Patent Drafting: Understanding the Specification of the Invention

By Gene Quinn
January 2, 2016

lightbulb-sketch-iddea-pad-335To obtain a patent in the United States, a patent application must be filed with the United States Patent and Trademark Office. It is possible to start the patent application process overseas, filing what is called an international patent application under the Patent Cooperation Treaty, but even if you begin by filing an international patent application eventually you will need to enter into the United States process. To obtain a U.S. patent an examination of your application must take place in the United States and the application must satisfy all of the patentability requirements established by U.S. law.

The application that you will file, regardless of whether it is filed as a provisional patent application, a nonprovisional patent application or an international patent application, must fully and clearly describe your invention in the manner required by 35 U.S.C. 112(a). The requirement for an adequate disclosure of the invention in the specification ensures that the public receives something in return for the exclusionary rights that will be granted to the inventor in a patent.

This so-called adequate description requirement pertains to the level of description that must be included in the “specification,” which is most typically defined as that part of the patent application that is not a drawing figure and is not a claim. This is the most common definition for the term “specification” because if and when you need to amend an application there are three separate sections for an amendment, one for amendments to the specification, another for amendments to the claims, and a third for amendments to the drawings. When you get to the point of the process where you will need to amend the application (which goes beyond the scope of this article) you will amend anything that is not a claim and not a drawing under amendments to the specification.

What follows are several teaching points relating to specification does and don’ts. For more information about how to draft the text of a patent application please see:

 

  1. Describe how to make and use the invention

The specification is where the rubber meets the road, so to speak. This is the part of the application where the inventor must the manner and process of making and using the invention. The goal, however, is not to describe the invention so that anyone could make and use the invention, in an increasingly complicated and specialized world that would be both practically and realistically impossible for many, if not most inventions. Instead, the specification must be in such full, clear, concise, and exact terms as to enable a person skilled in the relevant technology field to which the invention pertains to make and use the invention.

 

  1. Do not include superfluous information

The written description must not include information that is unrelated to applicant’s invention. If such information is included in the written description, the examiner will ordinarily object to the specification and require applicant to take appropriate action to remove the information that does not specifically relate to describing the invention.

Similarly, the specification does not require a date. Resist the temptation to turn the specification into a diary about the invention. There are primarily three sections that make up the specification: (1) a discussion of the prior art; (2) a summary of your invention; and (3) a detailed description of the drawings included. The discussion of the prior art should ordinarily be brief. The summary of the invention is not generally a direct, somewhat brief overview of the invention. The detailed description discusses what is shown in the drawings and is used also as a vehicle to describe the invention in greater detail. None of these sections are or should be treated as a history of how you came up with your invention.

Before embarking on writing any of the three above mentioned sections it is imperative that you also read Beware Background Pitfalls When Drafting a Patent Application and Working with Patent Drawings to Create a Complete Disclosure.

 

  1. What you file must be reproducible

When filing a patent application care must also be taken to make every effort to ensure that what is filed is clear and reproducible. If the papers are not of the required quality, substitute papers of suitable quality will be required before the application can move forward. Therefore, filings must be legibly written either by a typewriter or mechanical printer in permanent dark ink or its equivalent. Since application papers are now maintained electronically, the type of paper used is unlikely to be an issue so long as the Office is able to scan and reproduce the papers that were filed. Of course, if you file electronically none of this will be an issue given that no tangible papers will be produced for filing. Having said that, the recent power outage that crippled the electronic filing system at the USPTO reminds everyone in the industry of the importance of always having a suitable backup filing option that relies on paper, mail and/or facsimile filings, particularly when a filing date is absolutely essential.

 

  1. No hyperlinks in the text

Today, in both formal and informal communications it is commonplace to include hyperlinks. That is not appropriate in a patent application. In fact, patent examiners are instructed by the USPTO to review patent applications to make certain that hyperlinks and other forms of browser-executable code, especially commercial site URLs, are not included in a patent application. See 37 CFR 1.57(e). If hyperlinks and/or other forms of browser-executable code are embedded in the text of the patent application, examiners will object to the specification and require the hyperlink or browser code to be removed. This is true even if the inclusion of the hyperlink was for the purpose of attempting to incorporate by reference what appears at that URL into the patent application. The attempt to incorporate subject matter into the patent application by reference to a hyperlink and/or other forms of browser-executable code is considered to be an improper incorporation by reference.

