By: Mark Malek
When we draft patent applications, we normally start with the claims. The claims are the part of the patent application that we write to lay out the scope of protection of the invention. The claims can be equated to a property description in a real estate transaction, i.e., the property description tells you how large the property is in a real estate transaction. Similarly, the claims in a patent application describe how broad, or how narrow, you are claiming the invention. A broader claim covers not just the actual invention, but also a bit more. A broader claim tries to prevent someone from simply designing around your patent. A narrower claim may, however, be the only thing that may be available based on the prior art. These claims have little “wiggle room” in their interpretation, and really cover a very specific embodiment of your invention.
After the claims are written, we focus on the specification. The specification really tells the story of the invention. The specification includes the “background of the invention,” a “summary of the invention,” a “brief description of the drawings,” and a “detailed description of the drawings.” Information on the background of the invention can be found in Chapter 608.01(c) of the Manual of Patent Examining Procedures. The background of the invention can take many forms. Generally, one is trying to explain the state of the prior art and perhaps point out the problems that the invention solves. Many patent attorneys will list some of the prior art that has attempted to solve the problems, but that have not quite accomplished what the invention has to solve those problems.
After the background is completed, we draft a summary of the invention. The summary of the invention is just that – it is a summary of what the invention is, and how it solves the problems identified in the prior art. Thereafter, we briefly describe the drawings, which are also an integral part of the patent application. The drawings generally provide several illustrations of the invention so that the reader of the patent can follow along. There are many requirements to the drawings, and these can generally be found in the Manual of Patent Examining Procedures. Patent applications require that at least one drawing be provided (in almost every case). One little rule of thumb to follow is that if it is recited in the claims, it should certainly be shown in the drawings.
Next is likely one of the most important parts of the specification – the detailed description of the invention. One very big rule in patent drafting is that the “claims must be fully supported by the specification.” In other words, everything that is recited in the claims must be fully described in the specification. We generally do much of the description of the invention (which is laid out in the claims) in the detailed description of the invention. One of the reasons why the specification is so very important is that the claims are interpreted in light of the specification. Suppose you recite a structure in the claims, and in that structure, you indicate that it includes a base and a pair of sidewalls that extend upwardly from the base. In the specification, suppose you note that the sidewalls are welded to the base, and you do not disclose another way that the sidewalls can extend upwardly from the base. It is likely that the claim may be interpreted to include a weld between the base and the sidewalls.
That brings up another very important thing to remember when drafting the detailed description of the invention. You always need to build in fallback positions and enough description so that your claims can be interpreted to include several different ways of building your structure. In the above example, it would have been good to also note the following: not only can the sidewalls be welded to the base, they may also be connected using bolts, adhesive, other types of fasteners, or any other way that the sidewalls can be fastened to the base. Adding this little sentence opens up a world of interpretation to your claim, and also limits the ways in which someone can try to design around your patent application.
The patent application concludes with the abstract. Although it is shown on the front page of the patent after it issues, it is usually the very last page of a patent application. The abstract is just a short description of the invention that is normally less than 150 words. The reader should be able to read the abstract and figure out what the invention is about.
When the application is finished, the invention is that which is recited in the claims. The specification must set forth the best mode of the invention. Further, the specification has to describe the invention with such specificity that someone “skilled in the art” can carry out the invention by simply reading the description.