3.4. The Specification
A patent application comprises a written specification and drawings that describe and illustrate the invention. 35 U.S.C 112 requires that the specification contains a written description of the invention, and of the manner and process of using it, in such in full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and sets forth the best mode contemplated by the inventor of carrying out his invention. It further requires that the specification recite one or more claims that particularly point out and distinctly claim the subject matter that the applicant regards as the invention. The specification for the invention should be written in such a way that any person of ordinary skill in the art should be able to infer how to make and use the invention.
37 CFR 1.71 reads,
(a) The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.
(b) The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his invention must be set forth.
(c) In the case of an improvement, the specification must particularly point out the part or parts of the process, machine, manufacture, or composition of matter to which the improvement relates, and the description should be confined to the specific improvement and to such parts as necessarily cooperate with it or as may be necessary to a complete understanding or description of it.
The following steps may be followed for drafting a patent application:
1. Draft the specification as explained in section 3.4 of this chapter.
2. Draft independent and dependent claims for the invention as explained in section 3.5 of this chapter.
3. Prepare drawings to support the claims of the invention for the patent application as explained in section 3.6 of this chapter.
3.4.1. Sections of the Specification
The various sections of the specification are explained below:
The specification of a patent application should teach a person of ordinary skill in the art pertaining to the invention, how to make and use the invention. The specification typically comprises a title, a cross reference to related applications, a background, a summary, a brief description of the drawings, a detailed description of the invention, claims, and an abstract as explained below.
1. Title Of The Invention
The title provided in the specification should capture the essence of the invention without being too long. It should be brief, precise, and definite. Avoid using fanciful and ambiguous terms in the title. Moreover, do not use terms, for example, “Patent”, the inventor’s name, the company’s name, “etc.”, in the title.
2. Cross Reference To Related Applications
If you are claiming the benefit of an earlier filed patent application or you wish to reference a patent application in the present patent application, you should include a “Cross Reference To Related Applications” section in the specification. In this section, you should enter the patent application number, the title, the date of filing the referenced patent application in the patent office, and the name of the patent office in which the referenced application was filed. You may also include a statement that the specification of the referenced application is incorporated by reference in its entirety. Note that incorporating a referenced application in its entirety means that the subject matter of the referenced application is automatically and entirely included in the patent application.
The background section of the specification sets the stage for your invention to follow. In the background section, you may discuss the field of your invention and the existing needs that are unmet by the prior arts. The background section can recite a short general statement that brings out the general scope of the invention. The problems existing in the prior arts and the need for your invention may then be stated. It is important to note that you should not disclose specific features of your invention in the background section and only focus on the deficiencies and problems of the prior art which can be used to establish the need for your invention.
Under the applicable section of the Code of Federal Regulations, a Background of the Invention is not required and therefore it is not necessary to provide this section in a patent application. Also, mentioning the prior arts in the patent application is not recommended as it may used to invalidate an issued patent on the ground that the prior art cited in the application was incomplete or misleading and the U.S. PTO examiner may have based his decision, in part, to allow the application on the prior art cited by the applicant in the Background Of The Invention. Therefore, it may be preferable to avoid writing a background section in the specification.
4. Summary Of The Invention
The summary section of the specification provides an introduction to the invention. In the summary section, you should recite the key inventive concepts of your invention. You should discuss every element of your invention in the summary section. You may also bring out advantages of the invention in the summary section.
'Patent Your Idea' is a collaboration of knowledge, experience and strategy on current patent law, drafting of patent applications, filing procedures, prior art searches, prosecution of patent applications, assignments and licensing of patents. The book contains sample patent drafts, responses to patent office actions, assignment/ license formats and strategic advice to an inventor on how to get a patent granted. In this book, the authors share their expert knowledge in meticulously protecting and patenting an idea.
About the Author
The authors Ash Tankha, Lynn Bout, Shirley Fernandes and Swaroop K.S have significant experience in patent law. Ash is a patent attorney registered to practice at the U.S. PTO. Lynn is an IP attorney with experience in patent filing. Shirley and Swaroop are patent engineers with hands on experience in patent drafting and prosecution of patent applications. They have several patent grants to their credit.