or the mechanisms in which the material is involved.S. 3. © 2008 Thomson/West. Al George.2d 457.3d 862.3d 1364.P.. the utility requirement is easily satisfied when preparing an application. Cortright.P. A credible utility is assessed from the standpoint of whether a person of ordinary skill in the art would accept that the recited or disclosed invention is currently available for such use. .3d 1365 (Fed. All that needs to be disclosed in the specification is one asserted utility that benefits the public and that is credible.2 FOR EDUCATIONAL USE ONLY How to Write Pat. 730 F. Inc." iv.2d 753. 1995). Application s 7. etc. reh'g denied.Q. 229 F. Envirotech Corp.C.C. Cir. US Gov. See In re Chilowsky. An assertion is credible unless (A) the logic underlying the assertion is seriously flawed. 2001). 5. v.P. 1092 (Jan.1]. gaskets. 1999).S. In re Brana. Works. 221 U.3d 1560. 321 (C.pdf>. 1956).Q. 108 U. A method of making a material that itself has no specific.Q.A. 2005). 185 F..

uspto. the Revised Utility Guidelines.2 FOR EDUCATIONAL USE ONLY How to Write Pat. PLIREF-PATAPP s 7. Synopsis of Application of <http://www.2) Page 4 [FN9]. US Gov.P.Q.1. In re Hozumi.1. The Patent Office can require cancellation of unsupported utilities that could deceive the public. No Claim to Orig.2 END OF DOCUMENT © 2008 Thomson/West. 226 U. available at [FN11].1. Application s 7. & Trademarks 1985).2 (Cite as: PLIREF-PATAPP s 7.1.pdf>.gov/web/menu/utility. 353 (Comm'r Pat. [FN10].S. .PLIREF-PATAPP § 7. Works. Application of these principles to biotechnology inventions can be found in chapter 14.

2 (Cite as: PLIREF-PATAPP s 7. [FN15] *7-14 The description requirement becomes very important if additional claims need to be added after the initial filing. [FN16] If the new claim is rejected.PLIREF-PATAPP § 7. which allows use of meansplus-function language.2) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. No Claim to Orig.2 Satisfying the Description Requirement of § 112 The purpose of the description requirement is to persuade those skilled in the art that the inventor has invented the claimed subject matter. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.C. the inventor can submit a new application. If means-plus-function language is used in a claim. October 2006 Chapter 7: Writing the Specification *7-12 § 7.2 How to Write Pat. § 132. However. An insufficient description can lead to problems when the application is amended and there is a need to retain the original filing date. Works. the specification must set forth an adequate disclosure of what is meant by the claim language. It is possible to live dangerously and not set forth exactly the claimed subject matter if the written description conveys with reasonable clarity to those of skill in the art that the inventor actually invented what is claimed. taking this approach opens an issued patent to attack during litigation. This is not considered "new matter" because the claims are part of the specification as of the filing date. © 2008 Thomson/West. [FN14] Another description requirement is associated with 35 U. The description requirement will therefore be an issue where an inventor wishes to add a new claim and needs to retain the original filing date. The description of the invention can always be amended during prosecution to include anything that is in the claims that were originally filed. [FN12] The description requirement can be satisfied in a fairly straightforward manner: include in the *7-13 specification a description of the invention that is claimed in the claims. namely: 1.C.S. or additional species claims are required. structure supporting the means-plus-function language must be described in the specification.1] Failure to satisfy the description requirement with regard to the originally submitted claims is usually not fatal. US Gov. Examples.S. This can occur if the originally filed claims are not sufficiently broad to cover the entire invention. However. If an attempt is made to amend the claims. the original filing date will be lost. the amended and new claims will be rejected as not being within the scope of the originally described invention. [FN13. Application s 7. or add new claims during prosecution. Thus. and for introducing new matter as prohibited by 35 U. [FN13] The best way to be sure that every claim is included is to either paraphrase all of the claims or reproduce the claims in the specification verbatim. Such language covers the corresponding structures disclosed in the specification and equivalents thereof. [FN17] The Federal Circuit has identified certain information that can be absent from a specification that still satisfies the written description requirement. ¶ 6. § 112. . Only if the original description is broad enough to encompass the new claim can the inventor keep the benefit of the earlier filing date. and there is no supporting description in the application as originally filed.

The goal of the written description requirement is to clearly convey the information that an applicant has invented the subject matter which is claimed to put the public in possession of what the applicant claims as the invention. Works. [FN21] These guidelines provide that: 1. Because the storage case was not sufficiently described in the design application. [FN18. [FN18. without describing any particular compound that achieved the function. and thus the description requirement is not satisfied. as discussed in chapter 14 dealing with biotechnology patent applications. even though a method of producing the DNA was enabled. or definitive chemical or physical properties of the product are disclosed. a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. For example. *7-17 ii.C." Disclosing a sequence of only 10 of the 185 to 192 amino acids comprising a particular protein does not put one in possession of the claimed DNA sequence. § 1. A specification showing that the inventor constructed an embodiment or performed a process © 2008 Thomson/West. 3. a claim directed to selectively inhibiting prostaglandin synthesis of a non-steroid compound. formula. Possession may be shown by: i. [FN17.801 et seq. [FN18] The written description requirement can also be invoked to invalidate what the author considers to be "wouldn't it be nice" inventions.2 (Cite as: PLIREF-PATAPP s 7. Evidence of an actual reduction to practice. Actual reduction to practice. the Patent Office has promulgated guidelines for examination of a patent application under the written description requirement. the description requirement was not satisfied in a claim directed to DNA because the DNA was not described. US Gov.2] However. . No compound that could be used to practice the claimed method was known at the time the application was filed. Thus.PLIREF-PATAPP § 7. . and 3. *7-16 name. [FN19] The Federal Circuit is placing more emphasis on the description requirement and making it more difficult to satisfy. 2. Actual reduction to practice of a biological material may be shown by specifically describing a deposit made in accordance with the requirements of 37 C. was invalid because the specification did not satisfy the written description requirement. iii. by a clear depiction of the invention in detailed drawings which permit a person skilled in the art to clearly recognize that applicant had possession of the claimed invention. No Claim to Orig. if the drawings sufficiently demonstrate that the inventors had possession of the claimed subject matter at the time of filing.2 How to Write Pat. the patent was denied under 35 U.S. Application s 7.2) FOR EDUCATIONAL USE ONLY Page 2 2. and because the storage case was on sale over one year before the utility application was filed. the inventors could not rely on the earlier filing date. even drawings alone can satisfy the "written description" requirement.R.1] The importance of a sufficient description is demonstrated by the inability of the inventors of an audiocassette storage case to obtain a utility patent. the Federal Circuit held in 1993 that the specification supports a claim to a product only if the structure. These inventors filed an application *7-15 for a design patent and then filed a utility patent application based on the design application. A written description of the invention describing sufficient relevant identifying characteristics such that a person skilled in the art would recognize that the inventor had possession of the claimed invention.F. To satisfy the written description requirement. § 102(b).1] Thus the claim was directed to "wouldn't it be nice if there was a compound that . . The recitation of a known structure of a biological macromolecule. For example. [FN20] As a result of the increased emphasis of the description requirement.

. There is a strong presumption that an adequate written description of the claimed invention is present when the application is filed. the knowledge and level of skill in the art would not permit one skilled in the art to immediately envisage the product claimed from the disclosed process. A claim that omits an element which applicant describes as an essential or critical feature of the invention originally disclosed does not comply with the written description requirement. must be sufficiently described in the specification to satisfy the written description requirement. In contrast. an essential or critical element is not adequately described in the specification and is not conventional in the art. and determined that the invention would work for its intended purpose. in emerging and unpredictable technologies. iii. more evidence is required to show possession. sufficient to show the applicant was in possession of the claimed genus. What is conventional or well known to one skilled in the art need not be disclosed in detail. 12. complete or partial structure. Sufficient structures. 8. by functional characteristics coupled with a known or disclosed correlation between function and structure. or by disclosure of relevant identifying characteristics. a sufficient variety of species must be described to reflect the variation within the genus. If a skilled artisan would have understood the inventor to be in possession of the claimed invention at the time of filing. other physical and/or chemical properties. that is. The description need only describe in detail that which is new or not conventional. reduction to drawings. [FN21. The description requirement applies to each genus claim and each species of the genus specifically claimed. and the body of the claim. Disclosure of sufficiently detailed relevant identifying characteristics which provide evidence that applicant was in possession of the claimed invention. structure or other physical and/or chemical properties. and wherein the knowledge and level of skill in the art is high. Consequently. Application s 7. the transitional phrase. or some combination of such characteristics. US Gov. then the adequate description requirement is met. an invention is described solely in terms of a method of its making coupled with its function *7-18 and there is no described or art recognized correlation or relationship between the structure of the invention and its function.1] 7. 11. even if every nuance of the claims is not explicitly described in the specification. including all limitations found in the preamble. Thus. There is an inverse correlation between the level of skill and knowledge in the art and the specificity of disclosure necessary to satisfy the written description requirement. 9. The claim as a whole.2 (Cite as: PLIREF-PATAPP s 7. or functions must be recited to make clear the scope and meaning of the claim. Works. rejection of an original claim for lack of written description should be rare. when an aspect of the claimed invention has not been described with sufficient particularity such that one skilled in the art would recognize that the applicant had possession of the claimed invention: ii. iv. 4.2 How to Write Pat. that is. functional characteristics when coupled with a known or disclosed correlation between function and structure. *7-19 10. when there is substantial variation within the genus. acts. An issue of a lack of adequate written description can arise: i. What constitutes a © 2008 Thomson/West. No Claim to Orig. a written description question should not be raised for original claims even if the specification discloses only a method of making the invention and the function of the invention. iv.2) FOR EDUCATIONAL USE ONLY Page 3 that met all the limitations of the claim. including the weight to be given the preamble. 5. A "representative number of species" means that the species which are adequately described are representative of the entire genus. In most technologies which are mature. or by a combination of such identifying characteristics.PLIREF-PATAPP § 7. 6. The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction practice.

aff'd sub nom. Inc.Q.2 (Cite as: PLIREF-PATAPP s 7. Falkner v. cert.3d 989. In re Smith..S.P. later problems can arise if the inventor wants to add new claims.S. Cir.Q. MIT v.S.C. denied.S. doing so in the so-called predictable arts is also strongly recommended in view of the position of the Federal Circuit that a generic claim that allowed for placement of controls at multiple locations was not supported by a description that taught only one location.. [FN22] Describing a large number of species within a generic claim has been standard practice in unpredictable arts such as genetic engineering. denied.2 How to Write Pat. 209 U. 1973). Inc. 369 (Fed.2d 422. Also. 1165 (1983).1]. 1985).A. 620 (C.Q.P. Storage Devices.Q. 1973).S. 178 U. Atl. G. 481 F.S. 375 F. 221 U.3d 1291 (Fed. 194 U. 412 F. it is important that the description fully describes. 559 F. any new claims that are later added should use the same terminology as the original description to ensure that the claims are construed within the scope of the description.S. as broadly as possible. 470 (C. [FN17].2d 910. [FN18. 481 F.1] [FN12]. However. [FN13]. Searle & Co. 1981). 866 F. Info.Q. 198 F. v.P. Cir. [FN13.1]. v. [FN24.P.2d 1104.C.P.2d 1649 (Fed. Atmel Corp. v. 1977).3d 1374.P.B. A. adequate written description of a genus which embraces widely *7-20 variant species cannot be achieved by disclosing only one species within the genus. Cir.S.Q. Inc. Cir. Fortia.Q. 1064 (1978). 2006). 9 U.. 642 F. 2000). [FN21. because the specification touted an advantage of the specific shapes disclosed. Cir.-Charge Cell Culture Microcarriers. 54 U.2] While the description requirement is easily satisfied when the original application is filed.P. of Rochester v. 2004). Cir. 1984).Q. 53 U.P.2d 1227 (Fed. In re Certain Ltd..P. of Cal. 222 U. 45 (C.S.S. [FN16].2d 427. © 2008 Thomson/West.D. 208 F. Richfield Co. In re Berkman. Satisfactory disclosure of a "representative number" depends on whether one of skill in the art would recognize that the applicant was in possession of the necessary common attributes or features of the elements possessed by the members of the genus in view of the species disclosed. Inc. Description of a representative number of species does not require the description to be of such specificity that it would provide individual support for each species that the genus embraces. 2005) (because "means for dispensing" was not clearly linked to any structure in the specification. 1999). In an unpredictable art.A. In re Barker. [FN15].3d 1303 (Fed.2d 588.C. cert. Engliss.P. 1989). In re Smith. [FN14]. 736 F. A full listing of alternative versions of the invention should be included in the description. 434 U. 774 F. Cir. 469 U. In re Wilder.2d 910.2d 1225 (Fed.P.P.Q. [FN18].PLIREF-PATAPP § 7. Default Proof Credit Card Sys. the Federal Circuit held that a description *7-21 of two species of the shape for a cup for an artificial hip did not support a claim to a generic shape. 227 U. Cir.2) FOR EDUCATIONAL USE ONLY Page 4 "representative number" is an inverse function of the skill and knowledge in the art. Works.P. [FN17.A. 428 (Fed.2d 1516.S.. No Claim to Orig.C. . 448 F3d 1357 (Fed.P. which would have encompassed prior art shapes.1]. 1209 (1985). Because of that possibility. Union Oil Co.A. [FN24] A claim directed to all methods that result in "seamless image compression" is invalid because the specification described only one embodiment of seamless image compression. the invention that exists on the date of filing. [FN23] Similarly. In re Wright. including all species in a chemical invention. 620 (C. Home Depot USA.S.. US Gov. claim is invalid). Univ. 178 U.Q. Application s 7.

S. SOC'Y. 984 F.S. Lederman. Synopsis of Application Written Description Guidelines. Vas-Cath.E.099 (Jan. Pretty. Cir. No Claim to Orig.. 47 U. Biomet.pdf>.2 How to Write Pat.uspto. Berkline Corp. Inc.3d 1343. [FN20].1]. § 608.2 END OF DOCUMENT © 2008 Thomson/West.P.3d 1342. PAT. 2000).2d 1164. 19 U.. 1991). Utter v. 25 U.P. 378 F.P. [FN21.2].P. 2004) (a genus claim for a particular antibody was not described by a description of the mouse antibody within the genus). 5.2]. TRADEMARK OFF. Mahurkar. Cir. 54 U. [FN24].S. § 2163. see also Laurence H.3d 1330 (Fed. 134 F.P. 69 U. US Gov.Q. .S. [FN21. [FN22].g.2d 1555.P. 214 F..2d 1601 (Fed. 69 U. Mapping. Cir.Q. 1. [FN24. v. Lizardtech Inc. 2004). 2d 1274 (Fed. J.2d 1709 (Fed. 1993). 845 F. The Recline and Fall of Mechanical Genus Claim Scope Under "Written Description" in the Sofa Case. 935 F.S. 424 F. 156 F.Q. Cir. Inc. v. 1998).P. 355 F.2d 1915 (Fed.Q. Noelle v. e. 1998).2 (Cite as: PLIREF-PATAPP s 7. Revel.2d 993. [FN23]. Cir. PLIREF-PATAPP s 7. 2005). Cir. Inc.Q. Hiraga.2) FOR EDUCATIONAL USE ONLY Page 5 [FN18.P. Works. 45 U. 1988).3d 1154. In re Wallach. 2001). Microsoft Corp. Cir.2d 1498 (Fed. cf.01(o). [FN19].3d 1473.S. See Reifin v. Cir.Q. 6 U. Cir.3d 1336 (Fed. see also M.E. See. 2004) (disclosure of microcrystalline wax did not support a claim directed to "friction enhancing coatings"). 354 F.gov/web/menu/written. Application s 7.1]. It appears that the court was actually stating that there was a failure to satisfy the enablement requirement rather than the written description requirement. Reg. 66 Fed.S.Q. the Lizardtech court seems confused.P. [FN21]. Cir. Fiers v.P. 469 (July 1998).2d 1829 (Fed.P. In the author's opinion. Tronzo v.2d 1111 (Fed.S.PLIREF-PATAPP § 7..Q.3d 1347. M. Gentry Gallery.P. Earth Res. available at <http:// www. In re Curtis.2d 1508 (Fed. v.

S. . 470 (C. § 112. or with which it is most nearly connected.3. . [FN26].3.C. [FN26] The enablement requirement means that the specification must teach someone skilled in the art how to make and how to use the invention.3 Satisfying the Enablement Requirement of § 112 *7-21 § 7. requires that the "specification shall contain a written description of the invention.1 What Is the Enablement Requirement? Section 112 of 35 U.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. concise. Therefore.A.3.3. 35 U. US Gov. clear. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.P.S.1 (Cite as: PLIREF-PATAPP s 7. denied.3.1 FOR EDUCATIONAL USE ONLY How to Write Pat.C. cert. 1064 (1977). 434 U. In re Barker. Application s 7. [FN25]. in such full. 559 F. and exact terms as to enable any person skilled in the art to which it pertains. If the specification is not sufficiently enabling. No Claim to Orig. and both must be met.C.S.). it is extremely important that the enablement requirement is satisfied.S.P.PLIREF-PATAPP § 7." [FN25] The description and the enablement requirements are separate.1 END OF DOCUMENT © 2008 Thomson/West. to make and use the same. an infringer can challenge the validity of the patent and the patent can be invalidated. Works. . . and of the manner of making and using it. PLIREF-PATAPP s 7.2d 588.Q. 194 U. October 2006 Chapter 7: Writing the Specification § 7.

C. The following discussion provides some guidelines. The guidelines followed by the PTO examiners with regard to the enablement requirement are found in the Manual of Patent Examining Procedure. through the conscious efforts of the applicant. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. [FN27] § 7.3. Moreover. if the answer is no.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. . Therefore. No Claim to Orig.3.2. October 2006 Chapter 7: Writing the Specification § 7. so that a competitor may be able to design around the invention. [FN31] § 7. always keeping in mind that the disclosure is aimed at someone with ordinary skill in the art. the PTO did not examine. Moreover. § 112 means someone skilled in the art that is the most appropriate to practice the invention. before writing the disclosure section it is important first to define the claimed invention. is enabled in the disclosure.2 The Specification Need Be Enabling Only to Someone Skilled in the Relevant Art "Someone skilled in the art" for the purposes of 35 U. it is important to keep the future reader in mind and remember to include sufficient informa- © 2008 Thomson/West.1 The Enablement Requirement Applies Only to Claimed Subject Matter The enablement requirement applies only to the claimed subject matter. a patent for a rifle was challenged on the basis that it did not disclose how to mass produce the rifle. and not the method of mass production. Contrarily.3. The reason for the latter is that the courts want to avoid the possibility of an applicant's obtaining in court a scope of protection that encompasses subject matter that. as broadly defined. then the *7-23 courts are likely to attach the narrowest meaning to the claims during an infringement proceeding. Works. the method does not need to be disclosed.2. If the answer is yes. so that the enablement requirement is not satisfied unless the full scope of the claim. [FN28] It is important for the applicant to define the claimed invention clearly and precisely. then the enablement requirement probably is satisfied. sufficient "minutiae" need to be included to allow a reasonable balance between too much detail and insufficient disclosure. The Federal Circuit upheld the patent because the inventor claimed only the rifle.3. If there is a possibility of varying interpretation in scope of what is claimed.2 FOR EDUCATIONAL USE ONLY How to Write Pat.S. more detail needs to be included. [FN33] To write a clear and concise specification.PLIREF-PATAPP § 7.2 Guidelines for Satisfying the Enablement Requirement A difficulty with satisfying the enablement requirement is that it is desirable to leave out the endless minutiae that can unduly lengthen an application. if such varying interpretations can be given to what is claimed.2 (Cite as: PLIREF-PATAPP s 7.3 Satisfying the Enablement Requirement of § 112 *7-22 § 7. [FN29] The inventor has no duty to enable an unclaimed use of the invention. Application s 7. then the PTO is likely to attach the broadest meaning to the claims during the prosecution. One good way to ensure that this requirement is met is to ask the inventor if his colleagues would be able to practice the invention after reading the disclosure statement. [FN30] For example. if the application does not claim a method of commercial production of an invention. [FN32] There is an assumption that anyone attempting to reproduce an invention will hire expert consultants for any special technical component.3.3. US Gov.

© 2008 Thomson/West. A patent for an antidepressant drug was invalidated because the specification did not disclose the subject of the dosage tests. including when the background section is discussing deficiencies in the prior art. but neglected to state that it was the hot vapor that was used to heat the mixture in the middle of the tube. all information necessary to reproduce the invention must be included. An expert's unsupported conclusion that integral elements of the invention were "well-known" and "routinely built" does not make the disclosure enabling. [FN37] Any information not widely known must be disclosed in the specification. whether it was human. The inventor must specifically describe how to make and use the invention and cannot expect one skilled in the art to determine for himself how to make the invention. in a patent for a device that used a computer to measure seismic waves. [FN42] *7-26 An enabling disclosure can be found in the background portion of an application. .2 FOR EDUCATIONAL USE ONLY How to Write Pat. [FN39] In a patent application for a batch data processor. the information should be included. the inventor did not need to include in the application sufficient information to teach the skill of computer programming to someone skilled in seismic prospecting. and not seismic prospecting. the application would be cumbersome and overinclusive. [FN35] Therefore. This bridging is best illustrated with patents for computer programs. No Claim to Orig. [FN34] For example. [FN38] Thus.2 (Cite as: PLIREF-PATAPP s 7. the specification neglected to explain how the mixture was heated within a tube.3. For example.3. it is important to follow the "rule of doubt". Application s 7. because the excluded information was a routine computer program and there was sufficient information to enable a programmer of reasonable skill to write a satisfactory program with ordinary effort.A. Thus.1] Because of the serious potential consequences of failing to satisfy the enablement requirement. [FN41] In this case it was not just a question of determining dosage.2) Page 2 tion for someone of ordinary skill in the art. differentiated between the "droning use of a clerical skill" and true inventiveness and experimentation. if there is any doubt as to whether additional information should be included.C. The court disagreed and held that the disclosure was insufficient because the step was crucial to the invention and the inventors could not expect someone skilled in the art to guess at possibilities. [FN40] In the specification. or rat. US Gov. the appropriate art was computer programming. the inventor cannot require someone skilled in the relevant art to engage in undue experimentation to practice the invention. it is always better to err on the side of including too much information rather than too little.P. and upheld a patent that disclosed sufficient data and mathematical tools to satisfy the needs of one skilled in the art of computer programming. The disclosure was therefore held insufficient because it did not explicitly state how to use the vapor. It is not necessary to fill the application with a *7-24 great amount of detail so that someone not skilled in the art can reproduce the invention. the inventors claimed that it would have been apparent to one skilled in the art that it would be possible to use the hot vapor for heating the mixture. the inventor did not include the entire computer *7-25 program necessary to reproduce the invention. Works.3. The Federal Circuit upheld the patent. [FN36] The inventor must disclose sufficient information to "bridge the gap" between the knowledge of someone skilled in the relevant art and that knowledge required to practice the invention. but also one of determining the proper subject. in a patent for a device that made ores react with a wet reagent. dog. [FN42. When challenged. While this is tempered with the need to write a clear and concise specification.PLIREF-PATAPP § 7. The inventor had stated that the vapor produced at the end of the tube was hot. If an application for a computer software patent were required to disclose every step of every well known subprogram necessary to the invention. the specification did not provide enough guidance for one skilled in the art to reproduce the invention. the C. thus.

2 FOR EDUCATIONAL USE ONLY How to Write Pat.3. 8. Exactly what is "undue" depends on the nature of the invention and what amount of experimentation is reasonable.3 The "Skill of the Art" Is Determined As of the Date of Filing When writing the specification. [FN44] Because of the uncertainty as to how a court will rule in each case. the amount of guidance presented in the specification. [FN49] The mere fact that experimentation may be difficult and time-consuming does not mandate a conclusion that such experimentation would be undue. The presence or absence of working examples. When the patent was later challenged. and that the inventor did not need to understand or to disclose how the invention worked. it is particularly important to be certain that a technique that is not explained in detail in the specification is truly well known and routine. who had no background in lithography. US Gov.2) Page 3 § 7. The relative skill of those in the art. it is important to be aware of the skill of the art on the day of filing. 2.2. The state of the prior art. [FN46] § 7. 6. No © 2008 Thomson/West.3. 5. the inventor of a photographic printing plate.3. 3. the inventor need not disclose or explain how *7-27 or why the invention works. Factors that a court evaluates include whether the required experiments are routine or unpredictable. Whether a process or material is well known is determined on this date. [FN47] Because chemistry and biology are more unpredictable than the mechanical arts. The Federal Circuit held that the patent specification was enabling. The amount of direction or guidance presented. 7. all possible alternative materials that will also enable the practice of the invention should be provided. .2. In that situation the court evaluates each case individually and uses a rule of reason. Application s 7.4 The Specification Need Not Explain How or Why the Invention Works Although the inventor must teach how to obtain the claimed result. The inventors claimed a numerical control system for machine tools that required a computer program that could control different tools at the same time. when an unusual material or trademarked material is used. [FN43] A description that is enabling on the date of filing can become unenabling because a starting material becomes unavailable.3. [FN49. attempted to describe what he believed to be the chemical reaction that was the basis of the invention.PLIREF-PATAPP § 7. § 7. The breadth of the claims.1] An example where the required experimentation was unreasonable involved a device that used a complicated computer program that was critical to the claimed invention. The predictability or unpredictability of the art.3. The nature of the invention.3. 4.5 Undue Experimentation Must Not Be Required to Reproduce the Invention Undue experimentation to reproduce the invention cannot be required. [FN45] For example. The inventor does not need to understand the scientific principles behind the invention. Works. if the invention is chemical or biological. [FN48] The Federal Circuit has approved the use of the following factors for determining whether undue experimentation is required: *7-28 1.2. No Claim to Orig. the inventor's theories as to how the invention worked did not limit the scope of the patent. and how long it will take.2 (Cite as: PLIREF-PATAPP s 7. The quantity of experimentation required.

