Parts Of A Us Patent Application

Below are the Parts of a US Patent Application which can be used to compose a US Patent Application, or an Invention Disclosure.

(1)"TITLE OF INVENTION"

This part of a patent application is a short phrase or sentence describing what the inventor(s) perceive to be the essence of the disclosed and claimed invention.

(2) "INVENTORS"

This part of a patent application lists the Name, Address, Country of Citizenship of each inventor who contributed to the conception and/or reduction to practice of the Invention in a meaningful way.

(3)"BACKGROUND OF INVENTION"

This part of a patent application is a heading or caption for the parts "Field of Invention" and "Brief Description of the State of Knowledge in The Art" to be described and set forth below in the above-mentioned order.

(3A) "FIELD OF INVENTION"

This part of a patent application can be a single sentence pointing to the technical field or to the area of invention. For example, this part of a patent application is typically of the form:
"The present invention relates to Internet-based methods of and systems for enabling any number of people to collaborate with each other in real-time over and about the planet Earth."

(3B) "BRIEF DESCRIPTION OF THE STATE OF KNOWLEDGE IN THE ART"

This part of a patent application is a relatively short description of the problem(s) being addressed by the inventors and how others have attempted to solve or otherwise address the same. The inventors should seek to describe here the shortcomings and drawbacks of known prior art in approaching the same problem being addressed or the objective to be attained by the present invention.
Ideally, this part of a patent application should set forth a concise history of facts leading up to the conception and (actual or constructive) reduction to the practice of the present invention. Preferably, this part of a patent application should read like a story (e.g. "once upon a time, there was a man named David who wondered how he could ever do this or that; however, no one in his town, country or world knew of a way or means of doing so.")

At the conclusion of the Background of Invention, the reader of the patent application should be convinced that even when understanding all that was known in the world up until the time of conception of the present invention, it nevertheless seems very unclear, or just impossible, to achieve the desired objectives of the inventor(s).
Indeed, the Background of Invention should make it quite clear that something is inherently lacking from our technical and/or scientific world, and that unless someone brings new and useful knowledge into our world, the objects, desires and dreams of the inventor(s) will never become realized.
It is of utmost importance that the Background of Invention or Field of Invention never hints, discloses or otherwise teaches any aspect of the present invention (to be disclosed), as this will only work against the inventor (within the Patent Office) by weakening the "unobvious-aspect" of the invention as disclosed in the Patent Specification and as put forth in the Claims to Invention.
To stress this important point, it is a good idea to let the last paragraph of the Background of Invention recite the following paragraph:
"Thus, it is clear that there is a great need in the art for an improved method and system for [solving the general problem etc.] while avoiding the shortcomings and drawbacks of the prior art apparatus and methodologies heretofore known."

(4) "OBJECTS AND SUMMARY OF THE INVENTION"

This part of a patent application answers the problem(s) to be solved by the practice of the present invention. Preferably, this part of the patent application lists the desired objectives of the inventor(s), i.e., what new things (e.g. systems, devices, methods and processes) they hope the invention will bring into the world, and in what ways humanity will benefit from the invention. This list of objectives cannot be too long and should be exhaustive. In theory, each object of invention can be the foundation for a different Claim to Invention, staked out at the end of the patent application. Preferably, the form of the objects of invention should appear as follows:

"Accordingly, it is a primary object of the present invention to provide an improved system and method for..............."; or alternatively,

"Another object of the present invention is to provide such improved apparatus in the form of an Internet-based system, wherein ....................."

In general, it can be dangerous to recite the Summary of Invention too narrowly, particularly if the author does not have a clear understanding of the state of the art when writing and filing the patent application, as is often the case. Thus, to provide a concise Summary of Invention, following the Objects of Invention, it is important to write a very broad statement of the method and apparatus of the present invention. This will prevent others from interpreting the claimed invention much more narrowly in scope than it should be, in view of the state of the art at the time of the invention.

(5) BRIEF DESCRIPTION OF THE DRAWINGS

This part of a patent application should consist of a preamble paragraph such as:

"In order to more fully understand the Objects Of Invention, the following Detailed Description of the Illustrative Embodiments should be read in conjunction with the appended figure drawings, wherein:"

Thereafter, each figure shown in the drawings should have a concise one sentence description of the following form:

"Fig. 1 is a schematic representation of an Internet-based system in accordance with the present invention, showing its central database server, a plurality of client subsystems (machines) having access thereto by way of the infrastructure of the Internet;
Fig. 2 is a ..................."

