To 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:
- Tips & Tricks for Describing Your Invention in a Patent Application
- Describing an Invention in a Patent Application
- Thinking Outside the Box Leads to the Best Patent Applications
- Patent Drafting: Identifying the Patentable Feature
- The Key to Drafting an Excellent Patent — Alternatives
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.
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.
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.
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.
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:
- 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).
- Cross-reference to related applications.
- Statement regarding federally sponsored research or development.
- The names of the parties to a joint research agreement.
- 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.
- Statement regarding prior disclosures by the inventor or a joint inventor.
- Background of the invention.
- Summary of the invention.
- Brief description of the drawings.
- Detailed description of the invention (or drawings).
- A claim or claims.
- Abstract of the disclosure.
- “Sequence Listing,” if on paper.
Additional Information for Inventors
For more tutorial information please see Invention to Patent 101: Everything You Need to Know. For more information specifically on patent application drafting please see:
- The Most Common Design Patent Application Rejections (and How to Avoid Them) – Part II
- The Most Common Design Patent Application Rejections (and How to Avoid Them) – Part I
- Practical Tips for Drafting Patent Applications After American Axle & Manufacturing Inc. v. Neapco Holdings
- What Every Patent Attorney Should Teach Their Entrepreneur-Inventor Clients About the Patent Process
- What to Know About Drafting Patent Claims
- Improving Speed and Quality Using Automation for Patent Application Drafting
- Beyond the Slice and Dice: Turning Your Idea into an Invention
- If You Want to Protect Your Business Method, Reframe It as a Technical Invention
- Examining the Unforeseen Effects of the USPTO’s New Section 112 Guidelines
- Distinguishing Colloquial Obviousness and Legal Obviousness
- AI Patents Make a Comeback at USPTO, Finance Patents Are Still Struggling
- Anatomy of a Valuable Patent: Building on the Structural Uniqueness of an Invention
- Software Patent Drafting Lessons from the Key Lighthouse Cases
- Patent Drafting Basics: Instruction Manual Detail is What You Seek
- How to Write a Patent Application
- Admissions as Prior Art in a Patent: What they are and why you need to avoid them
- Patent Drafting: The most valuable patent focuses on structural uniqueness of an invention
- Patent Drafting: Proving You’re in Possession of the Invention
- Patent Drafting: Understanding the Enablement Requirement
- Patent Drafting 101: Say What You Mean in a Patent Application
- Patent Drafting 101: Going a Mile Wide and Deep with Variations in a Patent Application
- Learning from common patent application mistakes by inventors
- Defining Computer Related Inventions in a post-Alice World
- Patent Application Drafting: Using the Specification for more than the ordinary plain meaning
- Patent Strategy: Advanced Patent Claim Drafting for Inventors
- Patent Drafting 101: The Basics of Describing Your Invention in a Patent Application
- Patent Drafting for Beginners: The anatomy of a patent claim
- Patent Drafting for Beginners: A prelude to patent claim drafting
- The Inventors’ Dilemma: Drafting your own patent application when you lack funds
- Patent Drafting: Describing What is Unique Without Puffing
- 5 things inventors and startups need to know about patents
- Drafting Patent Applications: Writing Method Claims
- An Introduction to Patent Claims
- Patent Drafting: Define terms when drafting patent applications, be your own lexicographer
- Patent Language Difficulties: Open Mouth, Insert Foot
- Patent Drafting: The Use of Relative Terminology Can Be Dangerous
- Patent Drafting: Distinctly identifying the invention in exact terms
- Patent Drafting: Understanding the Specification of the Invention
- Tricks & Tips to Describe an Invention in a Patent Application
- Invention to Patent 101 – Everything You Need to Know to Get Started
- Patent Drafting 101: Beware Background Pitfalls When Drafting a Patent Application
- Describing an Invention in a Patent Application
- The Key to Drafting an Excellent Patent – Alternatives
- The Cost of Obtaining a Patent in the US
- Patent Drafting: Identifying the Patentable Feature
- Patent Drafting: Thinking outside the box leads to the best patent
- The Importance of Keeping an Expansive View of the Invention
- Patent Application Drafting: Ambiguity and Assumptions are the Enemy
- How to Describe an Invention in a Patent Application
- Patent Drawings 101: The Way to Better Patent Applications