The challenger claimed that a great amount of labor would be required to produce high-affinity monoclonal antibodies. comprising some 150 different genera. This is because the enablement requirement of section 112 incorporates as a matter of law the utility requirement of section 101. the Federal Circuit held that a claim directed to use of cyanobacteria. US Gov.2. chimeric antibodies were not known. it is important to continually refer to the claims and ensure that the claims are not overly broad in view of how much of the claimed subject matter it enabled. [FN52.3.3.2 (Cite as: PLIREF-PATAPP s 7. It was not enabled by a later filed second parent application. the claim at issue was broad enough to read on monoclonal antibodies produced by known hybridoma technology.2) Page 4 information about the program was disclosed. The Federal Circuit held that it would not require undue experimentation to perform a dose response study for materials other than stainless steel because the stainless steel dosage was disclosed. The inventors claimed all preparations of the hormone that were at least at the purity of one International Unit (IU) of hormone per milligram. However.2 FOR EDUCATIONAL USE ONLY How to Write Pat. The Federal Circuit held that labor alone does not constitute unreasonable experimentation. the application claimed the use of different materials. but the electrical current dosage level was disclosed only for stainless steel electrodes. "a diverse and relatively poorly studied group of organisms. [FN53] The specification cannot enable only a fraction of the claimed subject matter and require undue experimentation to produce the other claimed versions of the invention.1] A claim directed to using a chemical compound to treat prostate cancer was not enabled because it failed to disclose any data demonstrating the efficacy of the compound. For example. and thus the written description requirement was not satisfied.2] § 7. [FN55] An example of a case where the claims were overly broad in relation to the description of the invention involved a patent for the purification of a hormone from pituitary glands. . the patent was challenged because the antibodies were not made available. The application claimed an immunoassay that used high-affinity monoclonal antibodies specific for a hepatitis B antigen. the enablement requirement was satisfied. © 2008 Thomson/West. [FN51] *7-29 In another case. The claim was not enabled by a first parent application because at the time the first parent application was filed. because the techniques were routine. No Claim to Orig. the technology was "nascent. when writing the specification. the nondisclosed information involved techniques that were labor-intensive.PLIREF-PATAPP § 7. but routine. [FN52." which requires a "specific and useful" teaching to be enabled. and the utility of a drug in human therapy requires substantiating evidence of the utility unless one with ordinary skill in *7-30 the art would accept the allegations of utility as obviously correct.3. [FN52] Chapter 14 below discusses the specimen-deposit requirements for biological inventions. In another case. but also monoclonal antibodies produced by chimeric antibodies.3. as well as a description of how the dosage range was determined. because although chimeric antibodies were known at the time of the filing of the second parent application. except its trade name. [FN50] In a patent application for an electronic bone growth stimulator.6 The Claimed Matter Must Not Be Unduly Broad in Relation to the Disclosure The scope of the disclosure must bear a reasonable relationship to the scope of the claims." was not enabled by a specification that employed only one species in the working examples and mentioned only nine genera. and there was evidence that a skilled programmer would require up to two years of effort to duplicate the invention. There must be a reasonable correlation between the scope of enablement provided in the specification and the scope of the claims. Application s 7. Works. [FN54] Therefore.

where a claim is broad enough to read on antibodies produced by three techniques. attached to a basic structure. [FN61] *7-33 § 7.PLIREF-PATAPP § 7. but there is still enough information to produce the other species without undue experimentation. Thus. [FN64. but only one technique is enabled. and the test results. Works. [FN58.2 (Cite as: PLIREF-PATAPP s 7. If a prophetic example is represented as work actually done. and isopropyl.2. Working examples are not required. One example is where a patent for a chemical compound claims "an alkyl group. The inventors claimed a Markush group consisting of various alkyl radicals attached to a basic ring structure. particularly for chemical applications.2. ethyl. the claim is invalid. Application s 7. .3. [FN57] In the previously discussed application for an electronic bone growth stimulator." When a claim recites a Markush group. but there was no teaching as to how to make the compound with many of the listed alkyl radicals.3 IUs per milligram. They provided working examples for certain variations.3. [FN62] Working examples are those that describe tests that have actually been conducted. [FN60] In one case that involved a patent for a class of pharmaceutical compounds. and therefore the claims were too broad. The claim that referred to the Markush group was therefore invalidated for insufficient disclosure.2 FOR EDUCATIONAL USE ONLY How to Write Pat. the inventor names the generic class and then lists the members included in the group.2] *7-32 § 7. interconnecting geometric structures and interlocking posts and cavities.2) Page 5 the inventors had only achieved a purity level of 2.7 The Specification Must Teach How to Make and Use Each Member of a Markush Group When a Markush group is used to recite certain classes of variations of the invention. It is important to state clearly that a prophetic example is not a working example. the claim was held too broad. it is desirable that the specification enable the entire claimed range. the court found that there was insufficient disclosure about how to make the various compounds in the class. [FN58.1] If only one species of an invention is provided. and the patent was invalidated. the inventor must disclose enough information to teach how to make and how to use the invention employing each member of the group. selected from the group consisting of methyl. US Gov.3. selected from a group consisting of hook and loop fasteners. the enablement requirement for a generic claim is satisfied. No Claim to Orig. [FN64] Further." [FN59] Another example is where a claim includes "a fastener. a charge can arise in litigation that the examiner was misled.8 Working and Prophetic Examples Can Be Used to Satisfy the Enablement Requirement Working examples and prophetic examples are routinely used to satisfy the enablement requirement. To reduce any confusion. [FN63] and prophetic (or "paper") examples may be used. [FN56. the claims were not unduly broad because there was sufficient disclosure to enable one skilled in the art to reasonably experiment to determine the correct dosage levels for all of the versions of the invention.3. If the specification in fact expressly teaches against a portion of the claimed range. Prophetic examples describe the manner of producing an embodiment of the invention that has not already been conducted. Because the specification only enabled the production of hormone of *7-31 at most 2. it is recommended that prophetic examples be clearly labeled as such. rather than attempting to list each alternative separately. a court could hold as a matter of law that the specification is nonenabling.1] A claim directed to all methods that result in "seamless image compression" is invalid because the specification described only one embodiment of seamless image compression. it is important to limit the claimed matter to the scope that can be enabled in the specification.1] One example of a patent application that used a prophetic example was an application claiming a blasting © 2008 Thomson/West.3 IUs per milligram. if the claims include a numerical range. [FN56] Therefore. prophetic examples use the present or future tense. and do not use the past tense.3. [FN58] However.

Ooms. In re Naquin. No Claim to Orig. 1994).P. 166 U. [FN42.2d 1544. 2001). Cir. *7-34 The court held that there was sufficient information and guidance to enable someone skilled in the art to select the proper components and produce the invention with reasonable experimentation. Cir.S..S. 1981).S. In re Howarth. Cir.2d 1241 (Fed. Id.Q. v.P.C.1] the claims were broad enough to cover variations of monoclonal antibodies that first appeared in the literature after the filing date of the application at issue. but in the disclosure suggested numerous salts. 654 F. 689 (C. 1987). [FN65. In re Winkhaus.3. and listed the desired properties of these materials that would produce the blasting agent.S. 816.S. 1946).2d 786. 1970). M.S. 15 U. [FN28].P. Int'l Standard Elec.. v..2d 931. [FN36].2d 1293 (Fed.C.P.S.Q.2d 637.P. Int'l Standard Elec. 537 (C. v. 169 U.2 (Cite as: PLIREF-PATAPP s 7. [FN33]. 188 U. fuels.P.A.P. 1991). Cir.C. [FN31]. 527 F. 236 F. Christianson v.1]. Id. § 2164. US Gov.P. [FN34].2 FOR EDUCATIONAL USE ONLY How to Write Pat. 204 U. Works.Q. 822 F. Wadsworth Mfg. [FN35]. 129 (C. Ooms.Q. Cir.C.2d 863. [FN37]. [FN38]. [FN65] § 7. Telecom. 1946). PATENTS 7-26 (1989).Q.3d 684. Operating Corp.9 The Enablement Requirement Does Not Extend to Technology That Arises After the Time of Filing A claim can be written so broadly that it encompasses after-developed technology. 994 (1981). Chesapeake Energy Corp.E. cert. [FN27].S.A.Q. 236 (C. 2 D. In re Sherwood. [FN30]. 439 F.A.C.Q. N.P.2d 73.2) Page 6 agent.P.Q. Co.C.C.P. 929 F. 427 F.Q. 1968). 157 F. Cir. 3 U.S. 398 F.S.2d 668 (Fed. [FN29]. 32 (D.P.P. Callicrate v.. 613 F. [FN42]. v. 32 (D. The inventor had not yet produced an embodiment. Genentech.3d 1555. Inc. Cir.2d 73.A. 908 F. 450 U. For example. [FN39]. Datapoint Corp.A. in Chiron Corp.P.S. The inventor included prophetic examples based on actual experiments that differed slightly from the ones required to produce the invention.. In re Gardner. 57 U. 31 U.3.3.2d 809. 1971).3d 1361 (Fed. 29 F. 70 U.Q. 70 U. Res. Cir.P. 1975).2. .3.A.Q.P.2d 1321 (Fed. Colt Indus. In re Buchner. 427 F. [FN40].C. Corp.2d 1232.2d 1161 (Fed.. CHISUM. 210 U. denied. In re Moore.Q. and emulsifiers. Inc.P. 138 (C. 2005). 317 (C.P.S. v.S.PLIREF-PATAPP § 7.P. 1980).. Corp.2d 103. 1990). 158 U. v. Genentech. 157 F. [FN41]. Wellcome Found.P. Application s 7. see also Union Pac. There is no obligation for such a broad claim to enable non-existent technology. [FN32]. Inc. © 2008 Thomson/West. Inc.

Vega Servo-Control. Cir. 858 F. [FN50]. United States v. [FN58.S. 1969). 1999).. 448 F. 2005). Magnetic Separation Sys.2d 1217 (Fed. Enzo Biochem. 429 F.Q. [FN58].2d 833.P.S. 961 (Fed. [FN49]. 2004). Genentech. 858 F. 8 U.C..2d 1400 (Fed.P.P. [FN48]. [FN54]. In re Wands. 857 F.P. United States v. Inc. In re Wands.Q. 1970). Cir. 427 F. Cir.2d 1217 (Fed. 2004). 1990). Earth Res.2d 1217 (Fed.3d 1362.3d 1247 (Fed. . Inc. 702 (C. v. 857 F. 1988). 1988). Falkner v. Lizardtech Inc.. Telectronics. In the author's view. [FN58. [FN59].. White Consol. Id.2d 833.2]. 1983). 8 U. Mapping. Cir.. 1980). [FN52]. 363 F. 427 F. US Gov.P. 8 U.2d 778. FABER.1]. 1999). Cir. Cir.P. 8 U. Cir. 8 U. Cir. Fromson v.2d 731. Chiron Corp.3d 1234. v.P. Inc.. Advance Offset Plate. 613 F. Inc.S. 857 F. Inc.C.Q..3d 1247 (Fed. In re Fisher. Rasmusson v.2d 1400 (Fed. 2005).. 166 U. [FN52.S.Q. Cir.2d 1400 (Fed. 20 U.P. 68 U.P. [FN45]. 8 U.A.. Genentech. 166 F.S. 413 F. 2006). LANDIS ON MECHANICS OF PATENT CLAIM DRAFTING 148-50 (3d ed. Telectronics. Works. 204 U. Inc. 8 U.P. 1988). Telectronics. Inc.. 1137 (Fed. Genentech. Inc.P. 424 F.S. Cir. 1988).2d 1129 (Fed.S. 363 F. Cir.A.S.S. Cir. [FN57]. v.2d 1217 (Fed.Q.S.P.Q.Q. Calgene.S. Engliss.. 2d 1280 (Fed. it appears that the Lizardtech court was actually stating that there was a failure to satisfy the enablement requirement than the written description requirement. 18 (C. Cir. No Claim to Orig. Cir. [FN53]. 344 F. AK Steel Corp.2d 778. Application s 7. [FN52. Inc..2d 1217 (Fed. Cir. v.2d 778. 161 U. [FN44]. 1988). 1970). 218 U. [FN56]. 363 F.P.P.Q.2 (Cite as: PLIREF-PATAPP s 7..P.P. Chiron Corp.2d 819.Q.2d 1565. 1988).S.1].P.2d 788. In re Koller.2d 778..Q. 713 F.C.S. 857 F.3. In re Fisher.Q. 858 F. Inc..2d 731. United States v. 219 U.2d 731. Nat'l Recovery Tech. In re Wands.3d 1357 (Fed. 1983). v.3. 720 F.Q. [FN46].Q.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Cir.3d 1247 (Fed. 166 U. Clontech Labs. Telectronics.Q. [FN56. In re Vaeck. 2004). Inc.Q.S. Invitrogen Corp.PLIREF-PATAPP § 7. Cir.P.2d 1671 (Fed.P.3d 1052 (Fed. 1988). Smith KlineBeecham Corp. Inc. v.Q.A. Cir. Inc. v..C.3d 1318 (Fed. 410 F.3.. In re Metcalfe. 188 F.S. R. 8 U.S. 18 (C.S. 49 U. © 2008 Thomson/West. [FN55].2d 1438 (Fed. Cir.A.P.P. Cir. Indus.2d 1378. 1991). Inc.Q.. United States v. v. [FN49.S.3d 1190. Inc.1]. Inc.P.Q. v.2]. 2003). 857 F. 2005).2d 778. Cir. Chiron Corp. Telectronics. 1988). [FN47].1]. 52 U. Inc.2) Page 7 [FN43]. [FN51].3d 1336 (Fed. Sollac. 789 (C.

§ 608. 325 F. [FN64.3.1]..C.P. Hoffmann-La Roche. 66 U.P.P.2 (Cite as: PLIREF-PATAPP s 7. Cir.PLIREF-PATAPP § 7. 1086. v. 58 C. 224 U. v. [FN65. END OF DOCUMENT © 2008 Thomson/West.2d 904 (C. Cir.A. [FN61].. 750 F.3. 2d 1385 (Fed. Cir. [FN64]. . 2004).. v.P.I.P. Application s 7. M.S. [FN62].3d 1347 (Fed.2) Page 8 [FN60]. Chiron Corp. 2005).3.01(p). Gen.Q.P. § 2164. Bio-Tech. Atlas Powder Co. [FN65]. 2003). 1984). Novo Nordisk Pharms. Genentech. Works.3d 1247 (Fed. 323 F. 66 U. 429 (C.3d 1346. Cir. E. v.Q.3d 1354.S.E. 1971). In re Fouche. Promega Corp. Id.Q.2 FOR EDUCATIONAL USE ONLY How to Write Pat.P. [FN63]. 424 F. 409 (Fed.S.1].P. Intel Corp. 1970). US Gov. Cir.C. No Claim to Orig..A. v.E.S.2d 1569.2d 1237.P. Inc. Inc.Q.P. 169 U.A. 439 F. Inc. See M. Du Pont de Nemours & Co. 422 F.C. 363 F.P.2d 1341 (Fed. In re Borkowski. Northrop Grumman Corp.. Corp. 2003) (using past tense in an example to suggest falsely that test was performed resulted in finding of inequitable conduct).02.

1 FOR EDUCATIONAL USE ONLY How to Write Pat.Q. US Gov. No Claim to Orig.2d 1143 (N. R. Moreover. Elec.S.. . Usually there is no way for the examiner to know that the inventor has a better mode than disclosed for carrying out the invention. 180 U.Q. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. identifying what should be disclosed as a best mode is both a subjective and a factual determination.4. [FN70].4. 1973).4. [FN68]. Inc. aff'd. Application s 7. That cannot be done.P. § 112. 1990).S.. Guidelines for the examiners with regard to examining and application for the best mode requirement are in the Manual of Patent Examining Procedure.1 What Is the "Best Mode" Requirement? Section 112 of title 35 requires that the "specification shall . based on an assessment of the inventor's state of mind at the time *7-35 the patent application was filed and whether the inventor knew of a better mode of practicing the invention at that time..4. Aluminum Corp. Cir. then an otherwise valid patent could be held unenforceable [FN68] and the court might even find inequitable conduct.S. October 2006 Chapter 7: Writing the Specification § 7. Arco Indus. when drafting the specification.P. v.1 END OF DOCUMENT © 2008 Thomson/West. Foseco Int'l Ltd. Dale Elec.E. The consequences of concealing the best mode can be disastrous. Ill.4. .D. [FN70] [FN66]. [FN69]. v. it is extremely important to comply with the "best mode" requirement. 10 U. 35 U. § 2165. Therefore. An accused infringer can invalidate the patent if the best mode has not been disclosed.2d 923 (Fed. Thus. [FN69] with an award of attorneys' fees to the accused infringer. if a court finds that the inventor has intentionally concealed this information.1 (Cite as: PLIREF-PATAPP s 7.2d 804 (Fed.P. 488 F. v.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Inc. 1990).2d 382.. [FN67] Frequently inventors want to hold something back to maintain trade secrets as a backup to patent protection.P.C. It is extremely rare that an examiner rejects an application because of failure to disclose the best mode. PLIREF-PATAPP s 7. [FN67].L. M. 913 F.C. Chemcast Corp. The patent will be invalidated if (1) the inventors knew of a better mode of carrying out the claimed invention than they disclosed in the specification and (2) the inventors concealed that better mode.PLIREF-PATAPP § 7. Consol. . Works. 1988).. set forth the best mode contemplated by the inventor of carrying out his invention." [FN66] An inventor cannot receive a patent if the best mode has been concealed.4 Satisfying the "Best Mode" Requirement of § 112 *7-34 § 7. 225 (1st Cir. Corp. Cir. 910 F.

The reason for this conclusion was that neither the starting material nor the method of making it was disclosed. even without a full disclosure of the components in the fluid. courts focus on the claimed subject matter and generally do not require disclosure of non-claimed parts or materials that are readily available. No Claim to Orig. An unclaimed method of synthesis need not be disclosed to *7-37 satisfy the best mode requirement. because the fluid was readily available and not claimed. the patent was valid. The following discussion provides some guidelines. disclose all. *7-36[ FN71] However. in dicta. § 7.4 Satisfying the "Best Mode" Requirement of § 112 *7-35 § 7. follow the "rule of doubt. [FN75] In addition. . but did not claim the disk cleaning fluid. The best mode requirement is not limited to elements specified in the claims. the "best mode" requirement was satisfied. the subject matter claimed must be defined because it is the best mode "of carrying out his invention" that must be described. October 2006 Chapter 7: Writing the Specification § 7. the best material for the golf ball core was not disclosed. [FN76] © 2008 Thomson/West. Application s 7. and because suitable materials were known and readily available. For example. [FN73] Similarly. [FN74] However.PLIREF-PATAPP § 7. and how much need be disclosed about it. a patent that claimed a rifle and rifle parts was challenged on the basis that the patent did not disclose the best method necessary to make the parts interchangeable with those of an M-16 rifle. an application claimed a machine that cleaned computer disks.2 FOR EDUCATIONAL USE ONLY How to Write Pat.4. when in doubt. Since the application did not claim that the parts were interchangeable with an M-16 rifle. before it can be determined whether a patent application satisfies the "best mode" requirement.4. the application need not disclose the best method to obtain an unclaimed use because the "best mode" requirement focuses only on the claimed invention. Works. It is much less likely that a patent will be invalidated for disclosing too much than too little. the Federal Circuit has stated that a best mode violation can occur if a preferred route to obtain unclaimed starting material for a claimed compound if the undisclosed preferences have a material effect on the properties of the claimed compound.1] In another example.1 The "Best Mode" Requirement Applies Only to Claimed Subject Matter and Unclaimed Elements Necessary to Operation of the Invention First. when in doubt. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.2 (Cite as: PLIREF-PATAPP s 7. Nevertheless.4. However. [FN74. a patent for a pharmaceutical composition did not violate the best mode requirement because of the failure to disclose the preferred method for synthesizing the starting material. US Gov.4. in an application that claimed a new outer shell for golf balls." that is. because the application did not claim the golf ball core material. [FN72] For example.2 Guidelines for Satisfying the "Best Mode" Requirement A constant problem for patent practitioners is what exactly is the best mode. it adequately disclosed the best mode.2.4. Again.

2.4. For example. [FN78] § 7. In other words. Application s 7. [FN81] As one mode may be best for quality and yet another for commercial efficiency. as long as it is the best mode conceived of by the inventor at the time of filing.4. the inventor has to disclose only what he or she honestly *7-40 believes to be the best mode. [FN77] *7-38 The best mode requirement applies not only to the claimed invention.2 Only the Best Mode As of the Filing Date Need Be Disclosed The "best mode" requirement applies to the best mode only on the day of filing. this subjective test cannot be used to hide the best mode. . This problem often occurs with patents that involve chemical compositions.PLIREF-PATAPP § 7. as long as the inventor does not know of the optimum mode or does not appreciate that the optimum mode is the best mode. [FN77. the patent was upheld. it still might weigh against the inventor's favor.2 FOR EDUCATIONAL USE ONLY How to Write Pat.4. The specific source code need not be described if creation of that source code is within the skill of the art. the software used to practice the invention even though the software was not part of the claims. but also to unclaimed elements necessary to the operation of the invention. but may turn out to be commercially infeasible. if the inventor later discovers a better method. at least implicitly. § 7.2.2 (Cite as: PLIREF-PATAPP s 7. if a method that later may be used for commercial production is one that the inventor is aware of on the filing date.4. [FN80] Despite the fact that a different commercial embodiment is not per se evidence of a violation of the "best mode" requirement. No Claim to Orig. Years of experimentation can be required after the patent application is filed to determine the best mode for commercial production. the patent will be upheld if at the time of filing the inventor discloses the best known information about desired characteristics of the compound. and not what an expert believes in hindsight is the best mode.2. Therefore.1] For example.4. it would be impossible to use a purely objective test. the best mode disclosed does not have to be the actual optimum mode.3 The Best Mode Is Not Necessarily the Eventual Commercial Method The disclosed method does not necessarily need to be the method eventually commercially adopted.2] § 7. a patent for an amplifier was challenged on the basis that it did not disclose the best mode to boost a particular type of voltage. namely wordline voltage. as long as that method was not considered better than the one specified when the patent application was filed. the patent will not be invalidated. Because the inventors only claimed general amplification and not any specific type of amplification.2) Page 2 In another example. [FN79] Often the disclosed method might result in the highest quality *7-39 product.4. The inventor cannot simply rely on a particular whim. a patent for an explosive was upheld when the inventor had not decided on the exact final formulation at the time of filing. However. [FN77. and did not consider wordline voltage boosting to be the best feature of their invention. but must seriously consider all possible modes before deciding © 2008 Thomson/West. One way to determine the best mode is to ask the inventor what method he or she would use if he or she were to produce the invention today.4 The Specification Need Only Disclose What the Inventor Subjectively Believes to Be the Best Mode Because the test for whether a patent satisfies the best mode is subjective. an inventor for scanning integrated circuit chips utilizing computer software needed to disclose. Works. it should be described in the specification. In this situation. but did include examples that demonstrated the characteristics that led to an effective explosive. US Gov.

because someone skilled in the art of plastics molding would have had to engage in undue experimentation to avoid gas leakage. § 7.4. § 7. or even the trade secrets of another. However.4. even accidental concealment can violate the "best mode" requirement. phenolics or silicones. in a patent application for a process to mold foamed thermoplastic products. Because of the serious consequences of intentionally failing to meet the "best mode" standard. The specification must contain a description of the manner and process of making and using the best mode in such full. a reasonable amount of experimentation is allowed. Works. Application s 7. and it must contain all information necessary for someone skilled in the art to understand and use the best mode. The best mode need not be developed *7-41 by the patent applicant.2. it must be disclosed.4. concise. . in order to ensure the patent's validity. [FN82] Therefore. where the specific type of material required for the best mode is known. the enablement requirement of 35 U. [FN85] An inadequate description of the best mode invalidates a patent. and exact terms as to enable any person skilled in the art to make and use the best mode. No Claim to Orig. the valve and extruder were illustrated with a blank box. [FN87] For example. the "rule of doubt" should be followed: all modes that might be preferred by the inventor should be disclosed. whether or not he or she is the actual inventor.5 Violation of the "Best Mode" Standard Can Be Accidental Violation of the "best mode" standard need not be intentional. [FN83] § 7. [FN88] While the description of the best mode cannot require undue experimentation to reproduce the best mode.2 FOR EDUCATIONAL USE ONLY How to Write Pat. the patent will be upheld. For example.7 The Description of the Best Mode Has to Be Objectively Enabling How much information is needed to disclose the best mode adequately is determined by an objective test. it is best to clearly disclose all information that might be relevant to the best mode.2) Page 3 which to disclose as the best mode. and the patent was invalidated. once the "subjective" best mode is identified. US Gov. the adequacy of the description of the best mode is determined objectively. clear.6 The Best Mode Must Be Disclosed Even If the Applicant Did Not Invent It The best mode must be disclosed even if the applicant was not the discoverer of the best mode.4. Since the subjective test for best mode focuses on what the inventor knew at the time of filing.PLIREF-PATAPP § 7. It may be the commercial product of a third party. [FN84] Thus." To reproduce the invention. The inventor claimed that one of ordinary skill in plastics molding could select the correct valve and extruder. This is illustrated by a case where a patent application for a resistor referred to an insulative fluid injected between the resistor and the metal housing as "materials in the classification of epoxys. In other words.2. If there is sufficient information for a person skilled in the art to practice the best mode of an invention after a reasonable amount of experimentation.4. if the applicant knew of a better method for practicing the invention. to achieve the best mode. [FN86] The description of the best mode must be sufficiently clear that someone skilled in the art does not need to engage in undue experimentation to reproduce the best mode.2 (Cite as: PLIREF-PATAPP s 7. the inventor had used a unique valve system that was specially designed to avoid gas leakage. the specification should not refer to a general category of materials.C. [FN89] In a case involving the expression of a cloned gene.4. *7-42 This was deemed an inadequate disclosure. someone skilled in the art would have had to conduct undue experiments to determine the best insulative fluid. the vague descriptions amounted to concealment. Because the inventor knew which epoxy would be best to carry out the invention.S. which was not disclosed.2. The description of the best mode should be clear and concise. the Federal Circuit held that it was sufficient © 2008 Thomson/West. § 112 applies to the best mode.

9 The Disclosure of the Best Mode Cannot Rely on Prior Art that Is Nonconventional or Not Widely Known The inventor cannot rely on prior art to satisfy the "best mode" requirement when the prior art is not widely known to someone skilled in the art. [FN91] Also. When the best mode uses a material that is readily available under a trademark or trade name.4. [FN93] Because the resolution of this question in court usually will rely on expert testimony. Moreover. . in a case that involved a patent for human erythropoietin produced by expression of a cloned gene. and one skilled in the art could follow the procedure. that requirement only applies when the materials are not available or can be produced only with undue experimentation. it can be difficult when writing an application to predict exactly which prior art is well known and conventional.PLIREF-PATAPP § 7. and thereby increase the thickness of the walls of the pipe. and arbitrariness. The details of the use of trademarks are described in section 7. the applicant should disclose both the generic properties of the preferred material and the trademark and the supplier of the material used. even when the prior art is widely known. [FN90] If the materials necessary to practice the best mode are not commercially available.4. In those cases. US Gov.4. the inventors should have made the antibody available in a depository.2 (Cite as: PLIREF-PATAPP s 7.8 The Use of Trademarks to Satisfy the Best Mode Requirement The description of the best mode must be clear so that one skilled in the art does not need to engage in undue experimentation to reproduce the best mode. The inventor's argument that the mechanism of using a second gear to slow down rollers was known in the prior art was unsuccessful. including the scope of the invention. [FN96] In another example.2. the material needed to practice the best mode must be available in a depository. in order to resolve any doubt. The inventor did not disclose that in order to slow the extrusion of the piping material.4. intentional concealment of manufacturing information necessary to practice the best mode is still a violation of the "best mode" requirement. For example.2. it is recommended that both the trademark and specific properties and manufacturer be sufficiently disclosed. it was not necessary to disclose the exact concentration because one skilled in the art of gene expression *7-43 could experiment and determine the best concentration within a reasonable time. in a similar case that involved a patent for purification of a protein using monoclonal antibodies. *7-45 skill in the art.4. [FN92] *7-44 § 7. the inventor can be required to provide them. § 7.2) Page 4 for the inventor to disclose a range of methotrexate concentration needed to amplify expression of the gene. uncertainty. To avoid indefiniteness. it is sufficient to disclose the procedure in the application and no deposit is necessary. No Claim to Orig. Works. The court disagreed and held that where all of the materials needed to obtain the antibody are commercially available. and evidence regarding the inventor's state of mind. [FN94] The inventor's intent is determined from the factual circumstances of the case.2 FOR EDUCATIONAL USE ONLY How to Write Pat. This especially applies to biotechnology patents.5. the inventor was not required to deposit the cells used for the best expression because they were readily available. An example of a court's holding that the inventor could not rely on prior art concerned a device that formed plastic pipes with a variable wall thickness.6. even if it is well known in the prior art. [FN95] Therefore. Application s 7. However. it is recommended that any information crucial to the best mode of the invention be disclosed.10. the party challenging the patent claimed that because of the laborious procedure required to screen the monoclonal antibodies to obtain the highest quality protein. for which the necessary materials can be obtained only from nature. a second gear was needed to operate rollers that pulled the pipe out of the extruder. a patent for a valve stem seal was invalidated because the specification did not disclose © 2008 Thomson/West.

