Anatomy of a Patent

A patent provides an inventor a legal right to exclude others from practicing an invention -- to exclude others from making, using, selling, offering for sale, or importing the claimed invention. In exchange, the invention can be made and used by anyone once the patent expires.

It is also important to remember what a patent does *not* convey. An issued patent does not provide a "monopoly" because it does not provide the inventor "exclusive control of a commodity or service in a particular market, or a control that makes possible the manipulation of prices." In other words, it is possible to obtain an issued patent even though a market does not exist for the claimed invention. And where there is no market, there can never be a monopoly.

The issued patent, of course, requires the patent to adequately teach "one of skill in the art" how to make and use the invention. At a high level, there are several things to look for to determine whether such teaching is adequate. The Specification (what patent attorneys call "the spec") is required to meet additional technical criteria:

1. Start with the Claims. Do the claims provide a "skeleton" for the entire patent? Are the claims recited verbatim in Summary and Detailed Description?

1. Do claims include "things?" If so, are they eligible under §101?
2. Do claims include "methods/processes?" If so, are they eligible under §101?
3. Are all claims novel under §102?
4. Are all claims nonobvious under §103?
5. Are all claims "enabled" and "fully, clearly, concisely and exactly" described?
6. Are all claims supported by text to show that the inventor was "in possession" of the invention at the time of filing?

2. Find the language of the claims revised in prose in the Summary. Do broadest claims read to "cover" all dependencies no matter what order?

3. Find the revised prose of the Summary in the Detailed Descripton. Are significant details added ("meat on the bones"). Does the Detailed Description provide enough detail to enable one of skill to make and use the claimed invention?

4. Is there evidence of "reduction to practice" provided? Do examples provide details of multiple "species"? Do examples include educated, but unenabled guesses?

5. Are technical terms defined and used consistently throughout?

6. Are there enough figures to provide "one of skill in the art" a basis to understand the invenion? Is it clear that the inventor(s) had "possession" of the invention?

Specification (the Detailed Description and Claims)

The specification should have the following sections, in order:

1. Title of the Invention.
2. Cross Reference to related applications (if any). (Related applications may be listed on an application data sheet, either instead of or together with being listed in the specification.)
3. Statement of federally sponsored research/development (if any).
4. 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 disc including duplicates and the files on each compact disc shall be specified.
5. Background of the Invention.
6. Brief Summary of the Invention.
7. Brief description of the several views of the drawing (if any).
8. Detailed Description of the Invention.
9. A claim or claims.
10. Abstract of the disclosure.
11. Sequence listing (if any).

The specification must include a written description of the invention and of the manner and process of making and using it, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the technological area to which the invention pertains, or with which it is most nearly connected, to make and use the same.

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 for carrying out the invention must be set forth.

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 title of the invention, which should be as short and specific as possible (no more than 500 characters), should appear as a heading on the first page of the specification, if it does not otherwise appear at the beginning of the application. A brief abstract of the technical disclosure in the specification including that which is new in the art to which the invention pertains, must be set forth on a separate page preferably following the claims. The abstract should be in the form of a single paragraph of 150 words or less, under the heading “Abstract of the Disclosure.”

A brief summary of the invention indicating its nature and substance, which may include a statement of the object of the invention should precede the detailed description. The summary should be commensurate with the invention as claimed and any object recited should be that of the invention as claimed.

When there are drawings, there shall be a brief description of the several views of the drawings, and the detailed description of the invention shall refer to the different views by specifying the numbers of the figures, and to the different parts by use of reference numerals.

The specification must conclude with a claim or claims particularly pointing out and distinctly claiming the subject matter that the applicant regards as the invention. The portion of the application in which the applicant sets forth the claim or claims is an important part of the application, as it is the claims that define the scope of the protection afforded by the patent and which questions of infringement are judged by the courts.

More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied. One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers back to more than one other claim is considered a “multiple dependent claim.”

Multiple dependent claims shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. Claims in dependent form shall be construed to include all of the limitations of the claim incorporated by reference into the dependent claim. A multiple dependent claim shall be construed to incorporate all the limitations of each of the particular claims in relation to which it is being considered.

The claim or claims must conform to the invention as set forth in the remainder of the specification and the 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 may be ascertainable by reference to the description.