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-
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
(2) a specification;
(3) a drawing
(if necessary); and
(4) an
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
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,
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.
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
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.
I claim:
ft. A shaped towpreg ribbon having a cross-section-

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