2 (Cite as: PLIREF-PATAPP s 7. [FN99] A patent is not rendered invalid for failure to disclose the best manufacturing technique for an invention when that technique is no more than a routine manufacturing choice.4. [FN97] § 7. because at the time of filing the inventor knew that the best mode of recording the data required specially designed magnetic audiocassettes. The slurry described in the specification was not only not the best mode. the "best mode" requirement can be held to be unsatisfied due to concealment. boron. a patent was upheld where the inventor claimed the expression of a cloned gene into protein. commercially available audiocassettes were used to record the data. Instead. The inventors unsuccessfully argued that this treatment was known in the prior art. zirconium. [FN100] If too many possibilities are present. the application suggested treatment with additives. While the inventor claimed that at the time of filing. Therefore. The court noted that the function of a patent specification is not to be a detailed production schedule.2. . a patent was upheld in which the inventor failed to disclose that embedment molding was the best technique for manufacturing certain devices containing thermochromic materials. [FN104] © 2008 Thomson/West. including the brand name and supplier of components of the invention. It involved a patent for carbon disc aircraft brakes. The best mode can be included as one of a number of possibilities if it is clear to someone skilled in the art which is the best mode. silicon carbide. Application s 7. and titanium.4. While the preferred mode was known at the time of filing to require a ditungsten-monoboride additive.4. For example. In another case. the patent was invalidated for not disclosing either of the two best modes. For example. the specification left some constituents unnamed and stated false proportions for the named *7-48 constituents. US Gov. that was not disclosed.4.10 The Best Mode Need Not Be Identified As Such. as it was the only cell line listed that was known to properly express and process human protein. This is the ultimate type of concealment and must be avoided. That was misleading.2 FOR EDUCATIONAL USE ONLY How to Write Pat. in a patent application for a batch data processor that claimed a novel method of recording data on magnetic audiocassettes. and for being deliberately misleading by not revealing the type of audiocassette necessary to practice the best mode. The Federal Circuit upheld *7-46 the patent because the optimal cell line was obvious to someone skilled in the art of human gene expression. [FN102] § 7. No Claim to Orig. The patent was invalidated because *7-47 it was not obvious to someone skilled in the art which additives. it is safest to designate the best mode clearly and not include it among a list of possibilities in an attempt to conceal it.2. the application specified that normal. in which proportions. The court further held that the "best mode" requirement does not necessarily cover the selections of each of the specific steps and materials in a process of manufacture. the inventor did not even name that brand. [FN98] For example. and the application described ten different cell types that could be used for expression. In an unpublished opinion. the inventor deliberately included misleading information. were necessary.PLIREF-PATAPP § 7. a patent was invalidated because the list of possible combinations was too large. Works. [FN101] Therefore. But It Should Not Be Hidden The best mode need not be specifically identified as such. The Federal Circuit upheld the patent because the molding technique was a routine manufacturing choice known to those skilled in the art. and regular audiocassettes performed poorly.2) Page 5 the best method of obtaining good leakage control by a fluoride surface treatment. including tungsten. one particular brand of commercially available audiocassettes performed well. While the preferred mode of producing a ceramic foam filter consisted of a ceramic slurry of known ingredients and proportions. it was inoperable.4. [FN103] This example illustrates how important it is to fully disclose the best mode known at the time of filing.11 The Public Cannot Be Misled As to the Best Mode Patent applications do not satisfy the "best mode" requirement if they are misleading as to the method of obtaining the best mode.

a patent directed to a particular circuit for a video display did not violate the best mode requirement when the patent application made no reference to a video display as originally filed. [FN112] the Federal Circuit held. One method. the specification for the liquid cleaner was "a non-residue detergent solution such as Randomex cleaner No. [FN109] When there are no substitutes for the proprietary product. "[t]he various applications to which an invention can be put are not the focus of the best mode requirement. the components of the proprietary product must be disclosed. the "best mode" requirement must still be strictly followed and the information has to be disclosed.2 (Cite as: PLIREF-PATAPP s 7. No Claim to Orig. . and even the best use.2. [FN106] In complex technologies. [FN105] § 7.4.4.PLIREF-PATAPP § 7. [FN108] § 7. in a patent application for a computer disk automated cleaner. the patent's exclusionary rights would be extended beyond the protected period because even one skilled in the art could not reproduce the invention without purchasing the program. [FN111.10." the "best mode" standard was satisfied. the claim was invalid because of the inventor's failure to disclose the best mode. For example.2) Page 6 Another way to conceal the best mode is to fully describe an alternate method while insufficiently disclosing the best mode. where an inventor knew of a preferred hardness of a constituent material of a claimed invention and specially ordered such material to make the only embodiment of the claimed invention.4. in Brooktree Corp. An integral part of the system used a computer program that was a trade secret of another company. a working example is an especially desirable way to disclose the best mode. and invalidated the patent. Even though it may be beneficial to the inventor or supplier not to disclose that information to the public. was only briefly referred to. 50281. a working example is not required if there is sufficient disclosure for one skilled in the art to practice the best mode without undue experimentation. Works. Use of a trade name to identify a product can pose difficulties if no other product can be used to satisfy the "best mode" requirement. the Federal Circuit invalidated a patent for a gas laser where the inventors attempted to conceal the best mode. an inventor claimed a computerized control system for machine tools.13 Trade Secrets and the Best Mode Are Incompatible Trade secrets pose a problem. This also violates the "best mode" standard. US Gov. Advanced Microdevices.4. and no suitable substitutes were available. Application s 7. v." Thus." Because the inventor generically described the proprietary Randomex as a "non-residue detergent solution. [FN111] Section 7. or an invention *7-49 requires the use of material that is a trade secret of a supplier and is only known by its trade name. Two methods of constructing a component of the laser were disclosed.6 below discusses in more detail the use of trademarks in the specification. It is important in such a situation to at least generically describe the trade name product so that substitutes can be obtained. but failed to disclose anywhere in the specification the material hardness or the supplier and trade name of the preferred compound. The Federal Circuit held that such disclosure would mislead the reader to believe that the fully detailed method was the best mode.4. while a lesser alternative method was described in full.2 FOR EDUCATIONAL USE ONLY How to Write Pat. § 7.1] For example. Often a product is designed specially for a customer by an inventor. For example. The Federal Circuit invalidated the patent because it failed to disclose the program. [FN107] However.4. The court's reasoning was that if trade secrets were not disclosed in patents where no substitutes were available.2. the best mode.5.2. of the claimed invention need not be disclosed. but only generally de- © 2008 Thomson/West. For example.14 The Best Mode Requirement Does Not Include Unclaimed Uses of the Invention The best mode of practicing an unclaimed use.12 A Working Example Is an Effective Way to Disclose the Best Mode A working example can satisfy the statutory enablement requirement and can also effectively disclose the best mode. [FN110] *7-50 Similarly.

Q. v. M. © 2008 Thomson/West.P.Y 1980). Lockformer Co.2d 585. Instruments. 219 U. 758 (Fed.S. Cir.2d 1050 (Fed. Med. No Claim to Orig. Cir.2d 1544. the applicant added the phrase "for video display" to the preamble of the claims pursuant to a rejection under 35 U. 1987). Binks Mfg. 35 U.Q.P.S. 1988). Cir. . v. Tex.2d 1054.Q. 7 U. 1983).Q. 221 U.P.. Robotic Vision Sys.S. v. 2002).P. 758 (Fed.Q.2d 1737 (Fed. 244 F.S.3d 1255 (Fed.Q. What's Better.P. 1014. Cir..P..P. Bernier. 449 U. 3 U.2d 1318.P. Studiengesellschaft Kohle v. 1985).. v. Nat'l Gypsum Co. v. Cir.P. Cir. 946 F.P.3d 973. In that particular case. Samsung Elecs. Application s 7. Mass. v. v.2 (Cite as: PLIREF-PATAPP s 7.2d 923. Inc.P. 849 F. Aluminum Corp. 1455. Acushnet Co.S.N. Inc. 60 F. v. 616 F.2d 1321 (Fed. Inc.. Randomex. [FN77. 58 U. [FN75]. 222 F. 1998). Arco Indus. Inc.Q. 207 U. Cir. Cir. Mentor H/S.D. Inc.. Inc. Supp. 913 F. 206 U. 1989).. 74 F. 871 F.E.Q. 116. United States.. Du Pont de Nemours & Co. Inc.2d 1315.. Adams. Co.P. 226 U. 55 U. Barr Labs. 1991). Spectra-Physics. Schein Pharms. [FN72]..3d 1255 (Fed. Telecom Ltd.Q.S. 1983). Inc. Inc. Supp.Q. Id.2d 1388 (Fed.2d 585.3d 1374.4. Co. v. Cir. v.2d 1569. Inc.3d 785. Cir. 116. 60 F. DeGeorge v. Cir.. 822 F.S.2d 1351. Eli Lilly & Co. DeGeorge v. Bayer AG v.P.2]. [FN76]. Tex.S..S.1]. § 608. v. Cir.. United States Int'l Trade Comm'n. Cir. 1997).S.P.2d 1257 (Fed. Supp.2d 1050 (Fed.2d 1524.. [FN82]. [FN81]. Inc. Graco.S.4. [FN74]. 849 F.S.Q.S.S. Patent Practice.Q.P. Spalding & Evenflo Cos. 112 F. Graco. [FN73]. What's Best--The Best Mode Requirement in U. § 112.2d 1033. PAT.3d 1365. v.2d 1619 (Fed. 257 (E.Q. & TRADEMARK OFF. Res. [FN80]. Corp.3d 1306 (Fed. Scopus Corp. v. 7 U. Checkpoint Sys.. 1995).D.. 768 F. v. 473 (Fed.P.. Binks Mfg. 215 F. 16 U. Works. 768 F. 490 F. 1989)..2d 1241 (Fed. 55 U.2d 1528 (Fed. 257 (E. Operating Corp.4.S. Inc. [FN77. [FN79]. Checkpoint Sys.S. Supp. N.. Engel Indus. 1997). Ill. 1987). 207 U. 226 U. Cir.Q. 588 F.). Hughes Aircraft Co.D.Q.S.P. 42 U. 10 U. [FN84]. Bernier.3d 785. 718 F. 827 F.Y. v.2 FOR EDUCATIONAL USE ONLY How to Write Pat. 1980). 224 U. 35 U. Consol.P. Inc.P. Scopus Corp. Atlas Powder Co.. SOC'Y 811 (1991).. Randomex. 208 U. [FN77]. 1995).I. 490 F.2d 1143 (N.1].P. 1023.P.Q. Knogo Corp.S. 88 (1980). View Eng'g. Device Alliance.D. Corp. Christianson v. 147 F. v.3d 1163. United States Gypsum Co.PLIREF-PATAPP § 7.S. Applied Med. 577 (5th Cir. 11 J. 47 U.S. 1984).Q. Cir. Eastman Kodak Co. 301 F. US Gov. [FN74. 750 F.. 10 U. 13 U. 3 U.Q. [FN78]. v.S. 37 U. Cir. 1988).Q.C.2d 1065 (Fed.2d 1289 (Fed. 1988).2) Page 7 scribed use of the display in a data processor. [FN83]. Co.2d 1081 (D. v.P. Cir.Q.Q.P. 2000). 717 F. v. [FN71]. cert.2d 1318.Q. aff'd.P.3d 1209. 2000). denied..S. Inc. Knogo Corp. 409 (Fed. Foseco Int'l Ltd.S. Coherent.3d 1281.S.S.01(a). Cir. 426 (N. Inc.P.Q. 1985). v.2d 1609 (Fed.P.Q. Cir. 1996).N. United States Surgical Corp. Colt Indus.Q.P. Chemcast Corp.S.S..S. E..

954 (1987). v. 21 U. Acvious. 1990). 1990). 200 U..P. 18 U. [FN103]. [FN91]. 412 (7th Cir.Q.Q. 180 U. 1977). 1991).Q. [FN99].P..S.2d 1123 (Fed. Inc. 215 U.Q. Ill.2d 382.P. Cir. 913 F. Consol.2d 1524. Inc.S. Cir. v. [FN101]. 197 (1st Cir.Q.S.2d 1200. Cir. 16 U.2d 1123 (Fed. [FN100]. Id. In re Stephens. N..4. 1982). v.2d 1123 (Fed. v. Acvious.Q.2d 1565.S. R. v. 200 U. Spectra-Physics. [FN108]. Corp.P. Thyssen Plastik Anger KG v.P.2d 1001 (Fed. 659 (C.2d 904 (C. 1990).P.2d 400. 860 F. 950 F.2d 1033 (Fed.2 (Cite as: PLIREF-PATAPP s 7. In re Borkowski.P. 484 U. 193 U. Cir.S. Arco Indus. 910 F.P.S..P. 3 U. 927 F.C.2d 1143 (N. Union Carbide Corp. Coherent. 1 (6th Cir.2d 931.P. Induplas. v.Q. 927 F. [FN102]. Inc.Q.S..L.. [FN87]. Inc..Q. Inc. Cir. Application s 7. See Wahl Instruments. Id.2d 355. Inc. v. Inc. Inc. Wahl Instruments. Datapoint Corp. [FN90]. v. [FN107]. 8 U. 212 U. 1973).). 1991).. Amgen. Id. 18 U. 1978). 550 F. unpublished (Fed. Inc. Induplas. [FN92]. Inc.2d 1016 (Fed. Novo Industri A/S v. Amgen. .P. 21 U.P. [FN95]. 180 U.C.S.Q. Ltd. Inc. 1973). [FN93]. Cir. Dale Elec. R. 576 F. 188 U. Works. Chugai Pharm. 488 F. [FN86]. Wahl Instruments. v. In re Strahilevitz. Scripps Clinic & Research Found. Loral Corp. [FN106]..Q.P. 529 F. 1991).4.P. © 2008 Thomson/West. Borg-Warner Corp. Inc. Inc.A. [FN104].D. 1988).2d 1737 (Fed.. Chemcast Corp.Q. P'ship. 561 (C. Telecom. Cir.P. Aluminum Corp. Acvious. [FN97]. Chugai Pharm. No Claim to Orig. Cir.2d 1343. Cir.C. 576 F. 197 (1st Cir. 1982). cert. 1991).S.Q.S.. Co.. 1976).2) Page 8 [FN85]. Inc. Dana Corp. 15 U.S.. Travenol Lab.PLIREF-PATAPP § 7.2d 1321 (Fed.S.F.Q.2d 1200. 668 F.S.P. v.Q.P. 927 F.P...2d 1692 (Fed. 10 U.S.2d 1575. 21 U. Thyssen Plastik Anger KG v.2d 400. 225 (1st Cir. [FN98]. 677 F. Inc. v. 1991). Cir. v. [FN105].2d 1229.Q. [FN88]. [FN89]. Inc. Cir.P.P.2d 415. Co.. Inc.4. v.S. 488 F. [FN96].2d 1202.Q. Inc.A..Q. Inc.P. 827 F. v. 1970).S. denied. 1978).. Elec.S. Genentech.2d 1016 (Fed..Q. US Gov. v.2 FOR EDUCATIONAL USE ONLY How to Write Pat. 18 U. 1991).S. 1988).S.2d 804 (Fed.P.C..2d 923..C. [FN94]. 908 F. Elec.S. Id. 225 (1st Cir. aff'd. 422 F.L. Dale Elec.. 1990). Goodrich Co. Foseco Int'l Ltd.A. Cir.2d 382. B.

7 U. [FN112]. Arco Indus.4. 16 U. Samsung Elecs. N. Co.. Cir. Inc. Advanced Microdevices. Cir. 24 U. v.2d 788.2d 1401 (Fed. END OF DOCUMENT © 2008 Thomson/West. 913 F.2d 1065 (Fed. 215 F. Brooktree Corp.PLIREF-PATAPP § 7.Q. Inc. 977 F.4. [FN111].2d 1555.Q.2d 923. 849 F.S. Telecom Ltd.S.2d 585.S. 2000).P.P.S. v.S. v. 1990).2 (Cite as: PLIREF-PATAPP s 7. Cir. Randomex.P. [FN110].2d 1050 (Fed. Corp.Q. No Claim to Orig. 53 U. . 713 F.3d 1281. Indus. Chemcast Corp. 1988). 1992). Works.. 961 (Fed. Application s 7.2) Page 9 [FN109]..P. Inc. v. 218 U. Scopus Corp.2d 1033 (Fed. [FN111. v.4.1]..Q. US Gov. Vega Servo-Control.Q.2 FOR EDUCATIONAL USE ONLY How to Write Pat.. Cir.P. 1983). White Consol. Cir.

the one document that will certainly be reviewed by the court and the jury. satisfaction of the "best mode" requirement. the practitioner should try to persuade the listener that this is a great invention that deserves seventeen years of exclusivity. October 2006 Chapter 7: Writing the Specification § 7.1 Introduction The preceding sections of this chapter describe the legal requirements for writing a specification. Only after that is done is it time to start writing the specification. and explain the invention to that person in simple.5. the purpose of the remainder of this chapter is to close the gap between technical writing and writing an effective patent application. § 112. Therefore. is the patent. § 101 and § 112 in order to obtain a patent.S. However.1 (Cite as: PLIREF-PATAPP s 7. No Claim to Orig.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Works. It should be written to persuade judges and juries that the invention is worthy of protection. the specification is a "sales" document. this may seem difficult to do. patent attorneys and agents are not mere technical writers. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. The trial attorney will need to do that. and there is no reason the patent attorney or agent cannot do the same. the specification should be written in a style and using terminology that a jury can understand. By explaining the invention in those terms.5 Writing the Specification *7-51 § 7.5. To achieve this goal.C. The first purpose is to satisfy the minimum legal requirements of 35 U. the practitioner is forced to distill the invention to its essence. any good technical writer should be able to apply these legal principles and write a patent application that satisfies the requirements of 35 U. and that will make its way into the jury room." As another example. a mechanically complex burner tip for burning fuel oil in a power plant can be described as "a burner that produces low amounts of air pollution because nozzles of the burner inject the fuel oil in a special fast burning configuration. secretary. Therefore. It should be written to persuade the examiner that the application is for a meritorious invention and the invention is worthy of patent protection. For example. nontechnical terms. such as a paralegal. During this discussion. no matter how technically complex the invention may be. They are retained by clients to obtain patents and have those patents stand up in the marketplace and. and thus 10% cheaper. the patent specification should be written to persuade the judge and jury to uphold the validity of the patent.5. . if challenged. In theory.C. or spouse.S. as in computer technology or biotechnology. The specification serves two purposes. In some instances. As discussed above.5. a description of the invention. © 2008 Thomson/West. The specification should include at least some description at this level.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.PLIREF-PATAPP § 7. in court. every invention can *7-52 be reduced to terms that the nonspecialist can understand. this includes a description of the utility of the invention." An excellent way to learn how to describe an invention nontechnically is to find someone who does not have a technical background. a new catalyst for making a polymeric resin can be described as "a new high surface area catalyst that allows polymer resins to be made 10% faster. Application s 7. and teaching one of ordinary skill in the art how to practice the invention. In addition to these basic legal requirements. However. US Gov. During litigation.

If possible. Nevertheless. It is recommended that those chapters be referred to whenever appropriate. when writing the specification. it is important to avoid referring to anything as "the invention" because. it is important to try to develop a theme.5. during litigation. the patentable "invention" has been redefined. Thus. • A durable. compact grill scraper that can be inexpensively mass produced.5. the theme written into the specification would be inaccurate. PLIREF-PATAPP s 7. If the invention is considered to be the patentable subject matter. More often than not. regardless of the technology. then in most applications.P. • A reliable home test for pregnancy. This description is in general terms for all applications." *7-54 The remainder of this chapter describes the various elements of the application using the arrangement required by 37 C.1 (Cite as: PLIREF-PATAPP s 7. That prior art laptop computer.5. it may be possible to obtain a patent stressing the advantages of a laptop computer with disk drives compared to a laptop computer without a disk drive.1 END OF DOCUMENT © 2008 Thomson/West. • The first successful heavier-than-air flying machine. . and that prior art is discovered only after the application has been filed..1) Page 2 An important concept popularized by Tom Arnold. Another important concept that needs to be considered when writing the specification is that the "invention" may not really be known until the decision of the jury is in. Works. Better terminology is to refer to something described in the specification as a "version of the invention" or an "embodiment of the invention. even the practitioner does not know exactly what the invention "allowed" by the Patent Office is going to be. • The first sex-improvement potion without risk of traumatic injury or hangover. Before putting pen to paper. not every application lends itself to the "theme" approach. Referring to the last example. • The first full-screen laptop computer with a battery life greater than six hours. assume a piece of prior art does show a laptop computer with a battery life greater than six hours. it is important to distill the essence of the invention into a short. Additional guidance for the specification for applications directed to specific technologies is presented in the chapters describing preparing applications for specific technologies.R. before writing the specification. Therefore. and the specification should be directed to that theme.1 FOR EDUCATIONAL USE ONLY How to Write Pat.5. Examples of suitable themes are: • The first easily processed polyimide resin stable at temperatures higher than 700° F. Application s 7. No Claim to Orig. § 608. until the verdict is in from the jury. Esq." There is no reason to wait for litigation to do this. catchy "theme. § 1. it is difficult to predict exactly what "the invention" is. In this situation.01(a). the theme should be developed.E. *7-53 • The first cure for baldness.F. US Gov. cannot accommodate floppy disk drives or hard drives. As soon as that is done.PLIREF-PATAPP § 7.P. it is necessary to amend the broadest claim in an application to obtain allowance. is that.77 and M. however. A potential pitfall with using the theme approach is that it can turn out that the theme is wrong because of art developed subsequent to writing the application.

R. . and thus it is recommended against wasting paper and attorney effort to include a section title followed by "Not Applicable. Works.F.PLIREF-PATAPP § 7.5.2 END OF DOCUMENT © 2008 Thomson/West.2 (Cite as: PLIREF-PATAPP s 7.F.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. consider using the titles specified in the following sections of this chapter for the reasons presented.F. § 1. PLIREF-PATAPP s 7.P. The "title of the invention" heading is not used--just the title appears. It is not recommended that these exact titles be used for all of the sections. Moreover.77(a).R. October 2006 Chapter 7: Writing the Specification § 7. No Claim to Orig. M. If no text follows the *7-55 section heading. there is no advantage to the applicant to use these section headings when no text follows.2 Parts of the Application The PTO wants the specification to be arranged in the following order: [FN113] (A) Title of the Invention (B) Cross-Reference to Related Applications [FN113. § 601. 37 C. § 1.1] (C) Statement Regarding Federally Sponsored Research or Development (D) Background of the Invention (1) Field of the Invention (2) Description of Related Art (E) Brief Summary of the Invention (F) Brief Description of the Several Views of the Drawing (G) Detailed Description of the Invention (H) Claims (I) Abstract of the Disclosure (J) Drawings (K) Sequence Listing (If on Paper) The PTO wants all section headings capitalized without underlining and without bold type. According to 37 C. the PTO wants the phrase "Not Applicable" to follow the section heading.R.P.78(a)(2).76.5.1].5. [FN113. can alternatively be placed in the Application Data Sheet of 37 C.5.5 Writing the Specification *7-54 § 7. because the use of these titles may not be in the best interest of the applicant.2 FOR EDUCATIONAL USE ONLY How to Write Pat. Accordingly.E. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. § 1. Application s 7. The Claims and Abstract start on a new page. US Gov." [FN113].5.

Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.5. It is recommended that the title be laudatory of the invention." arguably the examiner could apply against the claims any reference that teaches an apparatus for making any spherical article. A good title is usually what appears in the preamble of the broadest claim. in the application directed to a machine for making ball bearings. That argument has a better chance of success in the absence of a broad title. because that can make it more difficult to obtain a patent. and this avoids the necessity of changing the title for a PCT filing. . Metal Detergent and a Copper Compound. .5 Writing the Specification *7-55 § 7.3 Title The title of the invention should be placed at the top of the first page of the specification. . Optionally.5.. During prosecution. if the title were "Apparatus for Making Spherical Articles.PLIREF-PATAPP § 7." the title can be "Apparatus for Manufacturing Ball Bearings." partly because the title was "Lubricating Oil Compositions Containing Ashless Dispersant. Works. [FN115] where the Federal Circuit interpreted a claim to be directed to a composition rather than a "recipe. it can help in a trial." The Federal Circuit believed that in view of the title and the use of the word "containing.." only a final composition that contained all of the ingredients of the claims infringed the patent. . For example." the title can be "Polymeric Resin." "novel. Consider such titles as *7-57 "Improved Electrophoresis of Biological Fluids" "Safety-Improved Car Seat" "Fast Copier" "Dependable Camera" © 2008 Thomson/West. but technically accurate and descriptive." It is important to avoid making the title overly broad or generic. If the jury and judge understand that the PTO allowed issuance of a patent with a title containing a laudatory word such as "improved. If the preamble of claim 1 states: "A polymeric resin comprising . [FN114] It should be brief. v. Lubrizol Corp." this could at least subliminally impress the judge and jury as to the worth of the invention. For example. . preferably from two to seven words. Although this usually does not much impress a Patent Office examiner. [ZDDP]. and not a composition resulting from mere inclusion of starting ingredients defined in the claims." If the preamble of the broadest claim states: "An apparatus for manufacturing ball bearings comprising . No Claim to Orig. the applicant would want to argue that such references are not directed to analogous art. It is advantageous to use seven words or less because that is the limit for a PCT application. and tennis balls. October 2006 Chapter 7: Writing the Specification § 7. including glass beads.3 (Cite as: PLIREF-PATAPP s 7. US Gov. see Exxon Chemical Patents." or "faster. Inc. the title can be provided in an application data sheet. Another reason that choice of the title is important is that the title can be used to interpret the claims. where the references would not be considered to be prior art in the *7-56 absence of a broad title.5. baseballs. and thus should not be applied against claims directed to making ball bearings. that arguably broadens the scope of the analogous prior art and allows the examiner to argue that certain references are prior art..3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Application s 7.3 FOR EDUCATIONAL USE ONLY How to Write Pat.5. If a very broad or generic title is used.

773 (Fed.3 FOR EDUCATIONAL USE ONLY How to Write Pat. . Cir. 37 C.P.3) Page 2 "Novel Ceiling Fan" "Highly Efficient Automobile Engine. Works.S.5. PLIREF-PATAPP s 7.2d 1801 (Fed. 35 U. 227 U.Q.3 (Cite as: PLIREF-PATAPP s 7. Cir.3d 1553.2d 775. No Claim to Orig.72(a)..S.5. Application s 7.5.3 END OF DOCUMENT © 2008 Thomson/West.F. also see Titanium Metals Corp. Banner. v.Q. Exxon Chem." [FN114]. 1995). Patents. Lubrizol Corp. US Gov. [FN115]. § 1.PLIREF-PATAPP § 7. Inc. v.R. of Am. 64 F. 1985). 778 F.5.P.

4 FOR EDUCATIONAL USE ONLY How to Write Pat. using the following format: Apparatus for Making Ball Bearings by John L. US Gov. So if that is a possibility. . whoever is reviewing the specification is immediately alerted as to the mistake. Inventor I John L. but leave them off the final version.5. Inventor Effective December 1. for those applications filed without formal papers.4 Identification of Inventors It can be desirable that the names of the inventors be presented immediately after the title. However. It is better to name the inventors as a matter of habit in the specification if they are accurately known at the time of writing. Moreover.PLIREF-PATAPP § 7.5. Maybe compromise by including the names of the inventors *7-58 on a draft of the application. An advantage of identifying the inventors immediately after the title is that if the tentative identification of the inventors is incorrect. 1997. including the spelling of the inventors' names.5.5 Writing the Specification *7-57 § 7.5. it may be best not to identify the initial inventors in the specification.4) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. the names of the inventors are no longer needed to obtain a filing date.4 END OF DOCUMENT © 2008 Thomson/West. No Claim to Orig. Works.5.4 (Cite as: PLIREF-PATAPP s 7. it will be necessary to amend the specification to change inventorship. whenever the inventorship is changed during prosecution. later identification of the inventors is sufficient. Application s 7. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. October 2006 Chapter 7: Writing the Specification § 7. PLIREF-PATAPP s 7. Inventor II and Mary S. this may be the only place whoever is reviewing the application has an opportunity to review the accuracy of the inventor identification.

