Protecting Your Ideas

139

Preparing the Regular Utility Patent Application

When a patent practitioner is evaluating an invention for

patentability, all information that was publicly available at the time

of the invention is considered. If the invention passes the tests for

utility, novelty, and nonobviousness, the invention is given a favor-

able patentability opinion and the next step is to prepare a patent ap-

plication.

Preparing the Regular

Utility Patent Application

A patent application is not like a job application. It is not a

form, but it is a legal and a technical document. Every patent appli-

cation has specific sections that must be completed. However, the

written content that goes into these sections differs from one inven-

tion to the next or is invention specific. Regular utility patent appli-

cations contain:

(1) at least one

claim;

(2) a specification;

(3) a drawing

(if necessary); and

(4) an

abstract.

CLAIMS

Most patent practitioners begin writing a patent application by

drafting a set of claims directed toward the invention. Remember, the

claims are the part of the patent that sets forth the definition of the

technology that is exclusively owned by the patentee for the term of

the patent. The practitioner drafts each claim as a single sentence

taken with the introductory words, "I (We) claim," "What is claimed

140

Preparing the Patent Application

is," or other similar language. The length of the sentence is unspeci-

fied but each numbered claim must only be one sentence. Because of

this requirement, patent practitioners become very proficient at us-

ing semicolons and commas. Special legal language is used in draft-

ing the claims and this language has specific meaning. Examples of

some legal language used in claim drafting include phrases such as

comprising, consisting of,

and

consisting essentially of.

The term "comprising" is interpreted as "including the

following elements but not excluding others. "1~ Practi-

tioners prefer this terminology because it affords the

broadest protection.

"Consisting of" is interpreted more narrowly than com-

prising and means "having the recited elements and no

more. "11 This phrase affords very narrow protection and

is used only when necessary.

"Consisting essentially of" falls between "comprising"

and "consisting of" and is interpreted as excluding other

elements from having any essential significance to the

combination. 12 This terminology excludes additional un-

specified substances that would affect the basic and novel

characteristics of the product defined in the rest of the

claim. This phrase is used only when necessary because of

the more narrow interpretation.

There are three forms of claims:

(1) independent claims;

(2) dependent claims; and

(3) multiple dependent claims.

141

Preparing the Regular Util#y Patent Application

These forms are significant for fee purposes and provide scope

to the invention. An independent claim stands alone and includes all

its necessary limitations. A dependent claim refers to another claim

and includes all the limitations of the claim to which it is referring

(parent claim) plus the new limitation set forth in the dependent

claim. Typically, dependent claims may add additional elements, fur-

ther describe a limitation in the parent claim, or both. Multiple de-

pendent claims incorporate the limitations of more than one claim

where dependent claims incorporate the limitations of one claim.

Multiple dependent claims are rarely used in U.S. applications.

Having dependent claims provides

scope

to the invention. Typi-

cally, independent claims broadly define the invention. Dependent

claims narrow the definition of the invention. Thus, the invention is

defined as having a scope ranging from a broad, independent claim,

to a narrow, dependent claim. In addition, a narrow, independent

claim or picture claim is usually provided to cover the precise inven-

tion to be commercialized. Claim scope plays an important role in

patent infringement. A defense to patent infringement is to invalidate

the patent. To invalidate a patent, the infringer must invalidate each

and every claim. Although one may invalidate the broadest claim,

there is a chance that the dependent claims will not be invalidated. If

only broad claims are presented, the probability of the patent being

invalidated is high. However, if a range of claims is presented having

varying scope, the chance of the patent being invalidated is less like-

ly. The following example shows how a set of claims provides varying

scope for a single invention.

EXAMPLE

I claim:

ft. A shaped towpreg ribbon having a cross-section-