Craig F. Taylor © 2007

 

RANDOM THOUGHTS ON WRITING A PATENT APPLICATION, PART 1

The random thoughts below are written in order of their occurrence in the patent applications as currently written in U.S. practice. I do not encourage inventors to file their own patent applications, but writing up a thorough invention disclosure in the form of a patent application to give to a patent attorney may save money as opposed to the patent attorney playing 200 questions to drag it out of you.

 

RELATED INVENTIONS

If you are claiming priority to any previously filed inventions, or you think that there is another very similar patent application having a common inventor or common assignee , then you might want to consider putting it here, just so it does not look like you are hiding it from the patent examiner. Do not be cute in claiming priority, just use accepted language, not obtuse creations.  E.g. Do not say “claims priority to” unless absolutely necessary for some reason. Make sure you claim priority in the Application Data Sheet as well.

 

E.g. The present application is a non-provisional of U.S. Provisional patent application number 60/123,456, filed Dec. 9, 2004, titled GRAND EXALTED POOHBAH COMBINATION GAVEL-SHOTGLASS (Rubble et al.), herein incorporated by reference in its entirety. If you don't have the application number, leave underscores and add in a docket number if you listed one when you filed.

 

E.g. The present application is a continuation-in-part of U.S. patent application number 09/123,456, filed Dec. 9, 2003, titled BROWN-25 COMPOSITION (Zucker et al.), now U.S. Patent No. 6,123,666, here incorporated by reference in its entirety.

 

Some other acceptable phrases are "a divisional of" and "a continuation of."

 

FIELD OF THE INVENTION (or more preferably TECHNICAL FIELD)

This section is intended to be read by a clerk who will route it to the proper examining group.  Write it for a clerk to read.  Don't be overly limiting, but don't be obtuse. This should be 2 or 3 sentences long MAXIMUM.  Please don't berate your patent attorney for leaving out the entire description of the invention here.  It does not belong here.  Is your invention a farm implement or a new drug?  Sometimes I will include a third sentence that gives one clear example of the invention if the first two sentences may not be clear to the clerk.

 

E.g. The present invention is related generally to computer software.  More specifically, the present invention is related to software for making audio-visual presentations.  In one example of use, the present invention is implemented in Lingo to create a presentation in Macromedia Director that can be changed during the presentation.

 

BACKGROUND

Go from broad to specific, as the paragraphs follow.  E.g. start out stating that world peace, better presentations, or stopping male pattern baldness is a good thing.  Then get more specific as to what the limitations of current approaches are.  Unless you are very careful or very experienced, you may not want to mention other patents or products specifically, unless what you state is 100% true and not even arguable.  Anything taken from another patent should be a direct quote. 

 

 E.g. in U.S. patent number 6,666,666 (Gates et al.)  the inventor states that "if source code software changes are minor, and the code should have compiled OK, then we ship the product."  Applicants have discovered that this method is less then optimal for pacemaker software.

 

You may want to consider not even mentioning the content of other patents.  Be afraid.  Be very afraid. 

 

If you are aware of some patents that are in the same field that helped you understand what is out there, list them in the background.  E.g. "Some other patents in this field include US 5,987,654; US 3,123,456; and US 9,123,456."

 

If you did a search and know of a list of patents and this is a provisional patent application you might want to dump this list of patents here as a list or a table, to make sure this list of patents makes it into the non-provisional patent application Information Disclosure Statement (IDS).  E.g. if you file the provisional yourself, then send the work to a law firm to file as a non-provisional 10 months later, what if you forget to send the search results? What if the first law firm has to send the work to a second law firm because the second firm hired a fraternity brother of your boss?  What if the first firm terminates the first 5 attorneys to work on your file, one after the other, within one year (sad but true)? The provisional patent application may be the only document to survive.

 

Do not mention any pointed safety arguments in order to sell your invention, especially if the past product is your own.  E.g. do NOT say, our previous product killed people, and what is needed is an improved product that only maims them or does not harm them. Litigators will find this and beat you up with it in front of a jury.

 

In the last paragraph of the background, state what would be desirable, or advantageous, without committing yourself to anything that your invention absolutely must do in every instance. 

 

Never say that there is "nothing out there" as you don't know everything in the history of the entire world.  State instead that "Applicants are not aware of any product that …." Or "The inventors believe that there are no products currently available that …."

 

E.g. What would be desirable is an auto gas tank that does not explode immediately on impact.

 

E.g. Presentation software having an easier to use interface would be advantageous.

 

E.g. A method for squaring the circle would be useful.

 

 

SUMMARY

 

One easy way to do this is to copy the claims here, then rework them to read a little nicer.  It is a good idea to wait until you have written your claims for the last time, before writing the summary.  That way you have everything in the patent document outside of the claims.

 

You may want to sell the invention a little toward the end of the summary.

 

Do not jump all over your patent attorney for not putting everything in the summary, as it may be in the detailed description. I.e. look up the word “summary” in the dictionary.

 

 

DESCRIPTION OF THE DRAWINGS

 

If there are drawings that are clearly old and you are using them to distinguish your invention, label them prior art.  Be careful, as this is an admission that the drawings were done before your invention and can be used against your invention.

 

If your invention is buried in part of some larger system, consider showing the larger system first, then going into detail.  If your invention includes some major sub-systems, consider a using a drawing which shows these major subsystems.  I.e. start out showing the forest and trees, don't start out showing the weeds. See e.g. FIG 1 from US Patent No. 6,681,712, which I wrote.