1] In claiming the benefit of a provisional application that was filed in a language other than English. which is a continuation in part of my U. Application s 7. and optionally the inventor.400. an English language translation of the prior filed provisional application and a statement that the translation is accurate need to be provided. the Patent Office does not acknowledge the priority of the provisional application. sufficient information must be provided to identify that application.5 Cross-References Cross-references to related applications are included in the "Cross-Reference" section.5 FOR EDUCATIONAL USE ONLY How to Write Pat. this is the proper place to cross-reference that sister application. . foreign priority application. so that any disclosure in the cross-referenced application can be included verbatim during *7-59 prosecution if necessary. it is important to claim the benefit of any intermediate nonprovisional application that was filed within one year of the filing date of the provisional application. Identification is usually by at least the serial number and filing date.001 filed January 28.231 filed January 1. 2003.5. this is a good place to refer to any copending applications that are related to the application being filed.5. See the discussion below in section 7. If that is not done. that is. Any application that is cross-referenced must be sufficiently described to identify the application. entitled "Machine for Making Ball Bearings. such as divisional applications. title. 2002.S. No Claim to Orig. and status. [FN116. When claiming the benefit of a provisional application. pending or abandoned.456 filed January 1. and so on. applications and international applications designating the United States.S.2000. For example. [FN116] In addition.5. Works. October 2006 Chapter 7: Writing the Specification § 7. subject matter. The present application is related to copending © 2008 Thomson/West.5) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.5 (Cite as: PLIREF-PATAPP s 7. if the application being filed is directed to an apparatus for making ball bearings and there is a sister application that is copending or will be filed on the same day that teaches a preferred material for the ball bearings. attorney docket number. to obtain the benefit of the priority of prior filed U. as well as any sister applications. [FN116.5 Writing the Specification *7-58 § 7. This includes any parent applications from which priority is claimed. It is also recommended that cross-referenced applications be incorporated by reference. now abandoned." currently pending (attorney docket number 8231). which is a continuation of my application serial number 07/789. In fact. Patent Number 6. It is also recommended that the attorney docket number be included in parentheses or in the margin so that status can easily be determined for updating. US Gov.5.PLIREF-PATAPP § 7.1999.7 regarding incorporation by reference practice.5. it is necessary that the first sentence of the specification contain a reference to each such prior application. inventor. If the cross-referenced application does not yet have a serial number. which claims the benefit of Provisional Application Number ___ filed January 29. if it was filed more than one year prior to the filing date of the current application. such as by title.2] An exemplary cross-reference section is: The present application is a division of my application serial number 08/123.10. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.

P. each application identified.S.457 filed on the same date as the present application by inventor X.11.PLIREF-PATAPP § 7. as soon as the application containing the quoted language issues.E. § 201.5. a priority claim can shorten the patent term. the secrecy of the cross-referenced application is lost. which is not admitted to be prior art with respect to the present invention by its mention in the background. or sixteen months from the filing date of the prior-filed application.C. US Gov. § 1. § 112 for at least one of the claims being presented in the new application. [FN116.1] The Patent Office may consider anything referred to in the Cross-Reference Section or in the Background Section as prior art. No Claim to Orig.5 FOR EDUCATIONAL USE ONLY How to Write Pat. PLIREF-PATAPP s 7.5. .14(a). . This claim must be submitted within four months of the actual filing date of the application. Works. §§ 1. § 1.5 END OF DOCUMENT © 2008 Thomson/West. [FN117.R. if there is a possibility that the subject matter of an application may need to be maintained as a trade secret.78(a)(2).P.R. even if pending or abandoned. If a parent application or patent does not provide support under 35 U. 37 C.3]. 37 C.F. 37 C. 37 C. [FN117] In other words.5 (Cite as: PLIREF-PATAPP s 7. becomes available to the public. then it shall not be used for a claim for priority. the reference to the priority claim can use multiple sentences. § 1. § 112 or for a priority claim. Application s 7.78(a)(2).3] *7-60 A possible disadvantage of cross-referencing an application arises when the application that incorporates by reference issues. [FN117].C. M.5. whichever period of time is longer. [FN117. [FN116].78(a)(5)(iii). Since the patent term is twenty years from the earliest application from which priority is claimed. Careful consideration needs to be given to any claim for priority. At that time. [FN116.R.R. § 1.96(b) of title 37 of the Code of Federal Regulations. 18.2]. [FN116." The cross-reference section should also include any reference to a "microfiche appendix" as permitted by section 1. .7(a)(2)(iii) and 1. so that it is not unduly delayed. Therefore. All of these applications and the patent are incorporated herein by reference.F. it is recommended that the following phrase be used to avoid the PTO claiming a document cross-referenced is admitted to be prior art: *7-61 ".5) Page 2 application serial number 08/123. See 37 C. Unless something discussed is clearly prior art.5.F.F.1].1].F. 2003). 1268 OG 89 (Mar. [FN116. It is recommended that any claim for the benefit of a prior application be included when the application is originally submitted. then the application should not be cross-referenced unless the cross-reference is necessary to comply with the requirements of 35 U.S. As indicated by this example. without referring to the above example.78(a)(5)(iv).R.

2]. § 7.3] [FN117. US Gov. the files on each compact disc. or a computer program listing appendix submitted on a compact disc.PLIREF-PATAPP § 7.5. . or a separate section can be provided for.6 FOR EDUCATIONAL USE ONLY How to Write Pat.5.77(a). 37 C.5. [FN117.6a Reference to CDs The specification requires a reference to a Sequence Listing. Application s 7.2] Any CD submitted to the Patent Office must be finalized so that it cannot be changed. [FN117. a table. including duplicates.R. [FN117.3]. No Claim to Orig.6 END OF DOCUMENT © 2008 Thomson/West. and their size in bytes.5.R. 37 C.5 Writing the Specification *7-61 § 7.6 (Cite as: PLIREF-PATAPP s 7. The reference must include an incorporation-by-reference of the material on the compact disc. PLIREF-PATAPP s 7. October 2006 Chapter 7: Writing the Specification § 7.F.F. § 1.5. their date of creation. a statement as to any rights in the invention that may exist under federally sponsored research and development. § 1.5.6) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.52(e)(3)(i). and specify the total number of compact discs.6 Government Rights The cross-reference section can include. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Works.

Field of the Invention A statement of the field of the art to which the invention pertains. Works. This is where the sales pitch begins. this can be interpreted to be an admission that anything within the broad description is analogous art and can be used to reject the claims under 35 U." so as to not prematurely commit to the exact identity of the invention. the Patent Office suggests that the following items be included in the Background section: a.7 FOR EDUCATIONAL USE ONLY How to Write Pat.P. then the scope of the claims may be interpreted during litigation to be of commensurate narrow scope. There is always the risk that the description of the prior art will be inaccurate. ." As discussed above." Identification of the "field of the invention" can hurt the applicant.7. The Background should not include any admissions that something is prior art unless there is no possible question about it.5. Therefore. § 7. the related art should not be described in the Background section. Generally. Application s 7. even if the admission does not fall with any statutory class of prior art.5 Writing the Specification *7-61 § 7. According to M.5. There is no benefit to be obtained from specifying the "Field of the Invention. US Gov.5. which can raise issues during litigation. it is recommended that the prior art not be described in the Background section. [FN117. Any admission in the background can by used by the Patent Office in rejecting claims.2 What the Background Section Should Not Include What this author believes to be the purpose of the Background section and what the Patent Office wants in the Background section are inconsistent. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. or in any other part of the specification. If the field of the invention is described unduly narrowly.PLIREF-PATAPP § 7.7.1 Heading It is recommended that the heading "Background" be used for this section.P.7 Background The background is an extremely important section of the application.5. rather than the more commonly used heading "*7-62 Background of the Invention.4] © 2008 Thomson/West. October 2006 Chapter 7: Writing the Specification § 7. § 103.7) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. the exact scope and nature of the invention may not be known until long after the application is written. b. Ordinarily.5. Description of the Related Art Include where appropriate references to specific art or other information. Any description of the prior art should be limited to setting up a "straw man" that helps identify the merits of the invention.C. unless describing *7-63 the prior art in the Background section assists in obtaining allowance of the application or will help a judge or jury better understand the merits of the invention.5. No Claim to Orig. If the field of invention is described very broadly. § 7.S. it is safer to use the title "Background.E.01(a) and (c).7 (Cite as: PLIREF-PATAPP s 7. § 608. This author recommends against putting any of this in the Background section except as specified below.

It is not recommended that the teachings of these references actually be discussed. when writing the Background section. Nothing would be better for *7-64 a plaintiff's personal injury attorney to read to a jury than a copy of a patent specification in which the defendant has described all the deficiencies of the helmet that resulted in head injuries. which is not admitted to be prior art with respect to the present invention by its mention in this Background Section. is to begin the sales pitch for the invention. why say anything at all? Special attention must be given when referring to copending applications or any other technology in the Background Section that is not prior art. . and for the jury to see that for themselves. per se. Savvy personal injury attorneys routinely obtain copies of patents looking for just that type of language. if the invention relates to a better motorcycle helmet. *7-65 Although the same argument can be made with regard to an Information Disclosure Statement.7 FOR EDUCATIONAL USE ONLY How to Write Pat. for the reasons presented in the prior section. the Patent Office does not want applicants making "derogatory" remarks about the prior art. and in reality with more justice.PLIREF-PATAPP § 7. the argument does not carry as much weight. the expense of obtaining insulin from animals.5. including everything identified in the Information Disclosure Statement. if it is not possible to say anything disparaging about any specific prior art reference. It is recommended that the material prior art. The reason for this is that one document always brought into the jury room is the patent. Therefore. Accordingly. Works." The Background section must not contain anything that can be used against the applicant in any product liability lawsuit. . Such statements should be deleted unless the client knowingly is willing to allow them to stay in. Application s 7. . No Claim to Orig. For example. It is beneficial to argue in closing argument that the art relied upon by the infringer or art equivalent thereto was considered by the examiner and disclosed in good faith by the inventor right in the patent. For example. Rather.5. rather than discuss the prior art. which would be very rare." Mere comparisons with the prior art are not considered to be disparaging.5. it is important to avoid including any statements that may be useful to a plaintiff's attorney in a product liability lawsuit. it is recommended that the applicant explicitly state the following: ". [FN118] The Patent Office considers derogatory remarks to be "statements disparaging the products or processes of any particular person other than the applicant or statements as to the merits or validity of applications or patents of another person. it is foolish to discuss the safety deficiencies of the applicant's prior art helmets. As another example. § 7.3 What the Background Section Should Include What the Background section should do. each one of these references suffers from one or more of the following disadvant- © 2008 Thomson/West. they can be listed and dismissed using the following technique: Information relevant to attempts to address these problems can be found in U.5. including the health consequences. for an invention for bioengineered human insulin. Patent Nos.7. _______ and ________. if the invention is for an apparatus that makes almost perfectly spherical ball bearings. The reader who has finished reading the Background section should be left with the belief that there is a desperate need for a solution to the problems solved by the applicant. However. To avoid the risk of the Patent Office using a copending application as prior art. the Background section should include a description of the problems of diabetes. the Background section should include a description of how important ball bearings are and why it is critical that they be as perfectly spherical as possible. be listed in the Background section.S. US Gov.7) Page 2 Moreover. and the side effects of using insulin from animals.7 (Cite as: PLIREF-PATAPP s 7.

E. This approach is advocated by Dale S.1].5. and a generic statement that it is desirable to have a better widget than what is disclosed in the identified references. the Background should include almost nothing. By putting such shortcomings in the Background. which does have merit. • For the foregoing reasons. there is no real commercial need for the invention. It is important that this listing of references not be referred to as "prior art. there is a need for synthetic human insulin that is of high purity and that can be inexpensively manufactured.7 (Cite as: PLIREF-PATAPP s 7. The reason is that the Federal Circuit has in some cases narrowly interpreted claims and limited the application of the doctrine of equivalents because of statements made in the Background. it makes it appear that the shortcomings and disadvantages were commonly known to the art. If the prior art does not suffer from at least one disadvantage. [FN118.7 FOR EDUCATIONAL USE ONLY How to Write Pat.2d 566 (C. According to that approach. [FN118]. Minneapolis. In re Nomiya. The final paragraph of the Background section should be a punchline that summarizes the need for the invention. Application s 7. the prior art. No Claim to Orig.P. if this statement cannot be made. paper presented at AIPLA Advanced Patent Prosecution Training Seminar. An admission that the references are "prior art" may create difficulty during prosecution.5. M. US Gov.4]. Using this approach. Some examples: • For the foregoing reasons. Thus.P § 608.PLIREF-PATAPP § 7. 509 F.5.7 END OF DOCUMENT © 2008 Thomson/West. MN (June 12.C.A. PLIREF-PATAPP s 7. The Impact of Recent Federal Circuit Decisions on Crafting Patent Applications--Why Applications Drafted in the Traditional Style May Be Weaker Than You Thought.P. there is a need for a machine that can inexpensively produce perfectly spherical ball bearings from stainless steel. the references may include non-analogous art or art the applicant can swear behind.5. 1975). there probably is no need for the patent application in the first place. Lazar. 2003). *7-66 Another approach to writing the Background is becoming more popular. there is a need for an easily processible polyimide resin that has temperature stability in excess of 700° F. [FN118.01(r). the Background includes no more than an identification of the field of the invention. Moreover. Works.1] [FN117." because one or more of the references may not qualify as prior art. • For the foregoing reasons.7) Page 3 ages: __________________. For example. . sometimes the invention involves identification of the shortcomings of the prior art.

machine. No Claim to Orig.5.1 Heading It is recommended that the heading for the Summary section be just "Summary" rather than "Summary of the Invention.8 (Cite as: PLIREF-PATAPP s 7.5.8 FOR EDUCATIONAL USE ONLY How to Write Pat. and the one preferred by the author. so that the nature of the invention can be appreciated. US Gov. three philosophies about how to write the Summary section. Application s 7. and thus the application is already written in a form that is satisfactory for foreign filing.) that satisfies this need (the need defined in the Background section). Another advantage of that approach is that some foreign countries require a one-to-one correspondence between the Summary section and the broadest claims. chemical compound. it is usually not possible to know exactly what the "invention" truly is.C.C. convert the broadest claim into a series of sentences. . whatever need was described in the closing portion of the Background section is described as being satisfied at the beginning of the Summary section.8 Summary Section § 7. Many practitioners believe that at least the broadest claim should be presented in the Summary section verbatim to avoid any possible problem in meeting the "description" requirement of 35 U. it should point out in general terms the utility of the invention. The Summary section can identify the advantages of the invention and how the invention solves the problems described in the Background section." In other words. Works.S. etc. which is directed toward the disclosure as a whole. [FN119] There are. process. rather than the subject matter claimed." The reason for this.S. October 2006 Chapter 7: Writing the Specification § 7. as discussed above. § 112.5. . For example.PLIREF-PATAPP § 7. in general.3 Contents The Summary section is a brief and general statement of the invention.5. A second philosophy is that the Summary section should describe the invention in only very general terms.8. consider a patent with a broadest claim as follows: © 2008 Thomson/West. is that at the time the specification is written. § 112. using as little legalese as possible.5 Writing the Specification *7-66 § 7.8. § 7. at least with regard to the broadest claim in the invention. It is different from the Abstract.5. *7-68 A third approach.5.2 Opening The Summary section should specify the solution to the problems described in the Background section. . relying totally on the Description section to satisfy the description requirement of 35 U.8.8) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. In other words. The following format is recommended for opening the Summary: *7-67 The present invention is directed to an apparatus (device.5. is to rewrite at least the broadest claim of the application "in English. § 7. The apparatus comprises . In chemical cases. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.

. it is much less likely that anything in the claims will be left out of the specification. The Summary section can be an advocate's statement. that is. Generally. another opportunity is provided to persuade the judge or jury to uphold the validity of the patent." or "Our *7-70 invention is . then the specification would have to be © 2008 Thomson/West. It is also recommended that at least some of the advantages of the invention be discussed in the Summary section. . something that can be taken into the jury room." The first person is much more personal than the third person. and in a trial regarding the patent. and narrow independent claims specifying important features of the invention.S. . it is easier for a jury to identify with the inventor when the first person is used. the openings being spaced apart a sufficient distance so that at least two wires can be cleaned simultaneously by the head. there is a possibility that a court could interpret the claims by reading in these features. should be summarized in the Summary section. "I have invented . It is good practice to include in the Summary section anything that is likely to be a basis for arguing the nonobviousness of the invention. Thus. § 112 is satisfied. almost every claim that is in the application should *7-69 be summarized in the Summary section. where the infringer has no opportunity to rebut the written words that appear in the Summary section. it can be useful to write in the first person. For ease of manufacture and strength. When writing the summary. A grill scraper having features of the present invention comprises a handle and a head. A grill scraper comprising: a. . "The invention is . No Claim to Orig. by writing it in plain. The openings are spaced apart a sufficient distance so that at least two wires can be cleaned simultaneously. . Therefore.PLIREF-PATAPP § 7. the head and the handle are coplanar. A suitable Summary for this invention is: The present invention is directed to a grill scraper that satisfies these needs [needs identified in Background section]. For more skilled practitioners.8) Page 2 1. An advantage of writing the Summary section in understandable English is that this is a section that the judge and jury could very well read. the head being attached to the handle. it must be made clear that these are optional features.8 FOR EDUCATIONAL USE ONLY How to Write Pat.5. Works.5. a head attached to the handle. and that reason for including everything in the Summary section does not apply.C.8 (Cite as: PLIREF-PATAPP s 7. listing the advantages of the invention only in the Description section may not work. Again. To the extent that features are not present in the broadest claim. understandable English. [FN119. Otherwise. The head has a plurality of peripheral openings sized to receive wires of a grill. particularly in working with individual inventors. One potential problem with using the first person rather than the third person is that if a change of inventorship is required and the change is from sole to joint or from joint to sole. . Application s 7. It is recommended that for new practitioners." Occasionally.5. important dependent claims. . this is a section that is more likely to be read by the jury than is the Description section of the patent. and b. Therefore. because the jury may never wade through the technical description of the invention to read about the invention's advantages. This will make certain that the description requirement of 35 U. it is important that the invention not be limited to anything other than the broadest claims. it can be advantageous to write the Summary section using the first person rather than the third person. wherein the handle and head are substantially coplanar. How detailed the Summary section should be is a matter of personal preference. that is. US Gov. patent applications are written in the third person. the head having a plurality of peripheral openings for receiving the wires of a grill. a handle.1] In certain situations.

Application s 7.E.PLIREF-PATAPP § 7.73. As discussed below. § 608. See M. no transition need be provided in the Summary section.P. it is recommended that the following transition or its equivalent be used in going from the Summary section to the Description section: "These and other features. aspects. .8. Multi-Tek Sys. PLIREF-PATAPP s 7. 357 F.8 (Cite as: PLIREF-PATAPP s 7.5. Cir.5. 2004) (statements in the summary used to narrowly interpret certain claim terms).R. US Gov.1]. [FN119].8 FOR EDUCATIONAL USE ONLY How to Write Pat. see also 37 C. No Claim to Orig.5. v. § 7.5. Works.P.8) Page 3 amended to change from the singular to plural or plural to singular. [FN119.3d 1340 (Fed.4 Closing If there are no drawings in the application. and advantages of the present invention will become better understood with reference to the following description and appended claims.5. § 1. a transition clause can be provided in the Drawings section.01(p)." If there are drawings in the application.F.8 END OF DOCUMENT © 2008 Thomson/West.. See Microsoft Corp.

3 shows .9) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. and Fig. . showing the machine in resting position and operating position.5. appended claims. 1 taken *7-72 on line 22.9 FOR EDUCATIONAL USE ONLY How to Write Pat.5. until a jury has pronounced on the subject. .9 Drawings The heading for the Drawings section can be "Drawings" or "Description of the Drawings" or "Brief Description of the Drawings.5..9 (Cite as: PLIREF-PATAPP s 7. . Fig. § 7. 2 shows .2 Refer to "Version" of the Invention It is recommended against describing any of the drawings as showing the "invention.PLIREF-PATAPP § 7. US Gov. . These are as follows: § 7. If color drawings are accepted by the Patent Office after a petition to do so has been granted. For example: "Figs." because the practitioner may not know exactly what "the invention" is until the application has gone through the Patent Office. [FN120] *7-71 There are a few concepts to bear in mind when describing the drawings. Chapter 5 describes typical patent drawings and different views that can be provided.5 Writing the Specification *7-70 § 7. where sequential drawings can show different modes of operation of the machinery. . This often occurs with drawings for machinery. Application s 7. the first sentence of the Drawing section must have language referring to the presence of color drawings. 2A and 2B are vertical sectional views of the machine of Fig. . . . and in some instances.5.9. Each practitioner has his or her favorite transitional clause. and accompanying drawings where: Fig.1 Transitional Clause A suitable transitional clause from the Summary section to the Drawings section is as follows: These and other features." © 2008 Thomson/West. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. It is recommended for clarity that drawings differing only in minor features be given the same drawing numbers with different suffixes. Works." Better terminology is "version of the invention" or "embodiment of the invention. § 7." All this section should be is a very brief description of the drawings. 1 shows . and advantages of the present invention will become better understood with regard to the following description.9. and the choice is certainly not critical. October 2006 Chapter 7: Writing the Specification § 7.5.. respectively. but in different configurations.3 Use of Suffixes for Similar Drawings Sometimes drawings are very similar in that they show the same view of the same apparatus. .9. aspects. No Claim to Orig.5.5. .

Works. .5.4 Cross-Reference the Drawings It is best that each drawing after the first drawing refer to a prior drawing whenever possible.PLIREF-PATAPP § 7. Application s 7. See 35 U. Figures 2A and 2B were cross-referenced to Figure 1. No Claim to Orig.5 Refer to Different "Versions" of the Invention An applicant is entitled to only one invention per patent.9 (Cite as: PLIREF-PATAPP s 7.P. 1. PLIREF-PATAPP s 7. § 101. [FN121] Therefore. and Fig.9 FOR EDUCATIONAL USE ONLY How to Write Pat. M.5. [FN120]. they should be referred as "versions" or "embodiments" and not separate inventions. 37 C. if different versions of the invention are shown in an application. § 804.9.5.S.5.F. 2 is a front plan view of another version of a machine embodying features of the present invention for manufacturing ball bearings. 1 is a front plan view of a machine embodying features of the present invention for manufacturing ball bearings.5.9 END OF DOCUMENT © 2008 Thomson/West.P. As an example: Fig.9.5. § 1. [FN121].C.E. US Gov.R.9) Page 2 § 7. Any subsequent drawings of the machine of Figure 1 should always refer back to the "machine of Fig.84(a)(2). As shown by the preceding example." § 7.

The following is an outline of a typical Description section. generally longer than fifteen double-spaced pages. and important concepts and features of the invention may be missed. Before writing the Description section.C. the Description will be disorganized.5. . It is strongly recommended that before the Description section is written.10 FOR EDUCATIONAL USE ONLY How to Write Pat. all elements of the drawings should be labeled. Otherwise. US Gov. reference numbers. incorporation by reference.5.S. It is important to give each element a name and understand how all the elements cooperate. That way all © 2008 Thomson/West. the most difficult part to prepare.5 Writing the Specification *7-72 § 7. such as use of ranges. if that has not already been done.5.2 Purpose of the Description The purpose of the Description section is to comply with the requirements of 35 U.3 Outline of a Typical Description This portion recommends an approach for writing the Description section. § 112.10. "This detailed description .1 Definitions Sometimes the application contains terms that are not used in their ordinary sense or terms whose specific definition is critical. By doing that. and except for the claims.10 (Cite as: PLIREF-PATAPP s 7. It is recommended that definitions for these terms be provided in a single part of the Description section and not scattered throughout the specification.1 Caption It is recommended that the caption for the Description section be merely "Description" rather than "Description of the Invention" or "Description of Best Mode. . must be in such particularity as to enable any person skilled in the pertinent art or science to make and use the invention without involving extensive experimentation. *7-73 § 7.5.5. Application s 7. *7-74 § 7. Ideas for solving certain common problems in describing an invention. October 2006 Chapter 7: Writing the Specification § 7.10.10 Description of the Invention § 7." The term "Description" is more generic and avoids being committed to what the invention is before the examiner has done a search. No Claim to Orig." [FN122] This is the most technical part of the application. are then discussed. Works. . where there are drawings.5. and that will save much time in writing the Description section.5. As stated by the Patent Office. it is recommended that headings be used to assist the reader in following the description. § 7.5. and the like. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.PLIREF-PATAPP § 7.10) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.3.10. it be outlined. preferred versions of the invention.10. When the Description section is lengthy. such as terms appearing in the claims. consistent terminology will be used as the description is written.

This is particularly true if the application will be filed overseas. Then the alcohol can optionally be aged in an oak cask. [FN122. only one of which is suitable. and then distilling the alcohol/water mixture to increase the concentration of alcohol. In the fermentation step . after introducing those three main elements. and c in detail. 1. The hierarchial approach has been followed with the main elements of the invention being described. In the distillation step . Works. . the main elements can be the feed mechanism. thereby producing a mixture that contains solids and alcohol and water.5. For example. . . separating the solids from the alcohol and water. Each of these three elements has its own subelements. When using an "overview or hierarchial" approach. In the filtration step . If the dictionary includes multiple definitions. .1] If a dictionary definition is not satisfactory for a claim term. The handle 12 can made of a material such as . and then details of each of those main elements being provided. one in which the description proceeds from the more general to the specific." and "consisting" may be an appropriate subject for a definition in the specification. Thus the four basic steps of the process are described.3. where such terms of art may not have the same meaning as generally accepted under U. and then each element is described in detail. . a patent for a copier.10. No Claim to Orig. . with semicircular recesses 16 .5. and then each of the four steps is described in detail. a grill scraper comprises a handle 12 and a head 14 attached to one end of the handle 12. it is usually necessary to break the main elements into subelements using a hierarchial approach.S. This is a very simple example. . b. patent law. element by element. the copy mechanism. and it comprises . which must be described in detail. .2] Similarly. terms of art such as "comprising. .5. The chemical compound is described generically. . [FN122. *7-76 For more complex inventions.10 FOR EDUCATIONAL USE ONLY How to Write Pat. b. a preferred approach is to state that the feeder comprises elements a.10 (Cite as: PLIREF-PATAPP s 7.PLIREF-PATAPP § 7. . The optional aging step comprises . . in the absence of a definition in the specification or prosecution history. it makes sense to include in the specification an explicit definition for a term. and c and then describe each of the elements a. and the sorting mechanism. As an example. . there should be an overview of the main elements of the claimed invention and how they cooperate together.] The handle 12 is shaped like . [Thus the two main elements of the invention have been described. US Gov. the broad description of a grill scraper can be as follows: As shown in Fig. This allows for preparation of an application *7-75 by a "hierarchial" approach. . . The head 14 is generally circular in shape. and © 2008 Thomson/West. The Federal Circuit. The same approach can be used for process inventions. again it makes sense to include a definition in the specification to be sure a court does not choose the wrong dictionary definition. The same approach works for chemical inventions. For example: A process according to the present invention for making ethanol comprises the steps of fermenting grain. Thus. typically interprets claims by starting with a dictionary definition.2 Overview After the definition section." "consisting essentially of. the invention is broadly described by its elements. § 7. . .5. Application s 7.10) Page 2 the definitions can easily be reviewed together for consistency.

