With all of the changes to the patent system arising from the decisions of the U.S. Supreme Court and the Court of Appeals for the Federal Circuit, it’s helpful to go back to basics and to contemplate the fundamentals of patent law in view of these decisions.
Below, we answer some frequently asked questions about patents. This summary is provided for informational purposes only, and does not constitute legal advice. Any specific question about patent law should be directed to an attorney in our Patent Practice Group.
What goes into a patent application?
The patent laws require a disclosure of the invention. In most cases, drawings are required. In all utility cases (but not design cases), a written specification is required. This specification has two main parts: (i) the disclosure of the invention that will teach the public about the invention (as part of the exchange referred to above between the inventor, who has made an advance in the field, and the government, which grants a monopoly in the invention); and (ii) the claims. A United States patent application must also include an oath and filing fee. A provisional application does not require all these parts. The different components of a patent application are discussed below.
The Disclosure
The requirements for the written disclosure to be made in a patent application are set forth in the first paragraph of 35 U.S.C. sec. 112, which reads as follows:
“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out the invention.”
The statute requires that the “best mode” be disclosed. Congress does not want inventors withholding important information about the invention so that after the patent expires, others cannot practice the invention with the same benefits or efficiency as the inventor. For this reason, patents are sometimes incompatible with trade secrets. If the trade secret is important to know for “the best mode . . . of carrying out [the] invention,” then the failure to disclose the secret in the application may invalidate any patent that may issue from that application. While the best mode requirement is important in prosecution, the AIA has eliminated it as a way to challenge the validity of a patent in litigation.
Although the claims are clearly the most critical part of the patent, we at Sunstein draft the disclosure with the view that a well-drafted disclosure will make it easier to obtain broad coverage during the prosecution of the patent application and will strengthen the patent owner’s case during patent litigation.
The Claims
The second paragraph of 35 U.S.C. sec. 112 reads: “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”
The claims, which are usually written in a very arcane style, are the most critical part of the patent. The claims are meant to define what is covered by the patent. If an accused product or process falls within the scope of a valid claim, it infringes the patent. A product or process may infringe a claim literally or under the Doctrine of Equivalents, which allows in some cases a finding of infringement if the accused product or process does not include each of the elements of the claim but does include at least an equivalent of any element that is literally absent. Yet the Doctrine of Equivalents cannot be so broadly applied to cover anything that would have been obvious in light of the prior art.
For any invention that is valuable, the drafting of the claims should be done by a patent attorney. It has been the experience of Sunstein, that many inventors do not appreciate the scope of their invention. Without the assistance of an experienced patent attorney, claims often are drafted too narrowly. (More)
The patent laws require a disclosure of the invention. In most cases, drawings are required. In all utility cases (but not design cases), a written specification is required. This specification has two main parts: (i) the disclosure of the invention that will teach the public about the invention (as part of the exchange referred to above between the inventor, who has made an advance in the field, and the government, which grants a monopoly in the invention); and (ii) the claims. A United States patent application must also include an oath and filing fee. A provisional application does not require all these parts. The different components of a patent application are discussed below.
The Disclosure
The requirements for the written disclosure to be made in a patent application are set forth in the first paragraph of 35 U.S.C. sec. 112, which reads as follows:
“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out the invention.”
The statute requires that the “best mode” be disclosed. Congress does not want inventors withholding important information about the invention so that after the patent expires, others cannot practice the invention with the same benefits or efficiency as the inventor. For this reason, patents are sometimes incompatible with trade secrets. If the trade secret is important to know for “the best mode . . . of carrying out [the] invention,” then the failure to disclose the secret in the application may invalidate any patent that may issue from that application. While the best mode requirement is important in prosecution, the AIA has eliminated it as a way to challenge the validity of a patent in litigation.
Although the claims are clearly the most critical part of the patent, we at Sunstein draft the disclosure with the view that a well-drafted disclosure will make it easier to obtain broad coverage during the prosecution of the patent application and will strengthen the patent owner’s case during patent litigation.
The Claims
The second paragraph of 35 U.S.C. sec. 112 reads: “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”
The claims, which are usually written in a very arcane style, are the most critical part of the patent. The claims are meant to define what is covered by the patent. If an accused product or process falls within the scope of a valid claim, it infringes the patent. A product or process may infringe a claim literally or under the Doctrine of Equivalents, which allows in some cases a finding of infringement if the accused product or process does not include each of the elements of the claim but does include at least an equivalent of any element that is literally absent. Yet the Doctrine of Equivalents cannot be so broadly applied to cover anything that would have been obvious in light of the prior art.
For any invention that is valuable, the drafting of the claims should be done by a patent attorney. It has been the experience of Sunstein, that many inventors do not appreciate the scope of their invention. Without the assistance of an experienced patent attorney, claims often are drafted too narrowly. (More)
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