 

  1. Order of a patent application

The Patent Office does not require a particular order for the specification or for a patent application, but there is a preferred order to be sure. The order preferred for a patent application by the Patent Office is:

  1. Title of the invention, which may be accompanied by an introductory portion stating the name, citizenship, and residence of the applicant (unless included in the application data sheet).
  2. Cross-reference to related applications.
  3. Statement regarding federally sponsored research or development.
  4. The names of the parties to a joint research agreement.
  5. Reference to a “Sequence Listing,” a table, or a computer program listing appendix submitted on a compact disc and an incorporation-by-reference of the material on the compact disc. The total number of compact discs including duplicates and the files on each compact disc shall be specified.
  6. Statement regarding prior disclosures by the inventor or a joint inventor.
  7. Background of the invention.
  8. Summary of the invention.
  9. Brief description of the drawings.
  10. Detailed description of the invention (or drawings).
  11. A claim or claims.
  12. Abstract of the disclosure.
  13. “Sequence Listing,” if on paper.
  14. Drawings

 

If you are considering the possibility of drafting your own patent application I recommend you consider the Invent + Patent System, which has successfully helped tens of thousands of inventors file provisional patent applications for more than 10 years. For more information on drafting patent applications please see:

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 4 Comments comments.

  1. Night Writer January 2, 2016 4:27 pm

    >>2. Do not include superfluous information

    The problem is that the fed. Cir. keeps making it so they forget to add in what is known in the art. This means to be safe you should include all the course materials through a ph.d. for every patent application. (I am not joking or exaggerating.)

  2. Gene Quinn January 2, 2016 8:35 pm

    Night Writer-

    What you suggest is not a productive way to draft patent applications. To suggest that you need to incorporate by reference, or include every text ever written is absurd. You are indeed exaggerating and on a post clearly intended for newbie inventors, which makes your comment not at all helpful or appropriate.

    -Gene

  3. Night Writer January 4, 2016 8:19 am

    Gene-

    Yes I am exaggerating. My point was more for practitioners than newbie inventors. The principles you laid out are good ones and the ones that should apply. The newbie inventor, though, should realize that case law at the Fed. Cir. has been progressively moving more and more towards not taking into consideration what is known in the art. It means that a patent attorney with experience often adds many things that may not make a lot of sense to a newbie.

    The reality is that patent drafting has become perilous because the Fed. Cir. keeps tightening the requirements. Williamson is a good example. There is no doubt in my mind that any newbie needs to understand this. I have to discuss 101 and 112 with clients because of the uncertain case law. This often adds time and cost to the patent application process.

    Frankly, the patent applications I write now because of cases like Williamson and Alice are very different than they were three years ago. And, the claims are very different as well. In fact, for one large client the claims are a constant moving target being adapted almost monthly for all the weird cases coming out of the Federal Circuit.

    I think the big picture is that what you wrote was the law and should be the law, but unfortunately patent law is now dominated by judicial activists that are almost monthly coming out with painful new case law. The patent applications we write have to try to cope with this, and one of the ways of coping with this is putting in extra known material (and with Alice contextualizing the invention to try to head off abstract.)

    As a final note, I am not entirely certain that incorporating by reference the entire undergraduate and graduate curriculum in the art would be a bad idea. I know it sounds ridiculous, but some of the recent cases could not have been decided the way they were had the Fed. Cir. included what was known in the art at the time of the patent application.

    Anyway, Gene, great post. I deal with this nonsense everyday and have to deal with inventors all the time explaining why I added a load of nonsense to their application to head off the judicial activists.

  4. Night Writer January 4, 2016 8:29 am

    Just as another simple example, explain to an inventor that “module” has been held to convey no structure. Etc. I could list 10 cases that are just as ridiculous.

    Do a search of elance and you will see the word module used in the description of the specification of what is wanted 1000’s and 1000’s of times. So, how in the world does it make sense that a word that is supposedly a nonce word is used repeatedly to specify computer software?

    So, before you could work with an inventor and probably not have to talk to them about these issues. Now, when I talk to an inventor I inform them of the risks of invalidation from Alice, Williamson, etc. The more time I put in the more I can put things in that will make it harder for the Fed. Cir. to invalidate the claims, but that work’s only benefit is to head off the judicial activists.