5. Works. the following information can be provided for each element: 1. The best place to start. to avoid a court's improperly interpreting the claim. Shape 2. Function 5. It is important to include in the specification an adequate disclosure of structure corresponding to the function of a "means for" element in the claims. [FN123] Providing an adequate disclosure for a "means for" element is a challenge. Orientation Finding the proper terminology for describing the invention is extremely difficult. § 7.10 (Cite as: PLIREF-PATAPP s 7. spacial relationships. Failure to do so can result in an unsatisfactory narrow interpretation of a claim. it is important to list all known equivalents to the corresponding structure in the description to avoid reliance on the doctrine of equivalents in litigation.5. and the goal of this *7-77 description. a detailed description of the main elements of the invention is provided. Application s 7.1] It may be desirable.PLIREF-PATAPP § 7. R . Material used 3. the claim can be invalid. ceramics and minerals. Moreover. This list will prove invaluable in describing inventions.5. It is much simpler to provide a full disclosure for mechanical inventions than for chemical inventions. shapes and forms. Size 7. That is the type of information that has to be provided. the chapter on chemical inventions. quantities. Thus time should be taken with the applicant to obtain a comprehensive list of all structures that can perform the "means for" function. This appendix provides terminology useful for describing structural elements. which is costly and not always successful. materials. fastening and joining elements. then the options for each of R . It is one of the most challenging tasks for the practitioner.5. because usually the inventor has a name for everything. thereby providing a potential infringer with an easy design around. Each element shown in the Drawings is described and. US Gov. It is valuable to explicitly specify in the description the structure that corresponds to the "means" language in the claims. and gases and liquids. is with the inventor. R . Substitutes 4. it is important that the corresponding structure be described in the description.10) Page 3 then each of the alternatives of the compound is described. This is straightforward technical writing. including characteristic properties. when defining a "means for" element in the specification. metals. Exhibit 7-1 provides a lengthy list of terminology useful in describing inventions. in its extreme. as necessary. which provides a checklist for obtaining a full disclosure for a chemical invention. to include a statement that "applicant intends to encompass within the language any © 2008 Thomson/West. because if such structure *7-78 is not disclosed. and processes.10. No Claim to Orig. Because "means" clauses are interpreted with reference to the corresponding structure in the specification. [FN123. To get an idea of how much detail is required. chapter 13. of course. and R are described fol1 2 3 4 lowed by the method of making the composition and the method of using it. An example is as follows: A chemical compound embodying features of the present invention has the structure: TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE After introducing the generic formula. includes Exhibit 13-1.3. textiles. is to allow someone to be able to reproduce the invention. Cooperation with other elements 6. . Configuration 8.10 FOR EDUCATIONAL USE ONLY How to Write Pat. To the extent that that is unsatisfactory.3 Detailed Description of the Elements (Including Means-Plus-Function Elements) After presenting the overview. polymeric materials.

such as: "By having the head and the handle coplanar. US Gov.(or step-) plus-function claim limitation satisfies paragraph 2 of 35 U. adhesives and epoxies. soldering. § 112 unless the structure is a standard component whose structure is well known in the art.S.1] Thus it is important to describe at least one structure corresponding to the means-plus-function clause.10. resulting in a confusing description.10 (Cite as: PLIREF-PATAPP s 7.4 How the Invention Is Used The description of the structure of the invention is followed by an explanation of how the invention is used.C." © 2008 Thomson/West. Moreover. No Claim to Orig. materials.10. reference should be made to the Background portion of the specification. For example. and nailing. [FN124. For example. *7-81 § 7. That approach is usually unsuccessful. § 112 if (1) the written description links or associates particular structure." Another reason to include a comprehensive list of structures is that the doctrine of equivalents is available only for new technology and not pre-existing technology in the context of meansplus-function clauses.2] *7-80 It is not advisable to rely on incorporation by reference of an article to provide the structure for a means-plus-function clause.5.5. since a means-plus-function clause only literally covers the structure disclosed in the specification and equivalents thereto.3. there should be a description of the structure of the grill scraper that provides these advantages. or acts perform the function recited in a means. § 112 with regard to defining the corresponding structure of a means-plus-function clause. [FN124. Moreover. a means. the advantages of the invention should be described. inexpensive grill scraper. two of the advantages should be that the grill scraper is sturdy and inexpensive. when the advantages of the invention are presented. At this point.5. [FN124] Failure to disclose any structure corresponding to a means-plus-function claim renders the claim indefinite under 35 U.S. hooks.PLIREF-PATAPP § 7. or acts to the function recited in a means. or (2) it is clear based on the facts of the application that one skilled in the art *7-79 would have known what structure.5.(or step-) plus-function claim limitation. Using that section as a guide.4] § 7. the advantages should be presented." According to the PTO.5 Advantages of the Invention After the method for using the invention is described. surface tension. or precede the description of the structure with the description of use. [FN124.10 FOR EDUCATIONAL USE ONLY How to Write Pat. Many beginning practitioners attempt to combine the description of use with the description of the structure of the invention.S. where the need for the invention has been identified. magnets. the entire scraper can be stamped out from a sturdy piece of sheet metal in a single manufacturing step. The Description section should explain exactly how each of the pre-existing needs has been satisfied. [FN124. if those structures are not clearly linked or associated with the claim element.3] It is important to clearly link or associate the function of the means-plus-function claim element with structures that perform the function. welding.C. There needs to be a corresponding structure defined in the specification.3.(or step-) plus-function limitation. rivets. Works. Application s 7. the description of the advantages should tie in with the structure of the invention.C. .10) Page 4 structure presently existing or developed in the future that performs the same function. Incorporation by reference does not satisfy the definiteness requirements of 35 U. materials. it is desirable to describe a wide range of structures corresponding to the claim element.5. hook and pile fasteners. When identifying these as advantages. The claim element will not be interpreted to include disclosed structures that perform the function. if the Background section states there is a need for a sturdy. a "fastening means' can be defined in the specification to include: threaded fasteners such as nuts and bolts. It is much better to describe the structure of the invention in an orderly and complete way and then describe how the invention is used with regard to its environment.

. they should also be disclosed. *7-84 • This example shows that replacing chlorine with fluorine in compound A increases its water solubility.PLIREF-PATAPP § 7. . and chemical processes to satisfy the "best mode" requirement and provide sufficient detail about various versions of the invention to be entitled to a generic claim.5.6 Specific Embodiments and Examples Optionally.C. If there are unfavorable data. which would have encompassed prior art shapes (and an alleged infringing product). For mechanical inventions. The purpose of each example should be included in the description of the example so that the reader knows what the example is all about and whether it is worth reading in detail. the details of a specific embodiment of the invention and examples can be provided.5. a court may read an advantage into the claims and find a structure without the particular advantage *7-82 to be noninfringing. but not required in all versions of the invention. Otherwise. the specific embodiment can provide such *7-83 details as the particular materials used to make the structure and the dimensions. purposes. © 2008 Thomson/West. US Gov.5. [FN125] To be avoided is the situation where the Federal Circuit held that disclosure of two species of the shape for a cup for an artificial hip did not support a claim to a generic shape. Otherwise. including . the doctrine of equivalents may not be available against that element. by failing to disclose the results of experiments that do not support the applicant's claims. in other words. The specification should not conceal unfavorable data. [FN126. Applications for these types of inventions are described in detail in the particular chapters relating to those inventions. For example.2] § 7.3. Examples of this are the following: • This example shows how to manufacture compound A using compounds B and C as starting materials. No Claim to Orig.5. if a purported "equivalent' element does not perform one of the specified advantages or functions of a feature of the invention. because it is possible to forget to describe an advantage. Working examples are commonly used in applications for inventions relating to chemistry.S. A good introduction to the advantages of the invention is: "The previously described versions of the present invention have many advantages. because the specification touted an advantage of the specific shapes disclosed.10 (Cite as: PLIREF-PATAPP s 7.1] A reason for this is that the claims may be interpreted to require such an advantage." This introduction does not imply that the advantages listed are completely inclusive of all the advantages of the invention. Sufficient detail should be provided in the example that it is reproducible. or there may be some advantages of the invention that are not yet realized.10) Page 5 When presenting the advantages it is important not to state that all the advantages of the invention are being listed. • This example shows that compound A has better high-temperature stability than compound D. the guidelines below should be followed: 1. the detailed information provided should be the same as is provided in a scientific paper. or advantages in the application. [FN126] This unfortunate result may have been avoided by the simple statement that the particular cup shape was preferred because of its advantages over the prior art. there is a risk that there will be a finding of inequitable conduct due to withholding material information from the Patent Office. biotechnology. 3. . [FN126. Whether or not such detail is required to comply with the requirement of 35 U. Another approach being advocated is to not include any objects. It is also important to state that the invention does not require that all the advantageous features and all the advantages need to be incorporated into every embodiment of the invention. 2. Application s 7. chapters 13 and 14. Works.10 FOR EDUCATIONAL USE ONLY How to Write Pat. In using examples. namely.10. § 112 depends on the particular invention based on the guidelines provided in this chapter.

[FN127] It is standard practice when such an example is reported in the specification to use the present or future tense. It is recommended that a closing paragraph be used at the end of the Description section that lends itself to adding these alternatives. when referring to a screw. identifies alternatives to the specific version of the invention initially disclosed to the practitioner. Another reason is to provide a basis for claims of a scope different than those originally presented to encompass a competitor's design-around. One reason for doing this is to have support for generic language in the claims (see §§ 7.2. For example . European patent attorneys commonly use the following closing language or its equivalent: [FN129] The reader's attention is directed to all papers and documents which are filed concurrently with his specification and which are open to public inspection with this specification.PLIREF-PATAPP § 7.1] Another reason for having an extensive list of alternatives is to avoid a narrow interpretation of claim terminology during a Markman hearing. does not avoid application of prosecution history estoppel under Festo. [FN127. and the contents of all such papers © 2008 Thomson/West. and then a piece of copper is placed on the tacky. Then compound A is cured at 200° F. US Gov.5.10 (Cite as: PLIREF-PATAPP s 7. No Claim to Orig. . Works.3. with the result that the copper is strongly bonded to the steel. language that can be used is: "Plate 86 is attached to beam 88 using a fastener such as screw 90. it may not be possible to draft such a claim. Accordingly. then that alternative has to be shown in the drawings.5. . Immediately after "for example. Moreover.5.3. *7-85 § 7. [FN128] Additional closing language is particularly useful when prosecuting applications before the European Patent Office.2 and 7. followed by identification of the specific species used. An example of a prospective example is: Example 23 (prospective example: use of compound A as adhesive) This prospective example demonstrates how compound A may be used as an adhesive. The dissolved compound A is then applied to a piece of steel." Often. Of course.10 FOR EDUCATIONAL USE ONLY How to Write Pat. the inventor. Application s 7. if any of those alternatives is claimed.5. or alternatively by other fasteners such as bolts or nails. Compound A is dissolved in solvent X by heating solvent X to 80° F and stirring compound A into the solvent." Another way of achieving the same result is to state: "Plate 86 is attached to beam 88 by a screw 90.6). because it would have drawn a new matter rejection. and including commonly known information in the specification and/or claims. For example. dry compound A. . Paper examples should not be described using the past tense. One technique to provide an alternate approach to an invention is to use generic terminology when describing an element of the invention." a lengthy list of alternatives can be provided. The EPO is formalistic about changing the scope of the claims during prosecution of an application. Therefore. allowed to dry to become tacky. it is recommended that any hypothetical example be labeled as a "prospective" example to remove any doubt from the mind of the judge or jury that no representation was made to the Patent Office that the experiments described in the example were actually performed. The Federal Circuit has held that the fact that a claim cannot be drafted at the time of an amendment to literally encompass an alleged equivalent.10) Page 6 Simulated or predicted test results and prophetic examples (paper examples) are permitted in patent applications. other versions are possible.10.7 Alternatives and the Closing It is important to include in the Description section as many alternate approaches to the invention as the inventor can identify. the spirit and scope of the appended claims should not be limited to the description of the preferred versions contained herein. after reviewing the Description section. This closing is as follows: *7-86 Although the present invention has been described in considerable detail with reference to certain preferred versions thereof. Without sufficient alternatives in the disclosure.

a reason for each numerical variable should be given. unless expressly stated otherwise.5. In particular. the inventor should identify ranges for the temperature that can be used. is not to be interpreted as a "means" or "step" clause as specified in 35 U. § 112. US Gov. However. rather than a specific number.10 (Cite as: PLIREF-PATAPP s 7.PLIREF-PATAPP § 7. and preferably from 60° C to 70° C. at temperatures higher than 99° C." Using this technique. and preferably at a temperature of at least 60° C and preferably at a temperature of no more than 70° C.S. some examiners take the position that specifying a range does not support a claim that recites only the bottom or the top of the range.10. and various approaches for writing the Description section. but no more than 70° C because undesirable byproducts can form. where that *7-87 is not the intent of the applicant." Accordingly. For example.5. for a process comprising the step of dissolving a salt in water at a temperature of from 60° C to 70° C. abstract.10) Page 7 and documents are incorporated herein by reference.4 Use of Prior Art Patents It is recommended that the prior art patents be used as a guide in preparing the description of the invention. If possible. § 7. For example. the water can boil off. That provides support in the specification for arguments that may need to be made during prosecution. The remainder of this chapter is directed to important concepts that help in the writing of a good description.C. Since the description of an invention that appears in a patent is not copyrighted. The preferred temperature is at least 60° C for fast reaction. At temperatures less than 1° C. § 112. how much detail needs to be provided in order to adequately disclose the invention to one of ordinary skill in the art. ¶ 6. some examiners contend that an applicant is not entitled to a claim that reads "at least 1° C" or "less than 99° C" if the specification only recites "from 1 to 99° C.C. each feature disclosed is one example only of a generic series of equivalent or similar features.5. To avoid having a court or the PTO improperly interpret a claim element under paragraph 6 of section 112. including standard terminology in the art. the inventor may disclose that the minimum temperature is 1° C. the water used can freeze. because at a higher temperature the water *7-88 boils. the use of "step of" in the claims herein is not intended to invoke the provisions of 35 U. and drawings) may be replaced by alternative features serving the same.5 Ranges and Preferences Whenever a numeric variable is used to describe an invention.S. or "step for" performing a specific function.10 FOR EDUCATIONAL USE ONLY How to Write Pat. For example. the first sentence of the above paragraph can be written: The process is typically conducted at a temperature of at least 1° C and at a temperature no greater than 99° C. ¶ 6. § 7. Thus. such as why the range of 60° C to 70° C should be © 2008 Thomson/West.5. because at any lower temperature the water freezes. Works. Prior art patents can provide valuable information and ideas. descriptions prepared by other practitioners can be used verbatim. ranges should be given for that variable. it is advisable to define a range as "preferably at least 1° C and preferably less than 99° C. No Claim to Orig. equivalent or similar purpose.5. a typical way to describe this in the specification is: The process is conducted at a temperature of from 1° C to 99° C. All the features disclosed in this specification (including any accompanying claims. unless expressly stated otherwise. Application s 7.10. Therefore. . consider including in the closing the following language: Any element in a claim that does not explicitly state "means for" performing a specified function. and the maximum temperature is 99° C.

The process of claim 1 wherein the step of dissolving the salt comprises dissolving the salt in the water at a temperature of at least 1° C. ." "most preferred.10. when comparing the molar ratio of two ingredients.0° C to about 70. 6. The process of claim 1 wherein the step of dissolving the salt comprises dissolving the salt in the water at a temperature of from 60° C to 70° C.0° C" much more narrowly than "about 60° C." and "optimum.10) Page 8 allowable over prior art teaching a process at a temperature outside that range. The process of claim 1 wherein the step of dissolving the salt comprises dissolving the salt in the water at a temperature sufficiently low that undesirable byproducts do not form. During prosecution. For example. § 7." As the ranges become narrower and narrower. there is no reason to state that the temperature is from "60.0° C to 70° C." For example." By being so accurate. The broadest range is usually described as "what can be.5.0° C.5. Merely defining a range without giving a reason for the range is of little value during prosecution. the range of available equivalents under the doctrine of equivalents is substantially narrowed. 8. and most preferably about 35:1. there needs to be a technical or economic reason for the various ranges." or from "about 60. See chapter 6 for a discussion of claim definiteness. Works. The process of claim 1 wherein the step of dissolving the salt comprises dissolving the salt in the water at a temperature up to 99° C. with still a chance to obtain allowance of claims directed to the narrow range. preferably is at least about 20:1 and no more than about 50:1. where the prior art anticipates or renders obvious a broad range. Application s 7. the preceding sample paragraph supports the following claim language: *7-89 2.PLIREF-PATAPP § 7." "more preferred. US Gov. but not a narrow range." so multiple dependent claim 8 (claim 8 dependent on claim 7 or 1) is used as a backup to provide definiteness.10 (Cite as: PLIREF-PATAPP s 7. Pertaining to the above example. 5. One of the main reasons for providing different ranges in the description of an invention is that prior art may develop during prosecution.5. 7. The process of claim 1 or 7 wherein the step of dissolving the salt comprises dissolving the salt in the water at a temperature of up to about 70° C.10 FOR EDUCATIONAL USE ONLY How to Write Pat. claims containing the broad range of variables can be given up. A court will interpret "about 60. the language used can be: The molar ratio of ingredient A to ingredient B is typically at least about 1:1 and no more than about 100:1. The process of claim 1 wherein the step of dissolving the salt comprises dissolving the salt in the water at a temperature of from 1° C to 99° C. Another reason to provide a reason for each numerical value in the description of the invention is that the reason provides functional language that can be used in the claims. The process of claim 1 wherein the step of dissolving the salt comprises dissolving the salt in the water at a temperature of at least 60° C. No Claim to Orig. *7-90 unless data can be subsequently developed to justify the criticality of the range. 4. 3. they are described as "preferred.5. Note: Claim 7 may be indefinite due to use of the word "undesirable. It is foolish to be overprecise in defining the ranges.6 Use of Trademarks © 2008 Thomson/West." Common standard terminology is used to describe the various ranges. more preferably at least about 30:1 and more preferably no more than about 40:1. However.

In this country. whenever possible. provides a listing of the particular goods for which each listed trademark is used.10 (Cite as: PLIREF-PATAPP s 7. [FN131] Accordingly. do not constitute *7-91 such language. commonly sold under the trademark "Velcro. If a generic name is available.E. the patent should be identified.10 FOR EDUCATIONAL USE ONLY How to Write Pat.C. 2. § 608. The inventors specified a particular program by trademark as key to the invention. then the generic name for the product should be provided." According to the M.P.P. Works. The use of trademarks should generally be avoided because such use might limit the life of a patent to the life of a trademarked product. which are liable to mean different things at the whim of the manufacturer. No Claim to Orig.10. The meaning of the trademark is established by an accompanying definition that is sufficiently precise and definite to be made part of a claim. The relationship between a trademark and the product it identifies is sometimes indefinite. The formula or characteristics of the product can change from time to time. essential material is "that which is necessary (1) to support the claims or (2) for adequate disclosure of the invention (35 U. yet the product can continue to be sold under the same trademark." Trademarks and trade names can be used in patent applications to describe an invention if: *7-92 1. uncertain. Even though the program was not itself the claimed invention. exact." © 2008 Thomson/West.5. Application s 7. Incorporation by reference is also used to indicate the background of the invention and to illustrate the state of the art. Synthetic materials that adhere when pressed together.5. and if the trademark product ever becomes unavailable.E. § 7. "Band-Aid" type bandage. If a particular composition of the trademark product is critical to the invention. Whenever a trademark is used. if a product needs to be referred to by trademark.P. If a patent issued on the product." 3. § 112). where the options for one of the ingredients is well known in the art. every element or ingredient of the product must be set forth in positive.E.7 Incorporation by Reference Incorporation by reference is used to avoid repeating information readily available in another source. Fluorinated hydrocarbon sold under the trademark "Freon.01(d).5. .P. The trademark should always be capitalized so that it is identified as a trademark. the meaning is well known and satisfactorily defined in the literature. Exactly what can be incorporated by reference depends upon whether the material that is incorporated is "essential material.S. as much information as possible regarding the product referred to by the trademark should be provided. Appendix I of the M. particularly information known to those skilled in the art.P. Arbitrary trademarks. the generic name should be identified.5. The court held that the patent would have been valid if it had indicated other equivalent programs that were known and available to those skilled in the art.PLIREF-PATAPP § 7. In patent specifications. US Gov. [FN130] For example. provides a partial list of well-known trademarks that can appear in patent applications. Appendix I of the M.P. the validity of the patent is suspect. Suitable identification of elements of an invention by trademark include the following: 1. A common use for incorporation by reference is for chemical inventions. However.10) Page 9 The use of trademarks in patent applications creates problems. a patent that claimed a computerized control system for machine tools was held invalid because it neglected to fully disclose a crucial computer program. and intelligible language so that there is no uncertainty as to what is meant. and a listing of the various options is available in another document. and arbitrary. that program was available by purchase from only one source. or 2. it was an integral part of the device and necessary to enable those skilled in the art to practice the invention.

Essential material cannot be incorporated by reference to (1) foreign patents.S. Works. If it turns out that the material that is incorporated by reference is considered to be essential and the reference is not to a United States patent or allowed United States application. (2) patent applications published by foreign patent offices.C.R.S." If the original application does not indicate an intent to incorporate material by reference. A mistake as to whether material incorporated by reference is essential or nonessential is not fatal. incorporation by reference of an article describing the structure corresponding to a meansplus-function element was held not to satisfy the requirements of 35 U.R.4] Moreover.S. Incorporation of essential material based on a prior foreign application or prior U.10 FOR EDUCATIONAL USE ONLY How to Write Pat.3] A mere claim of priority without a statement of "incorporation by reference" cannot be used as a basis for amending the specification. commonly owned United States patent applications. [FN134] © 2008 Thomson/West.55 or a prior filed U.2] and (4) an allowed United States patent application. The specification must clearly indicate that it is incorporating material by reference.F.F. § 1." [FN131.PLIREF-PATAPP § 7. a simple reference to another source is not sufficient.5. (2) a published United States patent application. [FN131. US Gov. prior to examination. the applicant. and thus the claim including that element was invalid." the only materials that can be incorporated by reference are *7-93 (1) a United States patent. The only thing the applicant needs to do is to amend the specification to include verbatim the material incorporated by reference. *7-94 For example.1] (3) a prior foreign application claiming priority under 37 C. (2) foreign patents. § 1. Application s 7. [FN131.5. (4) a United States patent or application that itself incorporates "essential material" by reference. application from which priority is claimed under 37 C. (4) earlier filed.10 (Cite as: PLIREF-PATAPP s 7. [FN131. application for which priority is claimed can be used only upon a showing that the material which is going to be incorporated in the application was "inadvertently omitted. (3) patent applications published by United States or foreign patent offices. the specific portions of the referenced patent or application that are being incorporated therein should be identified. [FN132] The specification should specifically state that the reference is "incorporated herein by reference. must provide either a copy of the printed United States patent once it has been printed or a copy of the referenced material with an affidavit or declaration executed by the applicant (or the attorney or agent) stating that the copy consists of the same material incorporated by reference. No Claim to Orig. (3) nonpatent publications. [FN133] When incorporating material by reference.78 [FN131.5.10) Page 10 If incorporated material is considered to be "essential. an amendment to incorporate by reference would be considered new material and *7-95 would therefore change the filing date. or (5) a foreign application. all is not lost.5] The ability to incorporate nonessential subject matter is much more liberal. for allowed United States patents. The materials that can be incorporated by reference for nonessential subject matter are (1) United States patents. and (5) nonpatent publications. . § 112.

This is accomplished by assigning reference numbers to the elements in the drawings as described in chapter 5 above dealing with drawings. the elements are differentiated. Application s 7. the specification should read as good English even without the reference numbers. or the © 2008 Thomson/West. Otherwise. Rather than referring to "piston 12.5. US Gov. It is much easier to find the first reference to an element if the reference numbers increase sequentially from the beginning to the end of the Description section. if there are fourteen drawings in the application. No Claim to Orig.10.10 (Cite as: PLIREF-PATAPP s 7. this is not a critical requirement. § 7. . [FN134. for clarity.4 Chart the Reference Numbers A chart of the elements with the reference numbers applied should be prepared as the description of the invention is prepared. over the objection of a patentee.5. different elements can inadvertently receive the same reference number. and the following language can be added to the closing of the specification: The reader's attention is directed to all papers and documents which are filled concurrently with or previous to this specification in connection with this application and which are open to public inspection with this specification. the documents incorporated by reference can be filed with the application. *7-97 For example. § 7. the Federal Circuit interpreted a claim narrowly based upon a definition in a second patent incorporated by reference. § 7. If a feature described in a reference may eventually be included in a claim.10." an article is used.10) Page 11 Care must be taken when using incorporation by reference. and using the same numbers in the specification.5.1] Incorporation by reference must be used very carefully for applications that may be filed overseas.3 Numbers Higher Than Drawing Numbers Should Be Used It is advisable. In fact.2 The Reference Numbers Should Be Kept Sequential The reference numbers should be maintained in sequential order as the specification is prepared. The European Patent Office does not consider a claim element to be an essential part of an invention if it is only described in a reference that is incorporated by reference. for instance by using "first piston 12" and "second piston 14" rather than "piston 12" and "piston 14.10.10.5. at least when filling the application overseas.8 Reference Numbers The description of the invention and the drawings have to be correlated. and the contents of all such appears and documents are incorporated herein by reference. then the first reference number is a number higher than fourteen. However.1 The Description Is Written As If No Reference Numbers Are Used For style purposes.8. For example. the reference be noted as including subject matter that may be essential to the invention. preferably the specification is written as if the reference numbers are not used." If two elements have the same name." In other words.5. or alternatively. Usually it is inadvisable and expensive to renumber many elements merely because some reference numbers are used out of order.5.8. to start with a reference number higher than the last drawing number.8. This avoids any confusion between the drawing numbers and reference numbers.10 FOR EDUCATIONAL USE ONLY How to Write Pat. Works. The following suggestions are provided with regard to the use of reference numbers. § 7. so that it is "a piston 12" or "the piston 12.5.8. it is recommended that incorporation by reference not be relied upon.PLIREF-PATAPP § 7.10. [FN135] *7-96 § 7.5.