In general, the drawings are a very important part of any patent application and great care should be taken to set them out in a logical order, thus providing a clear understanding of how to practice the best mode embodiments of the present invention, known at the time of filing the patent application. Oddly enough, of all the documents in a patent application, the figure drawings are perhaps the most widely read documents in the case, and thus the extra effort put into the figure drawings at the time of filing will usually pay off in the long run.

Notably, the drawings need not be computer drawn, and in some cases, it is better to use hand-drawn figures as the structure of figures often cannot be accurately embraced by the graphical structures available in the particular drawing program (e.g. Microsoft Powerpoint software).

(6) "DETAILED DESCRIPTION OF ILLUSTRATIVE EMBODIMENTS OF THE PRESENT INVENTION"

This part of a patent application is where the inventors roll up their sleeves, refer to the logically arranged figure drawings, and teach in writing, the best way to practice the invention indicated in the Objects of Invention. This part of the patent application can be quite long depending on the involved subject matter, the state of knowledge in the art, and the business objective to be achieved by the company for whom the inventors work. The US Patent Laws require that the inventors disclose the "Best Mode" embodiment of the invention, commercially valuable structures, methods, formulas, compositions, and the like, or else risk an invalid patent issuing from the deficiently written patent application.
While there are many ways and styles of teaching how to practice the invention, it will be helpful to begin by setting forth a preamble paragraph, such as:
"Referring now to the figures in the accompanying Drawings, the illustrative embodiments of the present invention will now be described in great technical detail, wherein like parts are indicated by like reference numbers.
According to one of the broader aspects of the present invention, a novel __ is shown in Figs. __ ......"

This introductory paragraph will help to get things going. Again, the inventors can never write too much in this part of the patent application. Anyone who tells you otherwise is likely uninformed or simply lazy. It is gruelling to write a Detailed Description, which has correct reference to the figures and which truly teaches those with "ordinary skill in the art" how to practice the invention. Diligence is required, for the inventors must recognize that the patent application they are writing is actually their speech to the public at large. The patent attorney assigned to the case will assist the inventors and give direction upon any obstacles encountered along the way. Eventually, they will be able to dictate the Detailed Description. Like learning to toss a boomerang, it may take a hundred tries, but eventually they will perfect the art.

(7) "CLAIMS TO INVENTION"

The Claims to Invention are the last, but a very important, part of a patent application, as these sentences, each properly numbered, stake out what the inventors believe to be their "patentable" contribution to the field of invention. In essence, an invention is defined by its claim, and each Claim to Invention provides a legal definition of an invention. Each Claim to Invention must be expressed in words and must clearly and particularly point out the particular improvement or novelty in the claimed subject matter. The Claims to Invention define the scope of exclusive property rights that the US Government will grant to the inventors in return for teaching the public how to practice the claimed invention. The more the Detailed Description teaches, the broader the scope of the Claims to Invention should be.
Under US Patent Law, each Claim to Invention in a US Patent Application must recite some string of language (e.g. one or more words, or phrases, or subcombinations thereof) which clearly identifies a point of novelty that cannot be found in any prior art reference, or combination of references, expressed in any human language, found anywhere in the world.
At the time of filing a US Patent Application, the inventors need only stake out a single Claim to Invention. Claims to Invention can be added as desired at a later time without consequence.
As the inventors learn about newly discovered prior art after filing their patent application, they will be forced by the appointed Patent Examiner to amend the language of the claims in order to reflect the actual contribution which they bring to the field of invention. When agreement is reached as to the proper scope of the claims, the Examiner will agree to allow the patent application in the form of a grant of a US Letters Patent.
In short, to author a good set of patent claims requires sound knowledge about the state of the art at the time the invention was made if the invention was "actually" reduced to practice, or at the time of application for a patent, if the invention was "constructively" reduced to practice, which forms of reduction are legally equivalent. Unfortunately, the inventors and their attorneys always work with a less than perfect model of the state of knowledge in the art. Oftentimes, it takes years to accurately piece together (i.e. reconstruct) the state of the art and ascertain the true scope of invention to which a particular inventor or group of inventors are entitled under US and International Patent Laws. And so is the way of the world.