Similarly. For example.5. if there are three versions of the invention. § 7.10) Page 12 same element can receive multiple reference numbers. This method enables the practitioner to easily visualize where each element belongs. a copier that has as its main elements a feeder. the definite article ("the") is used. an indefinite article ("a" or "an") is used. the base in version one can be base 12. but they all have the *7-98 same base 12.10. By skipping reference numbers. it is possible to do this without having to assign new reference numbers to every element. US Gov. primes can be used to distinguish similar elements.8 Use Series of Numbers for Clarity Series of numbers to describe different versions of the invention or different main elements should be used. etc. and subsequently.5. This is because it is often necessary to go back and assign reference numbers to elements that were overlooked when the first draft of the description of the invention was prepared. § 7.10.8.8. See Exhibit 7-3.10. The elements of each main component will be listed under that component as tree limbs branch out from a tree.10 (Cite as: PLIREF-PATAPP s 7. and in version three it can be base 12. the relationship between the elements be indicated using the previously defined reference numbers.5. all reference numbers in the 100 series. It is recommended that in the chart.7 Use Suffixes to Distinguish Similar Elements Suffixes can be used to distinguish elements that are substantially the same.9 Antecedent The same rules that were described in chapter 6 (writing the claims) regarding having an antecedent for anything discussed in the claims also apply to the Description section. For example. can be for version one.5. Another approach to make it easier to write the description is by making a tree-type design listing the drawing numbers. 104. Thus. if there are two versions of the invention. This approach makes it much easier to write the description. Exhibit 7-2 is an example of a portion of such a chart.5.10.8. where each element is listed in terms of a previously defined element. *7-99 § 7.PLIREF-PATAPP § 7. that is.5. each version of the invention should refer to the base as "base 12. 12c. if an apparatus has four legs.10 Use of Spatial Directions © 2008 Thomson/West.5. § 7.6 Use Reference Numbers Consistently The same elements in different versions of the invention should be given the same reference number. and a sorter can use the 100 series for the feeder. and reference numbers in the 200 series can be for version two." Alternatively. § 7. No Claim to Orig. it is necessary to specify a particular leg. 106. For example. it is recommended that only every other reference number is used.10 FOR EDUCATIONAL USE ONLY How to Write Pat. in version two it can be base 12.5. § 7. For example. Another advantage of this approach is that the same element does not unintentionally receive different names. and 12d. a copy mechanism.10.5 Skip Reference Numbers As shown by Exhibit 7-2. and the 300 series for the sorter. Application s 7.. the 200 series for the copy mechanism. 12b. the first time an element is introduced. then it is easy to refer to that particular leg later on in the specification." If there is any special feature about leg 12d.10. Works.8.5. and when describing the invention. 102. . the legs can be referred to as "legs 12a.

Works. Inventors are known to make mistakes.10. a tennis racket. For example.10) Page 13 A common mistake in describing an invention is to use spatial directions that do not universally apply. Consider." and the like is independent of the orientation of the invention.5. Accordingly. screw. such as by use of the words "must. etc. No Claim to Orig." If there are other fasteners that are also suitable." The use of "etc. Thus. when referring to a fastener 12 as a nail or screw. the absolute may be incorrect. "optimum. *7-100 Moreover. It is better to use directions that are independent of the spatial orientation of the invention in describing the invention.5. glue. for example." "proximal. However. and thus is preferable.10." or any equivalent should be avoided." or the like.10 (Cite as: PLIREF-PATAPP s 7. The tennis racket should be described with regard to the "handle portion" and the "head portion" and its longitudinal axis. if there are other elements that can be used. it is best not to say "nail. the Patent and Trademark Office permits inclusion of a copyright or mask work notice in a design or utility patent application. it is best to specifically identify those elements. use of the language "reaction of ingredient A with ingredient B results in production of chemical C" is better than "reaction of ingredient A with ingredient B will result in production of ingredient C. screw. unless the practitioner and the inventor are "absolutely" sure that an absolute is correct. a chair is only used in one orientation." These directions have no meaning with regard to the tennis racket and how it is used in a tennis match." That leaves some leeway to obtain broad claims.5." "critical. with the legs on the ground and the back extending upwardly. they should be specifically identified. such as in "nail. or bolt. since it adds nothing to the specification. The use of terms such as "radially outwardly. there is an up or down or a right or left. For such an invention.5.10. The conditions for the notice are as follows: © 2008 Thomson/West.5.5. Such spatial directions are provided in Exhibit 7-1." "distal." "essential.11 Avoid Absolutes The use of absolutes in the description of the invention should be avoided.PLIREF-PATAPP § 7. That is particularly true if the application is filed in a foreign country. Application s 7. It cannot be described in terms of "up" or "down" or "right" or "left." or if really accurate. Such directions have meaning only with regard to the drawings. and thereby any patent issuing therefrom.12 Use Present Tense It is better whenever possible to use the present tense rather than the future tense.14 Copyright or Mask Work Notice It is possible to obtain copyright protection or mask work protection as well as patent protection for certain designs and technologies.13 Avoid "etc." "always. US Gov. § 7. which discloses material for which copyright or mask protection has previously been established." § 7. the examiner may require that the absolute limitation be included in all the claims. In a list of elements. It makes for more powerful writing. § 7. If a feature of the invention is described as being absolutely required. It is much better to change an absolute to the expression "preferred. the use of definite spatial terms is appropriate.10. and the orientation of the tennis racket in the drawings is arbitrary." "mandatory.10 FOR EDUCATIONAL USE ONLY How to Write Pat." "adjacent to.5. It is best to provide some leeway during prosecution of the application by avoiding absolutes. For example. for some inventions." § 7. .

is that it allows easy identification of any line in which an amendment is made during prosecution. *7-101 2. 347 F.16 Tabular Data Tables of data can be submitted on a compact disc instead of submitting the information on paper if a single table exceeds fifty pages or if the total number of pages of all the tables in the application exceeds 100 pages in length. and it makes certain that the pages of the specification are correctly identified with the relevant file. and sequence data. Vector Distribution Sys.3d 1106. These numbers are not to be used for nontext elements such as tables. 42 U.Q. but otherwise reserves all [copyright or mask work] rights whatsoever. . [FN122.1] Some practitioners set off the numbering by using bold text.3d 1314 (for the fifth time the Federal Circuit interprets "substantially. Inc. on every single page of the application as part of a header. Inc.1]. Cir. may be numbered individually and consecutively. as it appears in the Patent and Trademark Office patent files or records. An example of this format is: *7-102 [0005] The present invention satisfies this need by providing an article that .01(g). that must be specified in a separate letter accompanying the application. and save the drafts. The copyright or mask work notice must be placed adjacent to the copyrighted or mask work material.3d 942.PLIREF-PATAPP § 7. . 2002).10 (Cite as: PLIREF-PATAPP s 7. Works. It is also advantageous for the practitioner to include the practitioner's docket number for the application. This is not required.3d 1314 (Fed. to help prove diligence under 35 U.S. Jude Med. This is permissible.2] If the table is in landscape orientation. though. Cardiac Pacemakers. [FN123].2d 1725 (Fed. [0006] An article according to the present invention preferably comprises .. [FN136] § 7. Telegenix. St. 296 F.5. .. chemical structures. Many practitioners also include the date of printing of each draft of the specification as part of a footer. 63 U. M.P.10) Page 14 1. generally every fifth line.15 Line Numbers and Docket Numbers Many practitioners put line numbers on the pages of the specification. Alternatively and preferably.S.5. [FN136. 308 F.10. the paragraphs of the specification. The [copyright or mask work] owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure. followed by a gap of about four spaces. other than in the claims and abstract. In re Dossel. Cir. 2003).2]. Cir.4] [FN122]. An advantage of doing so. 347 F. mathematical or chemical formulae. § 608. Inc. [FN136. v. No Claim to Orig. US Gov.10 FOR EDUCATIONAL USE ONLY How to Write Pat. Inc. 115 F. 2002) (claims invalid for indefiniteness because the © 2008 Thomson/West.3] Tables cannot be included both in the drawings and the specification. [FN136. and if desired. The following authorization must be included at the beginning of the specification: A portion of the disclosure of this patent document contains material which is subject to [copyright or mask work] protection. Application s 7.P.10.5. § 102(g) if necessary.P. At least four numbers are to be used and the numbers are to be enclosed in square brackets. Digital Sys.3d 1193 (Fed. v. Deering Precision Instruments v.2d 1881 (Fed. ...5. The content of the notice must be limited to only those elements required by law." which has numerous ordinary meanings including language of approximation and language of magnitude). 3.E.. Tex. [FN122.C. Cir. . 1997). § 7. Deering Precision Instruments. The numbers and enclosing brackets are to appear to the right of the left margin as the first item in each paragraph.Q. Line numbers should be put in the left-hand margin.P. at least on the first page. [FN136.5.S.

v.3d 1348 (Fed. Trademark & Copyright J. v.. Inc.P..10 (Cite as: PLIREF-PATAPP s 7.S. Inc. v.C.P.2d 1225 (Fed.A. [FN126. 1999). 2003) (using past tense in an example to suggest falsely that test was performed resulted in finding of inequitable conduct). This approach is advocated by Dale S. 2003) ("means for converting" did not include computer software in the absence of a linkage to the software).. Tronzo v.. Cir. because the specification pointed out an increased reliability objective of two springs and the single spring structure did not have the increased reliability.S.2]. Inc.1]. Inc. 344 F.3d 1154. Storage Devices. The Impact of Recent Federal Circuit Decisions on Crafting Patent Applications--Why Applications Drafted in the Traditional Style May Be Weaker Than You Thought. 198 F. Atmel Corp. nVIDIA Corp. [FN125]. Instrumentation & Diagnostics Corp.3d 1354. Storage Devices. Glaxo Wellcome.Q..2d 1341 (Fed. MN (June 12.P. Inc. Cir. Jude Med. Int'l Trading Co. 2005). LEXIS 2412 (Fed.2d 1841 (Fed.2d 1225 (Fed. U. [FN123.Q. U. . Cir.. Inc.Q. M.P.3d 1362. Cardiac Pacemakers. Default Proof Credit Card Sys.Q. Chiuminatta Concrete Concepts.S. Atmel Corp. 412 F. even though the inventor disavowed the increased reliability objective).P.S. Info.3d 1205 (Fed. 2000). Inc. Corp.P. v. Home Depot.PLIREF-PATAPP § 7.Q.10) Page 15 only entity referenced in the specification that could perform both functions required by a means clause is a physician... 2000). Cir.5. Application s 7.. Endo Pharms.2d 1385 (Fed. 66 U.3d 1374. ___ F.3d 1346.S. Impax Labs. Cir. Home Depot. Cir.S. Default Proof Credit Card Sys.. 5. 145 F.. filed July 29. Cardinal Indus.Q. 53 U. 248 F. 198 F.S.S.2d 1745 (Fed. Medtronic. Cir. Titan Wheel Int'l.S.3d 1084. 156 F. Reg. § 112. App.S.10 FOR EDUCATIONAL USE ONLY How to Write Pat. paper presented at AIPLA Advanced Patent Prosecution Training Seminar.2d 1829 (Fed. v.2d 1841 (Fed. S3. Titan Wheel Int'l. 212 F.. or sutures that are capable of connecting when these elements were not linked or associated with the claimed function and helical windings were). Inc. v. St. Inc. Cir.3d 1303. [FN124. No Claim to Orig. 2006 U. [FN127.3d 1364.3d 1291 (Fed. 2002).1]. Inc. Minneapolis. 1.392 (1999). 2005). Cir. 2000) ("consisting of two springs" not infringed by a structure with a single spring and a plug stuck in one end of the spring. Elekta AB. 46 U. Lazar.. Biomet.. Works. 53 U. Northrop Grumman Corp.3d ___. [FN127].2d 1752 (Fed. 2004). Inc.P.A. v.E. 1998).5.P. [FN126.3d 1377. US Gov.3d 1374.uspto. v.S..2]. Inc. [FN124..P. Inc. Inc. 203 F.. Doc. [FN124].. v.P. 2001). 58 Pat.S. Cir. v. Cir.Q. Cir. 2001) ("Means for connecting" does not include straight wire. § 608.3d 1303.Q. [FN124. 296 F.3d 1106 (Fed.2d 1814 (Fed. 356 F. which cannot be a "corresponding structure").S.45 (Aug. Inc. Info. [FN126]. 54 U.01(p).4].2d 1607 (Fed.Q. 41. Inc.Q. Promega Corp.1]. v. © 2008 Thomson/West. v. 53 U.P..5. 212 F. (BNA) 443. 2006). hooks. 325 F. Hoffmann-La Roche.3d 1291 (Fed. v. 2003) (same). Purdue Pharma L. Advanced Cardiovascular Sys. 1999) (also available at <www.S.S. 2000).P. Inc. Cir. Cir. Inc. v. Intel Corp.R. [FN124. ¶ 6 (F. Vehicular Techs. 59 U. v. 2000). 47 U... 412 F. 66 U.Q. 323 F.. Cir.. Cir.gov>). 259 F. 54 U. Cir. Interim Supplemental Examination Guidelines for Determining Applicability of 35 U. Feb. Inc. 58 U.. 2003). Kraft Foods. 99-19368. 1998). Fed.P. Corp. v. Vehicular Techs. Med. Inc.3].P.1].

Q.P. [FN136. Indus. 636 F... 37 C. [FN131. Cir. 144 (C. [FN133]. [FN131.P. 79 U. 207 U.P.P.3d 1365.01(p).58. 2006). § 608. 177 U. M. § 1.52(b)(6).E.R. Id.F. 218 U. 1961). Balm Green.01(p). § 1. M. § 1.A. Inc.P. 37 C. .2d 788.5.Q. [FN131. [FN130].F. § 608.71(e). 1980). 961 (Fed.52(e)(3)(ii).S.PLIREF-PATAPP § 7.2]. [FN132]. M..R.P.5].58(a). Default Proof Credit Card Sys. v. Home Depot.S.A.P. Atmel Corp. Inc.R. 460 F.2d 684. [FN136.10 (Cite as: PLIREF-PATAPP s 7. § 608. In re Seversky.S.. Language provided by Robert Hall.3]. § 608.2d 1865 (Fed.S.5.F.P. § 1.3]. ACell Inc.R.57(a). See 37 C. 37 C. U.P. US Gov. [FN131].4]. [FN131.. 474 F. Application s 7.P. England.E.2d 671.10 FOR EDUCATIONAL USE ONLY How to Write Pat. No Claim to Orig. Ex parte Bondiou. [FN136. 37 C.P.F. 412 F.S. 1983). v. M.P.Q.F. Fountain Precinct. Inc. 356 (B.83(a).1].C. v. 132 U. [FN129]. 2000). Cir. v. Cir.I.57(c). Banner. White Consol. Inc.P.5. Cir.1].01(v). 713 F.C. Inc.R. PLIREF-PATAPP s 7. 53 U.A. Storage Devices..Q. Cook Biotech v.Q. Dibb Lupton Broomhead. England. Dart Indus. U.P.3d 1291 (Fed.3d 1374.R.Q.10 END OF DOCUMENT © 2008 Thomson/West.K. Info. 198 F. Courtesy of Robert Hall. § 1.01(v). 37 C.2d 1225 (Fed. Works. [FN134]. 1973). § 1. 37 C. § 1. [FN134.1].F. Cir.R.F.P.R.4].E.P. § 1..F. [FN136]. [FN135]. Dibb Lupton Broomhead. Sheffield S1 1RZ. Vega Servo-Control.10) Page 16 [FN128]. 2005).5. Inc. [FN131.. 273 (D. Sheffield.S. [FN136. 37 C.E.S.2].

11) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. [FN141] The Abstract should include the following: 1. The Patent Office will reject the Abstract if it exceeds 150 words. Contrarily. If an article. its organization and operation. The Patent Office wants the applicant to use the heading "Abstract of the Disclosure. [FN139] The patent Abstract is to be no more than a concise statement of the technical disclosure. The Patent Office does not want the Abstract to refer to purported merits or speculative applications of the invention. process. The Abstract is not used for interpreting the scope of the claims. © 2008 Thomson/West. and not necessarily the claims. the Abstract should include principally the technical disclosure of the improvement. by way of example. *7-104 If the new technical disclosure involves modifications or alternatives. No Claim to Orig. 3. In certain patents. Works. 2. If a chemical compound. [FN140] The nature of the Abstract depends on the invention. [FN137] *7-103 The Abstract is directed to what is disclosed in the specification. that is. Application s 7." The purpose of the Abstract is to enable the Patent Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. where the process for making and/or using the composition is not obvious. Accordingly. because that exceeds the space provided for the Abstract on the computer tape used by the printer. to the Patent Office. Therefore. the preferred modification or alternative. its method of making.5. the Abstract should set forth a process for making and/or using the compound or composition.5. the general nature of the compound.5.11 Abstract The Abstract generally goes at the very end of the specification. it is generally limited to a single paragraph with 50 to 150 words. particularly those for compounds and compositions. . If the invention is a machine or apparatus. its identity in use." [FN138] although the Patent Office does accept "Abstract.11 FOR EDUCATIONAL USE ONLY How to Write Pat.PLIREF-PATAPP § 7. if the patent is in the nature of an improvement in an apparatus. If a mixture. product.11 (Cite as: PLIREF-PATAPP s 7. If the invention is of a basic nature. immediately after the claims.5. October 2006 Chapter 7: Writing the Specification § 7. 4. the Abstract should not compare the invention with the prior art. or composition. The Abstract must commence on a separate sheet. US Gov.5 Writing the Specification *7-102 § 7. the entire technical disclosure may be new in the art. its ingredients. and the Abstract should be directed to the entire disclosure. the Abstract should mention. It should include that which is new in the art to which the invention pertains.

This would be a mistake.P. [FN139].P.72(b).11 (Cite as: PLIREF-PATAPP s 7. § 608.5. 37 C.F. Kinetic Concepts.. Jeneric/Pentron. 54 U..11 FOR EDUCATIONAL USE ONLY How to Write Pat.01(b). Id. No Claim to Orig. [FN140]. 209 F. such as "the disclosure concerns" and "the disclosure defined by this invention. Id. HillROM Co. such as "means" and "said. 205 F. Inc. M. & KCI Therapeutic Servs. Inc. Id. 2000) (prior PTO rule that the abstract "shall not be used for interpreting the scope of the claims.S. formal legal phrases and terminology often used in patent claims.3d 1377.PLIREF-PATAPP § 7. . Cir. [FN141]. [FN138]. v.R. US Gov. Application s 7." should be avoided. because the Federal Circuit has held that it is proper to look to the Abstract in interpreting the meaning of the claims.2d 1086 (Fed.5. Dillon Co. [FN142] Thus the Abstract deserves as much attention as the written description. 2000) (construction of the term "cushion" determined from both the abstract and the written description portion of the patent). Abstracts should be concise and not repeat information given in the title.P. In writing the Abstract. [FN142].3d 1337 (Fed.5. PLIREF-PATAPP s 7. [FN137].11) Page 2 5.11 END OF DOCUMENT © 2008 Thomson/West.Q. Works.. If a process. v. the steps.. Inc." does not govern the process by which courts construe claims in infringement actions). the Abstract should avoid using phrases that can be implied. Inc. § 1.5. Also. Cir." Many practitioners do not consider the Abstract to be important and do not give it much attention.E.

The following recommendations help avoid having a court narrowly interpret a claim: 1. 3.6 END OF DOCUMENT © 2008 Thomson/West. For example. Application s 7. but if they are used. Do not use the term "present invention" unless it is accompanied with a statement that the element or version discussed is only an example of the invention. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.6 Strategic Writing of the Specification for Broad Claim Interpretation An issue commonly facing courts in interpreting claims is whether to limit the claims to a specific embodiment disclosed in the application or to interpret the claims broadly. use express definitions of key claim terms with broad functional definitions. No Claim to Orig. 6. In describing specific structures. Specify that it is not necessary for all embodiments of the invention to have all the advantages of the invention or fulfill all the purposes of the invention. Provide alternatives to any limitation that appears in the claims. ." PLIREF-PATAPP s 7. US Gov. Avoid statement of objects of the invention.6 (Cite as: PLIREF-PATAPP s 7.PLIREF-PATAPP § 7.6 How to Write Pat. 4. 5. describe them in a nonlimiting manner. Works. Where limited numbers of embodiments are disclosed. October 2006 Chapter 7: Writing the Specification *7-105 § 7. 2. state explicitly that the structure is just one example of elements operable in the invention. use language such as "preferred benefits" or "preferred advantages.6) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.

In using these words. December 2001 Chapter 7: Writing the Specification *7EX-1 Exhibit 7-1: Terminology Introduction One of the more difficult tasks of drafting the patent specification is finding words that adequately describe the structure of the invention. *7EX-2 A.C. The key words and equivalent alternatives are intended to provide an illustrative. pedestal. to guarantee their acceptability to the Office. The words are arranged alphabetically under distinct functional categories. words describing qualities. Application 7 Exh. provided the terms are defined in the specification. matrix Band. US Gov. keep in mind that "a patentee may be his own lexicographer. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. Many of these words were obtained from issued patents published in the Official Gazette of the Patent and Trademark Office. list. such as words describing materials and processes.S. foundation © 2008 Thomson/West. 7-1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. not exhaustive. belt. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. should not be misdescriptive. and words describing spatial relationships. No Claim to Orig. appendage Array." Coined terminology or terms commonly used in the trade may be used to provide a more accurate or a more flexible description of the invention. Works. The Patent Office will reject a patent application under 35 U. Structural Elements Arm. tube Base. words describing quantities such as "at least" or "greater than" may be rejected as indefinite disclosures. The coined terminology. For example. § 112 if the claim language is indefinite or overly broad.PLIREF-PATAPP 7 Exh. Imprecise words can also limit or distort the scope of the claims in subsequent litigation. however. . Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. This exhibit provides words and phrases that are commonly used to describe inventions. Words specifying broad categories of chemical compounds such as "acids" or "alcohols" may be regarded as overly broad. strap Bail Band Barbs Barrel.

centrifugal.PLIREF-PATAPP 7 Exh. casing Brace. shell Chain Chamber. 7-1) Page 2 Beam . sprag. container. spiral Collar Column Container © 2008 Thomson/West. buttress Bracket Brake Branch Cable. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. Application 7 Exh. lid Carriage Casing. US Gov.cantilever beam Bearing. cog Cap. toothed. strand Cam. No Claim to Orig. housing. one-way Coil. Works. bushing Belt Blade Blower Body. line. . wire. container. box Chamfer Chute Circuit Clutch. strut. frame Boom Box. 7-1 (Cite as: PLIREF-PATAPP 7 Exh.

filament Filament. strand File Fin Frame. sheave. US Gov. constituent. member Elongate. barrel Edge. nucleus. component. membrane Die. support Fulcrum Gauges © 2008 Thomson/West. Friction Fork Fiber. center Cover Cylinder Device. Works. rim. toothed Drum. embodiment Diaphragm.PLIREF-PATAPP 7 Exh. extend Enclosure Film. coating. 7-1) Page 3 Conveyor Core. stretch. lip Elbow. wire. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. canister. L-section Element. skirt. Application 7 Exh. layer Finger Flange. mold Disc Drive .belt. No Claim to Orig. skeleton. pulley. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. .

PLIREF-PATAPP 7 Exh. Jaw Journal Knob. No Claim to Orig. wire Loop. spur gear. covering Hub. catalogue. ply Layers. gear pinion. opening Hollow. wafers Ledge. foot Lever Line. grip Hole. list Intermittent. core. grasp. cord. Works. support Handle Head Helical.bevel gear. sprocket. worm gear Gusset. tag. cavity Housing. twine. ticket *7EX-3 Laminate. 7-1) Page 4 Gear . coil. case. center Hydraulic Index. stratum. bore. laminate. skirt Leg. spring Holder. circle. twist Machine Mechanical Medium © 2008 Thomson/West. escapement. spiral. US Gov. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. edge. grip. handle Label. Application 7 Exh. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. orifice. .

post Preform. partition Particle. form. . form. fragment. spout Object. No Claim to Orig. divider. lid. weave Mold. diaphragm Mesh. trace pattern. 7-1) Page 5 Member Membrane. configuration Pedal Pipe. device Pad. cushion Panel. shape Probe Projectile Prong Pulley © 2008 Thomson/West. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. article. web. cylinder Plate. Application 7 Exh. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat.PLIREF-PATAPP 7 Exh. conduit. gouge Nozzle. platen. duct. tube Piston. Works. US Gov. pin Notch. design. platter Platform Plug. grid. knit. fashion Motor Neck Needle. nose. stopper Plunger Pole.

PLIREF-PATAPP 7 Exh. barrier. bar. restrictor Ridge. form Sheet Shell. US Gov. skirt Rib Ribbon. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. shank Shape. rod. sensing device Serration. Works. tank Restriction. sheath Shield © 2008 Thomson/West. filter Seat Segment. tank Reducer Regulator Release Reservoir. No Claim to Orig. band. link Rod. 7-1) Page 6 Rib Ring Rod Ratchet Reactor. beam. piece. pole Roller Saddle Screen. notch Shaft. portion Sensor. figure. . Application 7 Exh. edge. hoop. kettle. circle. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. strap Ring. divider.

US Gov. slot Spike Spine. belt Strut Substrate. pile Step Storage. vessel Tap Taper. procedure Tab Tack Tank. band. pressure.PLIREF-PATAPP 7 Exh. spindle Spool Spring. . strand Strip. frame Spoke. coil Sprocket Stack. reduce Teeth Tension. plan. narrow. border. base Switch System. No Claim to Orig. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. edge Sleeve Slit. Application 7 Exh. 7-1) Page 7 Shoe Shoulder Skirt. store Strap. Works. strain © 2008 Thomson/West.

mesh. shaft Turbine Track Truss Union. angle Tongue Toroid. US Gov. outlet Wall Washer Web. pipe. hose. coil Tool. Application 7 Exh. No Claim to Orig.PLIREF-PATAPP 7 Exh. Works. line. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. cord Throat. implement Transducer Trap. . neck Tilt. screen Wedge Window © 2008 Thomson/West. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. switch Trough. aperture. union tees Upright Utensil Valve Variable speed Vent. catch *7EX-4 Trigger. vessel Tube. 7-1) Page 8 Terminal Textile Thread. tank.

Works. block Cylinder Depression Disc Dome Elliptical Ellipse Ellipsoid Fin Flange Fold Fork © 2008 Thomson/West. tubular A-shaped. 7-1) Page 9 Wire. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. US Gov. No Claim to Orig.PLIREF-PATAPP 7 Exh. C-shaped Arch Arcuate Barrel Bucket Channel Circle. circular Concave. Shapes and Forms Annular. . cord. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. line. string Yoke B. Application 7 Exh. convex Conical Corrugated Cup Cube.

PLIREF-PATAPP 7 Exh. No Claim to Orig. 7-1) Page 10 Form. shape Helical Helix Hexagon Hook Hyperbola Hyperboloid Involute Lines Notch Oblong Octagon Oval Parabola. Application 7 Exh. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. parabolic Paraboloid Pentagon Plane Polyhedron Prism Pyramid Rectangular Rhombohedral Round Sheet Shelf Sinusoidal Spherical © 2008 Thomson/West. Works. . 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. US Gov.

7-1) Page 11 Square Taper Torus Trapezoid Triangular Trough Tubular Twist Web Wedge C.PLIREF-PATAPP 7 Exh. . project Face © 2008 Thomson/West. Works. configured. assembled Axially Base. oriented Arranged. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. overhang. touching Extend. US Gov. opening. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. lip. adjacent Aligned. No Claim to Orig. ingress Adjoining. rim Engaging. boundary Column Curvature Cut Edge. pedestal Bind Center Circumference. Application 7 Exh. Spatial Relationships Access.

7-1 (Cite as: PLIREF-PATAPP 7 Exh. foot Hermetic seal. head © 2008 Thomson/West. path. . compensate. within Incident Incline Including Inhibit Integral Invert Junction. fine. Application 7 Exh. joint Lateral Line/linear Longitudinal Motion Narrow. sealed In. pathway Peak. tip. No Claim to Orig. slender Oblique Offset. fluctuating Parallel Partition. aperture. divider Passage. US Gov. 7-1) Page 12 Fixed. tip Heel. attached *7EX-5 Head. peak. Works.PLIREF-PATAPP 7 Exh. counter Opening. entrance Opposed Orientation Oscillating. inside. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat.

plane Ply. location Profile Proximate. proximal Quadrant Radial. 7-1) Page 13 Perimeter. outlying. posterior Reference Region Relation. . Works. laminate Point Position. No Claim to Orig. circumference. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. boundary Peripheral.PLIREF-PATAPP 7 Exh. periphery Perpendicular Planar. US Gov. radius Rear. Application 7 Exh. radiate. relationship Relative Remote. sidewall © 2008 Thomson/West. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. back. base Row Sectional Separate Series Shoulder Side. obscure Retainer Retract Reverse Root. foundation.

joined. 7-1) Page 14 Skin. break. void Gluing. shell Stand Support Surface Surround Suspend Symmetry Twist Upper D. attached Bolt. No Claim to Orig. mated Connection. Application 7 Exh. hole. hole Channel. clip Clip Coupled. opening Cavity. Fastening & Joining Aperture. joining © 2008 Thomson/West.PLIREF-PATAPP 7 Exh. Works. joint Demountably Dowel. bolt. . US Gov. conduit Clamp. opening Anchored. dowel. pin Engage Fix Fastener. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. screw Gap. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. rivet. fastener. pin Bore.

bolt. peg Pivot. post Pin. joint. niche Rivet. coupling. dowel Nut *7EX-6 Paste. glue Peg. dowel. fastener. coupled Mount. connection. closure. latch Mate. pin. fastener Inlet Ingress Interconnect. US Gov. opening. nail. clasp. No Claim to Orig. . position. axis. interlock Interface Joint.PLIREF-PATAPP 7 Exh. rivet © 2008 Thomson/West. place Nail. channel Guide Hinge. Application 7 Exh. bolt. pivot Hold Hook. fulcrum. juncture. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. lock. hinge Port. clip. 7-1) Page 15 Groove. bolt. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. pin. Works. linkage Lock. seam. screw Screw. cavity. securing means Latch. secure Link. union Keeper Key. adhesive. joint. fasten. ingress Recess. latchkey.

channel Welding E. insignificant. bind. measure. meager Least Long-lead Metered Minor. joint. slight Measure Micro © 2008 Thomson/West.PLIREF-PATAPP 7 Exh. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. sinusoidal. . 7-1) Page 16 Seal. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. secure Seam. vast Interval Large. US Gov. base. fasten Track. slot Station. volume Cyclic. extent. bulky. fasten. Works. bond. portion Effective. install Stitch Tape. Quantities Alternate Amount. competent Greater. Application 7 Exh. alternate Dosage. No Claim to Orig. weld Secure Set Slit. aggregate Content. massive Lean.

Works. measurements Stoichiometric Sum. multiplicity. section Volume. fraction Quantity. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. fragile Conductive Ductile. plurality Portion. segment Proportion. unitary. whole Threshold. quantity Zero F. sizable number Sinusoidal Size. inflexible. compliant. numerous One of. rigid.PLIREF-PATAPP 7 Exh. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. alone. Characteristic Properties Brittle. . solely Periodic Plural. malleable. minimum Trace. amount Range. limit Significant number. No Claim to Orig. aggregate. piece. Application 7 Exh. dimensions. US Gov. ratio. dimension. one or more Only. Materials 1. hint Unit. pliable © 2008 Thomson/West. element. fragment. 7-1) Page 17 Minima More Multiplicity. numerous Number. multiplicity.

aqueous Full. minute Firm. natural. penetrable. luminous *7EX-7 Random. living Solid. rigid. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. consistent. uniform Hydrophilic Hydrophobic Incompressible Inert. fluid Lubricative Mechanical Organic. 7-1) Page 18 Elastic. Works. rigid Heavy.PLIREF-PATAPP 7 Exh. unreactive. level Fluid. saturated. whole Hard. yielding Fine. Application 7 Exh. No Claim to Orig. US Gov. inactive. impenetrable Pitch. stiff. sound Plasticize Porous. entire. permeable Radiant. pliant. firm. liquid. dense Opaque. . flexible. bright. tone. stable Insoluble Insulative. shielding Liquid. massive Homogeneous. arbitrary Reactive © 2008 Thomson/West. supple. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. dense. ample. fixed Flat.

level Soft. slender. rugged Sensitive. repellant Rigid. angle. springy Resistant. insulative Resilient. No Claim to Orig. close Tilt. fixed. elastic. . incline. narrow Tight. clear Weak. frail. Polymeric Materials Acetal Acrylic Acrylonitrile-butadiene-styrene (ABS) Alkyd resins Butadiene Cellulose acetate Engineered plastics © 2008 Thomson/West. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. hard. relaying Translucent Transparent. slope Transmitting. pliable Soluble Stable. unreactive. US Gov. broad Thin. 7-1) Page 19 Refractory. inert Tactile Thick. fragile 2. supple. flexible. Works. grade. Application 7 Exh. delicate Smooth.PLIREF-PATAPP 7 Exh. constricted. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. stiff Rough.

No Claim to Orig.PLIREF-PATAPP 7 Exh. US Gov. Application 7 Exh. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. . Works. 7-1) Page 20 Epoxy resins Fluroplastics Foam plastics Foam rubber Furane Isoprene Latex Nylon Phenolic resins Phenoxy Phenylene oxide Polyacetal Polycarbonate Polyester Polyethylene Polyimide Polyphenylene oxide (PPO) Polypropylene Polystyrene Polysulfone Polyurethanes Polyvinylchloride (PVC) Rubber Silicone resins Styrene Thermoplastics Thermosets © 2008 Thomson/West.

Application 7 Exh. Ceramics & Minerals Alumina Alumino-silicates Carbides Concrete Glass Granite Graphite Magnesia Marble Mica Mullite Nitrides Oxide ceramics Plaster Quartz Silica Spinel Talc Zircon 4. US Gov. .PLIREF-PATAPP 7 Exh. 7-1) Page 21 Urethanes Vinyl chloride 3. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. Metals Aluminum Brass Bronze Copper © 2008 Thomson/West. Works. No Claim to Orig.

7-1 (Cite as: PLIREF-PATAPP 7 Exh. No Claim to Orig.PLIREF-PATAPP 7 Exh. . plain weave Wool 6. carbon steel Tin Titanium *7EX-8 5. satin weave. stainless steel. 7-1) Page 22 Chromium Gold Iron Lead Mercury Nickel Platinum Steel. Textiles Cotton Felt Flax Hemp Jute Linen Nylon Polyester Rayon Silk Weave. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. Common Gases and Liquids Acetylene Acids Air © 2008 Thomson/West. US Gov. Works. Application 7 Exh.

7-1 (Cite as: PLIREF-PATAPP 7 Exh. US Gov. No Claim to Orig. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. Works. Common Processes Assembly Brazing © 2008 Thomson/West. . Processes 1. 7-1) Page 23 Alcohols Ammonia Bases Benzene Butane Carbon dioxide Carbon monoxide Chlorine Diesel Ethane Glycerine Helium Hydrogen Natural gas Methane Oils Oxygen Petroleum Phenol Propane Thinner Toluene Turpentine Water G. Application 7 Exh.PLIREF-PATAPP 7 Exh.

baking. Works. heating. warming Electroplating Encapsulating Evaporation Extrusion Filtration. Application 7 Exh. polycondensation Cooling. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. chilling. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. thawing Decomposition Distillation Dispensing. US Gov. 7-1) Page 24 Casting. stamping © 2008 Thomson/West. No Claim to Orig. separation Freezing. frosting Grinding Heating. dispersing. stirring Physical vapor deposition Pressing. forming molding Chemical vapor deposition Condensation.PLIREF-PATAPP 7 Exh. . warming Hot pressing Hydrolysis Impregnating Injection molding Ion-implantation Ion plating Isostatic pressing Machining Mixing. blending. disseminating Drying.

segregation Sputtering Transfer molding Vacuum forming Washing.PLIREF-PATAPP 7 Exh. US Gov. cleansing. scrubbing 2. synthesis Sandblasting Separation.piston. Application 7 Exh. Works. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. 7-1) Page 25 Reacting. Fluid Flow Accumulator Aspirator Bellows Conduit Connector Convection Cylinder . 7-1 (Cite as: PLIREF-PATAPP 7 Exh. rod *7EX-9 Dashpot Diaphragm Discharge Dispenser Filter Fitting Flue Gasket Hose Hydraulic Medium Nozzle © 2008 Thomson/West. . No Claim to Orig. isolation.

.inlet. 7-1 FOR EDUCATIONAL USE ONLY How to Write Pat. 7-1) Page 26 Outlet Pipe Plunger Port . outlet Pump . vane Reservoir Seal Siphon Tank Tube Valve. piston. Works. No Claim to Orig. gear.PLIREF-PATAPP 7 Exh.centrifugal. 7-1 (Cite as: PLIREF-PATAPP 7 Exh. gate. shutoff PLIREF-PATAPP 7 Exh. control. US Gov. 7-1 END OF DOCUMENT © 2008 Thomson/West. Application 7 Exh.

7-2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. December 2001 Chapter 7: Writing the Specification *7EX-11 Exhibit 7-2: Chart of Elements 10 Apparatus 12 Base of apparatus 10 14 Housing of apparatus 10 16 Motor of apparatus 10 18 Legs of base 12 20 Bottom portion of legs 18 PLIREF-PATAPP 7 Exh. Works. 7-2 (Cite as: PLIREF-PATAPP 7 Exh. No Claim to Orig. . 7-2 FOR EDUCATIONAL USE ONLY How to Write Pat.PLIREF-PATAPP 7 Exh. US Gov. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. Application 7 Exh. 7-2 END OF DOCUMENT © 2008 Thomson/West.

7-3 END OF DOCUMENT © 2008 Thomson/West. Sheldon Copyright © 2001 by the Practising Law Institut Current through Release 9. 7-3 (Cite as: PLIREF-PATAPP 7 Exh. . Works. December 2001 Chapter 7: Writing the Specification *7EX-11 Exhibit 7-3 TABULAR OR GRAPHIC MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE PLIREF-PATAPP 7 Exh. US Gov. 7-3 FOR EDUCATIONAL USE ONLY How to Write Pat.PLIREF-PATAPP 7 Exh. 7-3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. No Claim to Orig. Application 7 Exh.

[FN2] Even if the Patent Office did not explicitly require disclosure of material information. At a minimum. even if the patentee ultimately prevails in persuading the court that the uncited prior art need not have been brought to the attention of the Patent Office.1 Introduction It is a very rare patent application that is not accompanied by an information disclosure statement.C.PLIREF-PATAPP § 8. § 285. 37 C.R.S. [FN1] The duty also extends to any other individual who is involved in the substantive preparation or in the prosecution of the application.1 How to Write Pat. the accused infringer will have a difficult time at trial trying to persuade the trial judge or jury that the Patent Office made a mistake in issuing the patent when the infringer can find no art more pertinent than that already considered by the examiner. even if at least some of the claims of the patent would have issued the patent had the prior art been disclosed to the Patent Office.S. substantial sums will have been spent litigating the issue.1 (Cite as: PLIREF-PATAPP s 8. Works. For example. © 2008 Thomson/West.C. Antitrust liability if the inequitable conduct amounts to fraudulent procurement of a patent. even if the inequitable conduct occurred in relation to fewer than all the claims in the patent. or both suspension and disbarment of the attorney or patent agent responsible for the inequitable conduct under 35 U. Application s 8. This is because the Patent Office and the courts impose upon inventors and their attorneys and agents a duty of candor and good faith toward the Patent Office. [FN1]. It is usually in the best interest of any inventor to have the most relevant art before the Patent Office when the examiner examines the application. October 2006 Chapter 8: Information Disclosure Statement *8-2 § 8. § 1. [FN3] A finding of inequitable conduct can have the following disastrous consequences: 1. resulting in an award of attorneys' fees under 35 U. disbarment. [FN4] Moreover. § 32. Moreover. [FN7] 4. US Gov.56. it becomes much easier for an accused infringer to overcome the presumption of validity of the patent at trial by producing documents that are more material to the patentability of an invention than those cited by the patent holder *8-3 than it is without such documents. This is because any resulting patent is much stronger and much less vulnerable to collateral attack if the Patent Office considered all material prior art and still allowed the patent to issue.F. intentional withholding of material prior art can result in a finding of inequitable conduct. Suspension. a good practitioner should voluntarily disclose that information. inequitable conduct can render related patents unenforceable. Unenforceability of the entire patent. . [FN5] 2. That duty requires the attorney and agent to disclose to the Patent Office any information known to them that is material to the patentability of the application. The consequences of failing to comply with this duty to disclose material information can be substantial. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. [FN6] 3. No Claim to Orig. Awarding of attorneys' fees: a finding of inequitable conduct can result in the case's being considered exceptional. In any subsequent patent infringement action.1) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.

Inc. . v.2d 1047.2d 804 (Fed. Inc. Food Mach. Corp.P. & Chem. Cir.PLIREF-PATAPP § 8.1) FOR EDUCATIONAL USE ONLY Page 2 [FN2].2d 1418. 822 F. Cir. Consol.2d 1384. v. 1421. 873 F..Q.P. 10 U. [FN5].P.S... Consultants.. Hollister. Merck & Co.P. Ltd.S. 404.P. 1989). [FN3]. v.S. US Gov. 910 F. J. Cir. PLIREF-PATAPP s 8. 863 F.S. 9 U.S. Application s 8. [FN7]. [FN6]. Id. No Claim to Orig. v. Lex Tex. [FN4]..Q. 1392 (Fed.1 END OF DOCUMENT © 2008 Thomson/West. Cir.2d 1682 (Fed. 147 U.2d 867. 1990) (concealment of best mode rendered related patents unenforceable). Aluminum Corp. Danbury Pharmacal. Kingsdown Med.Q. Ltd. 1987). Foseco Int'l Ltd. 1988). Stevens & Co. v. Walker Process Equip. Works.1 (Cite as: PLIREF-PATAPP s 8. 233 U. 1089 (Fed.Q.1 How to Write Pat. 172. 382 U.

1 END OF DOCUMENT © 2008 Thomson/West.F. Works. According to 37 C. October 2006 Chapter 8: Information Disclosure Statement § 8.R.1 The Pre-1992 Standard According to 37 C. § 1.2.2.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G.56. US Gov. § 1. had the Patent Office been aware of the withheld information.R.56 if the nondisclosed information is found to be material.1 FOR EDUCATIONAL USE ONLY How to Write Pat. 1992. as it existed prior to March 16.PLIREF-PATAPP § 8. No Claim to Orig. . § 1. there may be a violation of 37 C. Under a "but for" test. Application s 8. as it issued. all information that is material to the examination of the application must be disclosed. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.2. PLIREF-PATAPP s 8. As discussed above. even if the patent would have issued had the uncited information been disclosed to the Patent Office.F.56.2.F." This is not a "but for" test.R.1 (Cite as: PLIREF-PATAPP s 8. information would need to be disclosed to the Patent Office only if the Patent Office would not have issued the patent.2 What Information Must Be Disclosed *8-4 § 8.2. information is material "where there is substantial likelihood that a reasonable examiner would consider it in deciding whether to allow the application to issue as a patent.

2 The Current Patent Office Standard By a notice published in the Federal Register on January 17. burden-of-proof standard. 1992.56. or *8-5 (b) asserting an argument of patentability. Under this standard.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. § 1.2. 1992. or 2. information is material if: 1. October 2006 Chapter 8: Information Disclosure Statement § 8.F. the test for materiality is much closer to a "but for" test.2 What Information Must Be Disclosed *8-4 § 8. PLIREF-PATAPP s 8. a position the applicant takes in either (a) opposing an argument of unpatentability relied on by the Patent Office.F.PLIREF-PATAPP § 8.R. § 1. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.2 FOR EDUCATIONAL USE ONLY How to Write Pat. and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.2. The new rules are effective with respect to all applications and re-examination procedures pending or filed after March 16." This standard is applied by "giving each term in the claim its broadest reasonable construction consistent with the specification.2." A prima facie case of unpatentability "is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence." [FN8] Information is not material when the information is cumulative with respect to information already of record or being made of record in the application. 37 C. . [FN8].R.2 (Cite as: PLIREF-PATAPP s 8. US Gov. the information refutes. The new rule also includes a definition of "prima facie case of unpatentability. or is inconsistent with. No Claim to Orig.2. 37 C. Application s 8.56 and related rules were changed.2. the information establishes by itself or in combination with other information a prima facie case of unpatentability of a claim.2 END OF DOCUMENT © 2008 Thomson/West. Under the new standards. Works. These changes included a change in the standard of materiality.

§ 1.2. It is better to cite a reference than incur the risk of a finding of inequitable conduct. even when the practitioner preparing or prosecuting an application believes that the information does not affect the patentability of a particular invention. agent. 2. someone else may see it differently and embarrassing questions can be avoided.3) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. material to the patentability of the invention. or applicant does not consider it necessarily material.2. it is desirable and safest to submit information. .F. . Even though the attorney. The change in the definition of "materiality" should not be relied upon as a basis for not citing information.3 (Cite as: PLIREF-PATAPP s 8.2 What Information Must Be Disclosed *8-5 § 8.3 FOR EDUCATIONAL USE ONLY How to Write Pat. the Court of Appeals for the Federal Circuit has not endorsed a change to Rule 56. [FN10] Another reason to use a rule of doubt is that the filing of an information disclosure statement is not construed as an admission that the information cited in the statement is. the Patent Office should determine that the showing complies with the requirements of 37 C. [FN11] This "rule of doubt" means that in most situations. [FN9] It is uncertain if the *8-6 Federal Circuit will endorse a rule that allows an applicant to refrain from citing information to the Patent Office that a reasonable examiner would consider important but that does not establish a prima facie case of unpatentability. There are two reasons for this recommendation. § 1.F. it should nevertheless be cited to the Patent Office. the practitioner should let the Patent Office make the decision. . No Claim to Orig.131. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. even if the applicant can swear behind the filing date of a United States patent or publication date of a reference with a declaration under 37 C. Nonanalogous art: The examiner should be given the opportunity to determine whether a particular reference is analogous or nonanalogous. Exemplary of situations that can arise are the following: 1. US Gov.131. the questions of relevancy in close cases.PLIREF-PATAPP § 8. The Federal Circuit has only endorsed the old materiality standard. October 2006 Chapter 8: Information Disclosure Statement § 8. should be left to the examiner and not the applicant. the reference should be cited to the Patent Office. Application s 8. the Patent Office endorses this rule of doubt: When in doubt. In short.2. First. Similarly.R. . "Prior" art or nonprior art: Even if the publication date of a reference is after the filing date of a parent or foreign application from which priority is claimed. or is considered to be.3 Recommendations The author recommends that a "rule of doubt" be followed when deciding whether certain information should be disclosed to the Patent Office.R. Second.2. [FN12] *8-7 That allows the examiner to independently determine whether the applicant is entitled to the benefit of the filing date of the parent application or foreign priority application. © 2008 Thomson/West. Even if there is doubt as to whether particular information is "material" under either old or new Rule 56. Works.

On sale. stateof-the-art.2. This situation can arise when a particular inventor has different applications pending with patentably indistinct claims present. [ ] Other documents known to the inventor. [FN15] [ ] References cited in related foreign applications. failure to disclose the rejection of claims in a copending application before a different examiner that are substantially similar to the claims present can constitute inequitable conduct. that should be noted in the attorney's or applicant's file. and patentability searches. even if inventorship is correct.PLIREF-PATAPP § 8. including parent and sister applications and patents. [FN16] The Patent Office believes there is a strong inference that prior art or other information is material when it has *8-9 been used in rejecting the same or similar claims in a related foreign application or is the only prior art cited in a related foreign application. or did not encompass a complete invention. These applications and patents can raise double-patenting issues. subsequent application. It is much easier to write a strong patent application knowing all the prior art. etc. prior art references from one application must be made of record in another.2. According to the Patent Office. The following checklist is useful for identifying material information: [ ] Publications and patents that belong to the inventor(s). [ ] References cited in related United States applications.56. such as where a potential inventor has no obligation to assign the invention to the client. including parent and sister applications. including prior art. [ ] Related United States applications or patents. This is particularly true where there may be a motive for misjoinder of an inventor or nonjoinder of an inventor.3) Page 2 3. An honest and excusable mistake can help prevent a finding of fraud or inequitable conduct. [ ] Published related foreign applications. The Patent Office believes it is desirable to submit information about prior uses and sales even if it appears that they may have been experimental. *8-8 If information is specifically considered and discarded as not being material. US Gov. Not only will this ensure that the practitioner complies with the duty of good faith and candor under 37 C. novelty. Works. It is very difficult for an inventor charged with inequitable conduct to deny knowledge of his or her own publications or patents. but it also allows for preparation of a better patent application. publicly known. in-house reviews. [ ] Any references developed by any search in the technology.2.R.1] © 2008 Thomson/West. [FN14] A good practitioner expends extra effort in identifying information that should be brought to the attention of the Patent Office. or experimental uses: Sufficient relevant facts and documents should be presented to the Patent Office to let the examiner reach his or her own conclusion regarding whether a particular activity amounts to an "on sale" or "public use. along with the reasons for discarding it. infringement. [FN18] Moreover. No Claim to Orig. did not specifically involve the claimed invention.F. . The Patent Office's position on this issue is very much in favor of disclosure. Application s 8." or whether the experimental use exception applies. [FN13.1] consider presenting facts relating to inventorship to the PTO.3 (Cite as: PLIREF-PATAPP s 8. [FN13] 4. [FN17] It is recommended that any search report issued by a foreign patent office be included with the documents cited. plant visits. [FN18. Practitioners cannot assume that the examiner of a particular application is necessarily aware of other applications that may be material. [ ] Information obtained by the inventors and others at conventions. Inventorship: Because facts relating to inventorship issues can be material. § 1.3 FOR EDUCATIONAL USE ONLY How to Write Pat. and a parent patent can be the closest prior art for claims not supported by the parent patent.

E. M. 37 C.N. [FN10].S. after he was aware of the particular document. [FN18. [FN21. Danbury Pharmacal..C.C. M. even if it is not prior art. This does not apply in the situation of divisional and continuation applications. Partial translations can be troublesome. and particularly prior art so identified. Inc.F. 107 (N. [FN21.C.P.P.C..PLIREF-PATAPP § 8.C.2. v. [FN11]. a practitioner should assure himself or herself of the applicability of these exceptions and. § 103 can disqualify as prior art certain subject matter when the invention is made as a result of a joint development agreement. even if the information is not prior art. This can result in an "on sale" or "publicly known" bar under 35 U.Q. Developments by coworkers can qualify as prior art under 35 U.S.2] *8-10 [ ] Information that may be deemed prior art under 35 U.S. [FN19] Also.D.F. 102(f)/103. would consider it important in deciding whether to reject one or more claims). [FN14]. § 1. At a minimum. § 103(c) is the subject matter of a separate patent application. US Gov. Pharmacia Biotech.P. It is best to get a full translation.4] [FN9]. or issuance of a patent. § 2004(18). Application s 8. [FN13. § 2004(11). 1421.C. § 1. Inc. 2000). [FN21.R. 873 F. § 103 because 35 U. occurred about one year before the filing date of the application. § 103 disqualifies §§ 102(e)/ 103.S.. there is a duty to investigate that event.Y. Cir. motions filed by the opposing party and any claim construction by the court. [FN12]. provide an opportunity for the Patent Office to make the determination.1].P. 37 C. Cir. [FN20] such as art cited by the opposing party. such as a sale. Works. [FN15].C. [FN21] *8-11 [ ] Information relating to a potential priority conflict. § 2001. it is advisable to bring that application to the attention of the Patent Office for a possible double patenting rejection.S. M. 210 U. § 102. Inc.Q. [ ] Information relating to claims copied from a patent. [FN13].E. Once an attorney is on notice that a possibly material event.S. § 2004(10) (citing U.607(c) requires the applicant to identify the patent and the numbers of the patent claims.E.P.S.C. 1980)). .P.R.S. and 102(g)/103 prior art that was.2d 1418. owned by or subject to an obligation of assignment to the person who owned the first invention.P.S.S.97(h). 94.2d 1682 (Fed." Under many circumstances this would not be "prior art" under 35 U.3) Page 3 [ ] Any commercial activity relating to the invention. Merck & Co.2] [ ] Any translation available for foreign prior art submitted.3] [ ] Information relating to the claimed invention submitted to government agencies such as the FDA. since the specifications of the parent and subsequent application are supposed to be identical.3 (Cite as: PLIREF-PATAPP s 8. because an opponent in litigation can allege that the partial translation was deceptive. §§ 102(f) and 102(g) can be combined with 35 U. [FN21.2.3d 1315 (Fed. 10 U. at the time the second invention was made.06(b).2.3 FOR EDUCATIONAL USE ONLY How to Write Pat.P. Norton Co. § 102(g) as inventions "by another. v. If the subject matter that does not qualify as prior art under 35 U.1] [ ] Information that is relevant to enablement.S. Perspective Biosystems. [ ] Information from related litigation. 35 U. No Claim to Orig. if there is any doubt. It can be dangerous to unilaterally determine that such information is not prior art. Indus. publication. § 103.P. v.E. When claims are copied or are substantially the same as claims from a patent. 1989) (disclosure standard is whether a reasonable examiner. M. 225 F.P. public use. © 2008 Thomson/West.

Total Containment. M.2. 204 F. Bristol-Myers Squibb Co.R. Cir. Brasseler. Dayco Prods.06(a)..P. Cir. [FN21. Co. Application s 8.1]. [FN18. 329 F. § 103(c). Franklin Corp.E.3d 1358.2d 1141 (Fed.P. PLIREF-PATAPP s 8. Inc.PLIREF-PATAPP § 8..2. § 2001. No Claim to Orig. Cir. 326 F. [FN21]..3) Page 4 [FN16]. 2003) (non-prior-art article by the inventors reporting unsuccessful use of compounds specifically taught in the patent as being successful was material as to enablement). US Gov. [FN18].P. [FN21.P. M. v.. 2001). L.P. Cir. . Living Aids. Semiconductor Energy Lab. v.S. 394 F. Stryker Sales Corp. Total Containment.E. 2001).Q. Inc.2.P. U. 66 U. v.56(a)(1).P.E.E.3 (Cite as: PLIREF-PATAPP s 8. Cir.2].P.S. v. [FN19].06(b). § 2001.S. 66 U. Cir. 37 C. v. GFI Inc. 267 F.2]. [FN21. M.06(d). Acorn Mobility Servs. Dayco Prods.P. [FN20]. 2d 1481 (Fed.2d 1801 (Fed..3d 1348 (Fed.P.S.A.3]. [FN18. § 2001.S.3 END OF DOCUMENT © 2008 Thomson/West.1]. v. [FN17].4]. Cir. § 1. Works. Inc. 2000).P.Q. I.P. 35 U.. Bruno Indep.06(c). 329 F.Q.F. M.C.. Inc. 2005) (failure to cite to the PTO prior art submitted to the FDA resulted in a finding of inequitable conduct and exceptional case). Co. 2003)..2. Samsung Elec.3d 1358. 66 U. Ltd. 2003).P.3 FOR EDUCATIONAL USE ONLY How to Write Pat.3d 888 (Fed. 60 U. v.2d 1801 (Fed. [FN21.. Inc.3d 1226.Q. Inc. Rhone-Poulenc Rorer.S.3d 1368 (Fed. § 2001.

" [FN25] No extensions of time for filing an information disclosure statement are permitted under section 1. (2) provide the fee specified. but part of the required content is inadvertently omitted. as is required under 37 C.R. Works. [FN22] Thus. or provide a statement as to why the information disclosure statement was not filed in time. October 2006 Chapter 8: Information Disclosure Statement *8-11 § 8. A filing is timely if the statement is filed within three months of the filing date of the application or before the mailing date of a first office action on the merits. A late filed information disclosure statement will be considered by the Patent Office if certain requirements are met.17(b). and it is much easier to discuss the relevance of the references. If a bona fide attempt is made to comply with section 1. The three-month period does not apply to continued prosecution applications because of their expedited examination. Application s 8.F. the applicant must pay an extension fee as set forth in 37 C. No Claim to Orig. it is necessary to (1) provide the statement regarding lateness discussed above. or that the information was not known to any individual associated with the filing or prosecution of the patent application within the three months prior to filing the information disclosure statement. [FN26] It is very difficult to get the Patent Office to consider information after the issuance of a final action or a notice of allowance. § 1. US Gov.3) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. *8-12 Moreover. and who is associated with the inventor. . [FN24] These individuals include the inventor(*8-13 s). and "every other person who is substantively involved in the preparation or prosecution of the application. the information disclosure statement should be filed with the patent application.3 How to Write Pat. and © 2008 Thomson/West. The practitioner of course had to consider the prior art when drafting the claims in the application. [FN23] The statement must state that the information was cited in a communication from a foreign patent office in a counterpart foreign patent application within the past three months. whichever event occurs last. it is still possible to make a timely filing when it is not possible to file the information disclosure statement with the application. To have the information disclosure statement considered. Whether or not an information disclosure statement is timely depends on when it is filed. the prior art is fresh in the mind of the practitioner when the application is filed.PLIREF-PATAPP § 8.F.136.98. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.56. such as when copies of references are not available or when the filing is done on short notice to avoid a statutory bar date.3 (Cite as: PLIREF-PATAPP s 8. when the references are fresh in mind. For the Patent Office to consider an information disclosure statement that is not timely filed but that is filed before a final action or a notice of allowance. the attorney or agent who prepares or prosecutes the application. § 1. with the assignee or with anyone to whom there is an obligation to assign the application.R. additional time may be given to enable full compliance. This makes certain that the information is brought to the attention of the examiner at the time the application is originally examined.3 When Should the Information Disclosure Statement Be Filed Whenever possible.

US Gov.F.F. § 1.3) FOR EDUCATIONAL USE ONLY Page 2 (3) file the statement before the issue fee is paid. It is not in the best interest of a practitioner or inventor to have a frustrated examiner. .3 (Cite as: PLIREF-PATAPP s 8.R. 37 C. [FN23].F. § 1. 37 C. The secretary can then identify the examiner assigned to an application.R. 37 C.F. No Claim to Orig. Application s 8. 37 C. PLIREF-PATAPP s 8.F.97(f).R. Works. § 1. § 1.97(d).3 END OF DOCUMENT © 2008 Thomson/West.97(c). [FN24]. [FN27] It is strongly recommended that before submitting any nontimely information disclosure statement.56(c).F. § 1. 37 C.R. [FN26].R.3 How to Write Pat. [FN25].PLIREF-PATAPP § 8.R. It is very frustrating for an examiner to examine an application or amendment and issue an office action that crosses in the mail with the submission of information more material than what the examiner had before him. [FN27]. If the identity of the examiner is not known.97(b).97(e). a telephone call be placed to the examiner to let the examiner know that additional information is being transmitted. [FN22]. the secretary or clerk of the group identified on the filing receipt can be contacted. § 1. 37 C.

It might be a simple statement pointing out the similarities between the item of information and the claimed invention. AB. that is. Therefore. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. Each foreign published application or patent should be cited by identifying the country or office that issued it. and inventor. for each document. The code letters can also be written on each document submitted to the Patent Office to help the examiner coordinate the documents with the information.1] There can be information that is submitted that does not qualify as prior art. or the information submitted may be partly the work of the named inventor. .4) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. As little as possible should be stated about the references. [FN29] The form has been modified by providing a coded designation. title of the publication. and the date and place of publication. its relevance has to be discussed. should refer to the information as being "prior art. it is best to quote language from the document. [FN31] Thus say as little as possible about prior art references in an information disclosure statement. AC. [FN28] It is recommended that the listing of the information be provided on Form PTO-1449 or a form substantially in the same format. Moreover. [FN30] There is no longer a requirement to write a discussion of the relevance of the references in English. including the form listing the disclosed information and the accompanying statement. For example. when discussing the relevance of the document. because whatever is stated could come back to haunt the applicant in litigation. it may be possible to swear behind an issued patent. AA.4 (Cite as: PLIREF-PATAPP s 8." This avoids the information becoming prior art by admission. Statements made in the information disclosure statement can be a basis for interpreting the scope of the claims and can create an estoppel that precludes a finding of infringement under the doctrine of equivalents.4 Content of Information Disclosure Statement The information disclosure statement itself is composed of two parts: (1) a list of patents. the document number. and so on. such as the Abstract or the Summary portion of a patent. If a search report discusses the reference (and is accurate). publisher. then quote the search report. patent date. Nothing submitted to the PTO. Even a statement that an item is listed because it was cited during the prosecu- © 2008 Thomson/West. unless the statement would help achieve allowability of the application. beyond what is required on Form PTO-1449. relevant pages. Application s 8.PLIREF-PATAPP § 8. [FN29. publications. This provides an easy way to refer to each listed reference. *8-16 The explanation of the relevance of each listed item need not be elaborate. and it is important to retain the ability to prove that.4 How to Write Pat. or other information and (2) a concise explanation of the relevance of each listed item that is not in the English language. When the reference is a non-English-language reference. No Claim to Orig. October 2006 Chapter 8: Information Disclosure Statement *8-14 § 8. It can consist of nothing more than identification of a particular figure or paragraph of the patent or publication that has some relation to the claimed invention. Printed publications should be identified by author (if any). For example. *8-15 Whether or not the PTO form is used. A completed form is provided as part of Exhibit 8-1. the references should not be interpreted. all United States patents should be identified by their patent number. Works. and the publication date indicated in the document. US Gov. nothing should be stated about English-language references.

[FN33].3d 1346. PTO-1449 is provided by the Patent Office in M.P.Q.P.E. R.98.R. [FN32] If there is a portion of a reference that is particularly relevant. US Gov.4) FOR EDUCATIONAL USE ONLY Page 2 tion of a counterpart foreign application and is not considered material to the examination of the United States application is considered to satisfy the concise explanation requirement. 2003) (discusses the law regarding prior art by admission and holds that an inventor's own work.4 (Cite as: PLIREF-PATAPP s 8.P. § 609. Also. Why do that prematurely? Arguments should wait until the examiner actually relies on the reference. [FN33] Failure to do that could result in a charge by an accused infringer that the inventor "buried" the most relevant art by citing a large number of obscure references. 66 U. v. related patents and applications can raise double-patenting issues. patent or pending application in the information disclosure statement.F.3d 1274. Arguments about the patentability of the invention over the cited information should not be included in the information disclosure statement. Inc. Ekchian v.P. When there are a large number of references..3. There can also be a charge of inequitable conduct for not disclosing an objection in a related application.P.F. Cir. Abbott Labs.4 How to Write Pat.Q. 37 C. [FN31].. not disclosed to the Patent Office. in excess of about fifteen. § 1. and applications that claim priority from the *8-17 same application from which the present application claims priority. the examiner can be referred to that portion by column and line number or by page and paragraph number. M.98(b). it is prudent not to rely solely on disclosure of the related application or patent. 334 F.P.S. Cir..2. . 2003).P.3d 1299. Application s 8. [FN30]. [FN29]. Baxter Pharm. Often the examiner may not consider a reference as material as does the practitioner who prepared the application and will not apply the reference against the claims. [FN28].2d 1331 (Fed. § 2004(13). Home Depot.P.4 END OF DOCUMENT © 2008 Thomson/West.E. "Related" applications are applications from which the present application claims priority. Inc. [FN32]. can give rise to a charge of inequitable conduct. 41 U. 324 F. By arguing and distinguishing a reference. Riverwood Int'l Corp. No Claim to Orig.R.P. Jones & Co. Prods.Q. to make reference to the file history of that related application or patent.. To avoid these types of charges. even though labeled prior art.E. 37 C. 67 U.PLIREF-PATAPP § 8.S. § 1. 1997).A. 104 F. M. The author has also noted that in litigation there can be charges of inequitable conduct for not disclosing the Patent Office's reason for allowance in a related application. rejection of similar claims in a co-pending application.1]. in a separate line. it is best to identify to the examiner those documents that are believed to be the most significant. It is recommended that an explicit reference be made to the file history of any related U. but also. v. As noted above in § 8. § 609. is not prior art by admission). Works. the practitioner can create a prosecution history estoppel situation. Cir. [FN29.2d 1364 (Fed.S.S. PLIREF-PATAPP s 8.2d 1191 (Fed.

P. § 1.R. [FN34].5 (Cite as: PLIREF-PATAPP s 8.F. October 2006 Chapter 8: Information Disclosure Statement *8-17 § 8.F. . The first exception is that issued U.98(a)(2). § 1. Works. patents and published U.PLIREF-PATAPP § 8. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.98(d). [FN35].5) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Markings can unduly attract an examiner's attention to portions of a document. in this situation only a representative document has to be provided.R.S. [FN37]. 37 C.P. Reference to the submission in the prior application is sufficient for the continuing application. END OF DOCUMENT © 2008 Thomson/West. [FN37] Whenever possible.S. [FN34] There are three exceptions to this rule. No Claim to Orig. An accused infringer can argue that the examiner's attention was distracted from the more significant portions of the references.R. that is. It can be particularly troublesome if the marked or highlighted portions are the less pertinent portions of the references.S. § 1. [FN36].F. [FN36] *8-18 A translation of the pertinent portions of foreign language patents or publications is to be transmitted if an existing translation is readily available to the applicant.5 Submission of Listed Documents The information disclosure statement must be accompanied by a copy of each patent or publication or other item or information listed. 37 C. 37 C. US Gov. Application s 8. M. § 609(2).F.5 How to Write Pat. § 1.R. and that is stated. § 120.98(c). The second applies when two or more patents or publications are substantially cumulative. copies not having any markings on them. provide clean copies of the references. 37 C.98(c). patent applications need not be submitted. provided the earlier application is identified in the information disclosure statement and is relied on for an earlier effective filing date under 35 U.E. or at least the portions that are considered to be pertinent. [FN35] The third exception applies when copies are in the file of the applicant's prior application.C.

Works. 2002.6 (Cite as: PLIREF-PATAPP s 8. or by obtaining the application confirmation number using the PAIR system. INTELL. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.PLIREF-PATAPP § 8. Application s 8.6 END OF DOCUMENT © 2008 Thomson/West. and the references are limited to U.6 Electronic Filing of an Information Disclosure Statement It is possible to file an information disclosure statement ("IDS") electronically. [FN39] An advantage of electronic filing is that it avoids the delays associated with the PTO mailroom. PLIREF-PATAPP s 8. patents and U. October 2006 Chapter 8: Information Disclosure Statement *8-18 § 8. . Oct.uspto.S. TODAY. US Gov.6 How to Write Pat. PROP. The software for filing an electronic IDS is obtainable at the PTO website. No Claim to Orig. This is effective for up to fifty references. [FN38]. If there are more than fifty references. it is necessary to file multiple IDSs. Electronic Filing of Information Disclosure Statements. it is necessary to file a paper IDS.gov>.S. at 10. Carl Oppedahl. The PTO website address is <www.6) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. For other references. [FN39]. [FN38] It can be filed when the filing receipt is received. published applications.

No Claim to Orig.7 END OF DOCUMENT © 2008 Thomson/West." PLIREF-PATAPP s 8.PLIREF-PATAPP § 8. Application s 8. . Under these circumstances.7 (Cite as: PLIREF-PATAPP s 8.7 How to Write Pat. October 2006 Chapter 8: Information Disclosure Statement *8-19 § 8. or inequitable conduct. invalidity.7) FOR EDUCATIONAL USE ONLY Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. It is recommended that the explanation of relevance of English language references not be included in information disclosure statements submitted under the current rules. This would be helpful to the examiner and would avoid an argument during litigation that the most pertinent references were "buried. Works. Anything that is said about the references can provide an opening during litigation for an opponent to argue noninfringement. The only exception to this recommendation occurs when a large number of references are provided. the examiner should be advised as to the most pertinent references. US Gov.7 Example An annotated sample information disclosure statement is provided as Exhibit 8-1.

April 2005 Chapter 8: Information Disclosure Statement *8EX-1 Exhibit 8-1: Annotated Sample Information Disclosure Statement (A) (B) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In re application of: ) Group Art Unit: 101 ) (prior application) JOHN SMITH ) ) Examiner: Jones Serial No. 20231 Sir: Attached hereto is Form PTO-1449 listing documents believed relevant to the subject application. D.: CIP of 555. it is respectfully requested that the undersigned be called so that any deficiencies can be remedied. 8-1 FOR EDUCATIONAL USE ONLY How to Write Pat. §§ 1. *8EX-2 (iv) the information is prior art or otherwise relevant to the patentability of the claimed invention. document 4. . US Gov. Patent Applications and U. 1.F. No Claim to Orig. any gap in the numbering of the information is an indication that information was deleted.98. (D) It is believed that this disclosure complies with the requirements of 37 C. no representation is made that: (i) a search has been performed or the extent of any search that may have been performed.R. If for some reason the examiner considers otherwise. (E) A copy of each document is enclosed. (ii) more relevant information does not exist.S. California INFORMATION DISCLOSURE STATEMENT Honorable Commissioner of Patents and Trademarks Washington.97. Application 8 Exh.553 ) (prior application) ) Filed: Herewith ) ) For: ELECTRICAL METER ) ) Pasadena. or (vi) if this is an e-IDS. (v) the order of presentation of the information is an indication of the importance of the information. 8-1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. § 1. Patents. It is respectfully requested that these documents be considered by the examiner and an initialed copy of each form be returned to the undersigned.R.C. which can be found in the patent applica- © 2008 Thomson/West. and 1.S.56(b). or is considered to be. material to patentability as defined in 37 C.56.F. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 16. (iii) the information is. Works. which is substantially identical to document 5. (C) By submitting this information disclosure statement. and the Manual of Patent Examining Procedures § 609. and document 6 and 7. 8-1 (Cite as: PLIREF-PATAPP 8 Exh.PLIREF-PATAPP 8 Exh. except for any published U.

*8EX-4 ANNOTATIONS (A) It is recommended that the attorney docket number be placed on all correspondence with the Patent Office for ease in internal filing in the practitioner's office and for ease in communicating with the Patent Office. (H) These documents are not necessarily analogous art. Respectfully submitted.P. .R. 1999 from PCT US87 00990. These documents are believed relevant because they were cited in a search report under Rule 45 of the European Patent Convention. filed May 4. (G) It is safest to make a disclaimer about the accuracy of any translation.F. No significance is meant to be attached to the markings. (H) A disclaimer helps to preserve the right to argue that a particular document cited was not analogous art. 1999. 8-1) Page 2 tion Serial No. Works. It cannot hurt to ask the examiner to do so. OTHER INFORMATION (M) Applicant wishes to advise the examiner that a prototype meter as described and claimed in the present application has been under test by officials of Los Angeles County since about July 30. Application 8 Exh. (J) Document 9 discusses an electrical meter for measuring resistance of plastics.E. (E) "Substantially identical" documents need not be submitted pursuant to 37 C. and thus as a convenience the applicant may wish to submit extra copies of the documents. 1999. 1999 and June 30." Also enclosed is a copy of the European Search report. However. 8-1 FOR EDUCATIONAL USE ONLY How to Write Pat. M.PLIREF-PATAPP 8 Exh.553. Sometimes the translation of a single word can greatly affect the relevance of a particular reference. This disclaimer is worded so that it can be included with every information disclosure statement. (K) The relevance of Document 10 is discussed in the background portion of the specification. 9.F. whether or not the documents actually have markings. This disclaimer provides the opportunity to provide a verified translation that differs from the translation provided with the information disclosure statement. 555.R. (F) Some of the documents may have markings thereon. lines 5-15 and Fig. § 1. For © 2008 Thomson/West.P. US Gov. (C) The first portion of this disclaimer paraphrases language from 37 C. § 1. which correspond to the present application. (G) An English language abstract of documents 9 and 10 is provided. No Claim to Orig. (D) Some examiners will follow up on the suggestion to identify any deficiencies in the information disclosure statement and call the applicant.98(d). (L) Documents 8. 2. and 10 were cited in the partial European Search Report for European Patent Application 97 903935.7. *8EX-5 (F) Sometimes it is impossible to obtain clean copies of all the documents. Applicant cannot vouch for the accuracy of the English language abstracts. Letters dated June 15. often an examiner does not have easy access to the documents in the parent application. (I) The relevance of each foreign-language document will now be discussed.97(b). The remainder of this disclaimer provides protection against an examiner's misconstruing the information disclosure statement and against an infringer's misusing it during litigation. No monies were received from Los Angeles County for the meter. from officials of Los Angeles County regarding the tests are attached as Exhibits A and B. (B) There is no serial number or filing date because the information disclosure statement is being submitted with the application. The examiner's attention is directed to page 3. and the evaluation of the prototype is still underway. and copies of documents submitted in a prior application need not be resubmitted. the meter having *8EX-3 temperature control circuitry. Both documents were identified as "technological background. § 609(2). 8-1 (Cite as: PLIREF-PATAPP 8 Exh. It is best to include this disclaimer.

It is safest to cite the document to the Patent Office. a searcher may cite a document in a search report that the practitioner does not believe should really have been cited.: COMMERCE PATENT AND TRADEMARK OFFICE INFORMATION DISCLOSURE CITATION (Use Several sheets if necessary) ------------------------------------------APPLICANT: JOHN SMITH ------------------------------------------FILING DATE: GROUP: 101 HEREWITH (PRIOR APPLICATION) ------------------------------------------------------------------------------- U.PLIREF-PATAPP 8 Exh.S. SHEET 1 OF 1 ------------------------------------------------------------------------------FORM PTO-1449 U. Works. US Gov.S. (I) Under current Patent Office rules.R. (J) A specific reference to page and line numbers of Document 8 is included to assist the examiner. DEPARTMENT ATTORNEY DOCKET SERIAL OF NO. Application 8 Exh.F. the relevance of English language documents need not be explained. PATENT DOCUMENTS ------------------------------------------------------------------------------Examiner DOCUMENT NUMBER DATE NAME CLASS SUBCLASS FILING DATE Initial IF [FNa1] APPROPRIATE ------------------------------------------------------------------------------1 3 7 0 3 3 4 4 11-72 Tow 418 61 ------------------------------------------------------------------------------2 3 7 0 3 3 4 4 07-74 Reitt. . No Claim to Orig.----er © 2008 Thomson/West. 8-1) Page 3 example. it is safest to let the Patent and Trademark Office know about it. and subsequently argue nonanalogous art if necessary. 8-1 (Cite as: PLIREF-PATAPP 8 Exh.: 5234:JGS NO. § 1. (K) The background portion of the specification is referred to when a document is discussed there. 8-1 FOR EDUCATIONAL USE ONLY How to Write Pat. (M) Although this possible "public use" is probably experimental. *8EX-6 (L) It is recommended that any search report available on a corresponding foreign application be submitted. 37 C.98.

3 1 0 6 11-79 UK 260 424 X ------------------------------------------------------------------------------- © 2008 Thomson/West. whether or not citation is in conformance with MPEP 609. 8-1 (Cite as: PLIREF-PATAPP 8 Exh. 8-1 FOR EDUCATIONAL USE ONLY How to Write Pat. FOREIGN PATENT DOCUMENTS ------------------------------------------------------------------------------DOCUMENT NUMBER DATE COUNTRY CLASS SUBCLASS TRANSLATION -----------YES NO ------------------------------------------------------------------------------8 1 1 3 7 7 2 9 06-65 UK 418 63 x ------------------------------------------------------------------------------9 5 0 . Include copy of this form with next communication to applicant. . EXAMINER: Initial if reference considered. Works. Application 8 Exh. US Gov. Draw line through citation if not in conformance and not considered. No Claim to Orig.PLIREF-PATAPP 8 Exh. 8-1) Page 4 ------------------------------------------------------------------------------3 3 7 0 3 3 4 4 10-78 Sarich 418 61 ------------------------------------------------------------------------------3 4 5 2 2 6 1 6 11-91 Brown 419 50 ------------------------------------------------------------------------------4 4 5 2 2 6 1 7 11-92 Jones 500 10 ------------------------------------------------------------------------------5 4 4 4 4 1 1 1 10-93 Patton 300 61 ------------------------------------------------------------------------------6 4 4 4 4 1 1 1 10-94 Patton 300 61 ------------------------------------------------------------------------------7 4 4 4 4 1 1 2 10-95 Patton 300 61 ------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------FNa1.

et al. . Title. No." IBM Tech. 8-1 END OF DOCUMENT © 2008 Thomson/West. 16. 8-1) Page 5 10 1 1 3 7 7 2 9 06-79 Fed. Disclosure Bulletin. Etc. Date. 8-1 (Cite as: PLIREF-PATAPP 8 Exh. No Claim to Orig. 3174-3175 11 ------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------- EXAMINER DATE CONSIDERED ------------------------- PLIREF-PATAPP 8 Exh. 10. 3/74-p.Rep.p. 16. Vol. Works. US Gov. Application 8 Exh.PLIREF-PATAPP 8 Exh. 8-1 FOR EDUCATIONAL USE ONLY How to Write Pat. "Simple Precision RC Oscillator. Pertinent Pages.) ------------------------------------------------------------------------------Kovach. No. of Germany 418 63 x ------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------- OTHER ART (Including Author.

However.1. [FN3] Since the appearance of the object is the basis of the design patent. Application s 9. for the design to be visible. patterns on fabric and clothing. The author acknowledges the assistance of Ashok Janah. Patentable designs include the designs of television sets and radio cabinets. or (3) some combination of the two.1. being subject to fewer written requirements.C. or portion therof. such as inflatable objects. § 171. design patents are governed by the same rules as utility patents. [FN7] For example. the Patent Office has *9-4 suggested that a design that is described as an "information icon for display screen of a programmed computer or the like" would be statutory subject matter for design patents on the basis that an icon "is an integral part of the operation of a programmed computer. [FN4] (2) aspects of an object's surface ornamentation. [FNa1].1 FOR EDUCATIONAL USE ONLY How to Write Pat. [FN1] Design patents are made available to encourage the ornamental and decorative arts. jewelry designs.P. Under this statute.1 Patentable Subject Matter *9-2 § 9. toys and games. *9-3 The design of an object of "manufacture" can be defined as the visually perceptible characteristics or features of the object. October 2006 Chapter 9: Design Patent Applications [FNa1] § 9. other display panel. and a myriad of other useful articles." [FN8] However. and wallpaper. such as a painting on a vase [FN5] or the ornamental design of the glass panel shown in Exhibit 9-3. original. However. namely air. a line drawing by itself cannot be patented because it is not a design for an article or object. if they are embodied in an article of manufacture such as a computer screen. the C. US Gov.1 (Cite as: PLIREF-PATAPP s 9. [FN9] The Patent Office has followed up the dicta with guidelines that allow patenting computer-generated icons and type fonts. the design claimed can encompass (1) the external shape of an object. [FN6] The design is inseparable from the object to which it is applied and cannot exist merely as a scheme of surface ornamentation. [FN2] It is the visual impact created by the appearance of an object upon the mind of the observer.1 Patentable Designs The right to patent a design arises from 35 U. they are much simpler and easier to draft.1. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19. and ornamental design for an article of manufacture may obtain a design patent. In general. In an unusual case.PLIREF-PATAPP § 9. a design patent cannot claim a scheme of decoration or ornamentation that exists independently of any article. [FN11] The court reasoned that many articles. That is why a design for a decorative glass panel and not the detached design by itself is claimed in Exhibit 9-3. the Patent Office has rejected applications seeking design patents for computer software-related icons on the basis that "a picture standing alone is not protectible by a design patent. No Claim to Orig. legs. in dicta.1.1) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. any person who invents any new. were dependent on something outside of the article itself.S. respectively." which is an article of manufacture. [FN10] On the other hand. the mere dependence of the design on something outside the article of manufacture itself does not preclude patentability.A. and a wall. Applying this standard. such as the shape of the photograph display shown in Exhibit 9-2. . held that the design formed by a stream of water flowing through a novel water fountain system was patentable even though maintenance of the design was dependent on the flow of water through the fountain.C. monitor. © 2008 Thomson/West. stockings. Works.

2.C.1. Ex parte Donaldson. 2. 92-0623 (Bd.1 (Cite as: PLIREF-PATAPP s 9. 92-0539 (Bd. 1967). Id. 1996). Ex parte Strijland. M.2d 997. & Interf. 373 F. PTO Notice on Design Patent Applications for Computer-Generated Icons.S. 2. [FN10]. 92-0546 (Bd. (BNA) (Mar.P. [FN2]. Hugo Word. Pat. Apr. [FN4]. 1992). US Gov.. Ex parte Donoghue. .P. 20. is an assignment for a design patent. [FN8]. 61 (C. § 171. 4. 92-0543 (Bd. 61 Fed. PTO Appeal No. Trademark & Copyright J.C. & Interf. 92-0623 (Bd. 1996). Pat. 1992).E. 35 U. No Claim to Orig. [FN11].PLIREF-PATAPP § 9. App. § 1502. Apr. PTO Appeal No. 24 AIPLA Q. App.Q. Id.E. & Interf. 2. The New Guidelines on Protection of ComputerGenerated Icons and Typeface. 21. Ex parte Donoghue.P. Apr.J. Exhibit 9-1. [FN3].1) Page 2 [FN1]. Pat.P. Apr. PTO Appeal No.380 (Mar.S. PTO Appeal No. § 1502. & Interf. & Interf. Pat. & Interf. App.P.1 END OF DOCUMENT © 2008 Thomson/West. Apr. discussed in § 9.S. 2. Ex parte Strijland.2d 1614 (Bd.Q. 3. PTO Appeal No. 415-25 (1996). Reg. PLIREF-PATAPP s 9.1.1 FOR EDUCATIONAL USE ONLY How to Write Pat. Pat. Application s 9.A. M. 24 U.2 below. App. In re Hruby. Pat. App. 11. Pat. [FN6]. Works. Guidelines for Examination of Design Patent Applications for Computer-Generated Icons.P. [FN9]. App. Id. Ex parte Tayama. [FN7]. A. 2.P. 153 U. 1992). 1992). 1992).1. 1992).1. [FN5].

1. [FN18] The Federal Circuit. [FN17] Functional and utilitarian aspects of a design do not make the design unpatentable per se.1.2) Page 1 Practising Law Institute How to Write a Patent Application Jeffrey G. the primacy of appearance in the design of shoes cannot be ignored when analyzing functionality.1 Patentable Subject Matter *9-5 § 9. ethnic group. it cannot be the subject of a design patent. when alternative designs would be functionally equivalent. a soap dish whose only nonfunctional design feature comprised a few horizontal lines was not patentable. such as its length and the position of holes. Sheldon Copyright (c) 2007 by the Practising Law Institute Current through Release 19.1. The utility of each of the various elements that comprise the design is not the relevant inquiry with respect to a design patent. In today's marketplace. [FN19] Another example of a product with functional features that qualified for design patent protection was an automobile license plate holder with decorative features. Works. [FN13] The design cannot be dictated solely by mechanical or functional considerations. [FN12] To be ornamental.1. If a particular design is essential to the use of the article. the design must include some primarily nonfunctional feature or characteristic.2 The Ornamentality Requirement Design patents replace the "usefulness" requirement of utility patents with an ornamentality requirement.2 FOR EDUCATIONAL USE ONLY How to Write Pat. A design is purely functional when "every part or substantially every part of the shape is dictated by the utility to be performed. Application s 9." [FN14] Designs that do not disclose any surface ornamentation or configuration that can be attributed to ornamental or decorative considerations will be rejected by the examiner. the design of the article is more likely to serve a primarily ornamental purpose. [FN21] A design can also be rejected on grounds that it discloses subject matter that could be offensive to any race. since the design was primarily functional. 2." provided the following guidelines as to the distinction between ornamentality and functionality: *9-6 1. a design that incorporates functional features can still be patentable if it has ornamental features that can exist independently of its functional features. sex. [FN16] Although a purely functional design is not patentable. do not make it unpatentable. US Gov. Such designs are considered frivolous and against public policy and. religion. No Claim to Orig. and 4. [FN23] © 2008 Thomson/West. the functional aspects of