 

This is where I depart a little from standard practice.  I try to add a little description here, to tell a story, and let the examiner or reader understand what the invention is without having to read the entire detailed description.

 

Consider the two styles below:

 

STANDARD STYLE

FIG 1 is a perspective view of the widget according to the present invention.

 

FIG 2 is a top view of the widget of FIG 1.

 

FIG 3 is an end view of the widget of FIG 1 in a first configuration.

 

FIG 4 is an end view of the widget of FIG 1 in a second configuration.

 

What do you know about the invention at this point?  NOTHING.

 

ALTERNATE STYLE [From some of the patents I wrote.]

WARNING: THIS IS BORING, BUT IT TELLS A STORY AND PROVIDES A ROAD MAP IF THIS IS IN YOUR TECHNICAL AREA AND YOU NEED TO UNDERSTAND THE PATENT

 

FIG. 1 is a block diagram of a program simulator-debugger environment in one computer such as a high performance mainframe or server;

FIG. 2 is a highly simplified diagram of a computer display screen GUI such as a workstation GUI having a high level language window, a machine language window, and a command window;

FIG. 3 is a highly diagrammatic overview of a computer system having a mainframe coupled through communication links to a personal computer having a GUI;

FIG. 4 is a simplified view of a high level language file, a machine language file, and a machine code binary file; and

FIG. 5 is a simplified dataflow diagram of data flow between a simulator-debugger executing on a server and a GUI program executing on a client.

 

OR …

 

FIG. 1 is a perspective view of a lead introducer having a proximal steering or bending knob, a lead head rotation or torque control knob, a lead release lever, a bendable distal portion, and a distal lead head engagement portion;

FIG. 2A is a highly diagrammatic, side view of a lead introducer having a rotatable outer main tube, a fixed inner stem, a lead release pull wire, a push/pull steering rod, a distal lead engagement mechanism, a lead head, and a drive coupling disposed over the distal bend;

FIG. 2B is a side view of the device of FIG. 2A, having the push/pull rod proximally pulled to bend the distal bendable region;

FIG. 2C is a side view of the device of FIG. 2A, having the release wire retracted to open the distal lead head engagement mechanism to release the lead head;

FIG. 2D is a transverse, cross-sectional view of the device of FIG. 2A, having the main outer tube rotated to rotate the drive coil over the bent distal region to rotate the distal lead engagement mechanism;

FIG. 3 is a fragmentary, side, cutaway view of the bendable distal portion of the lead introducer of FIG. 1 including a hinge, and a collet for grasping a lead head;

 

OR …

 

From one of the hardest I ever wrote….

FIG. 1 is a top, cross-sectional view through a single layer of a prior art object formed by a bead deposited along a tool path;

FIG. 2 is a top, cross-sectional view through a single layer of a prior art object formed by a bead deposited along a tool path, including a perimeter contour tool path;

FIGS. 3A, 3B, 3D, and 3E are top, cross-sectional views through prior art single layer outer perimeter vertex regions, some illustrating the lack of outer perimeter vertex definition;

FIG. 3C is a top, cross-sectional view through a single layer of a prior art object formed by a raster bead deposited along a raster tool path extending up to an outer boundary;

FIGS. 4A and 4B are top, cross-sectional views through single layer outer perimeter regions, having tool path vertices automatically positioned closer than the prior art to the outer perimeter vertices;

FIG. 5A is a top, cross-sectional view of a single layer design having three internal voids with the inner perimeters separated by less than one bead width;

FIG. 5B is a top, cross-sectional view of the single layer design of FIG. 5A, after formation of the inner boundaries offset from the inner void perimeters;

FIG. 5C is a top, cross-sectional view of a prior art, single layer formed according to FIGS. 5A and 5B, having a single tri-lobed void;

FIG. 6 is a top, cross-sectional view of a single layer formed according to FIGS. 5A and 5B, using the present invention, and having three distinct voids;

FIG. 7A is a top, cross-sectional view of a single layer design having an inner void near a surface, with the inner perimeter and outer perimeter separated by less than one bead width, after formation of an inner boundary offset from the inner void perimeter, and an outer boundary offset from the outer perimeter;

FIG. 7B is a top, cross-sectional view of the single layer design of FIG. 7A, after the interfering offset boundaries have been removed using prior art methods;

FIG. 7C is a top, cross-sectional view of a prior art, single layer formed according to FIGS. 7A and 7B, having a surface channel rather than a distinct inner void;

FIG. 8A is a top, cross-sectional view of a single layer formed according to FIG. 7A, using the present invention, having a distinct, round inner void and an external surface disturbance;

FIG. 8B is a top, cross-sectional view of a single layer formed according to FIG. 7A, using the present invention, having a distinct, flat-sided inner void and an external flat surface;

FIG. 9A is a top, cross-sectional view of an outer vertex design and an outer boundary, offset inward from the outer perimeter;

FIG. 9B is a top, cross-sectional view of the outer vertex design and outer offset boundary of FIG. 9A, after relocation of the outer boundary vertex toward the outer perimeter vertex;

FIG. 9C is a top, cross-sectional view of the outer vertex design and outer offset boundary of FIG. 9A, after relocation of the outer boundary vertex toward the outer perimeter vertex, where the outer perimeter vertex is represented by an average vertex point;

FIG. 10A is a top, cross-sectional view of an outer perimeter design for a blade, used by FIGS. 10B, 10C, 11A, and 11B, having an upper outer vertex, and a lower outer vertex;

FIG. 10B is a top, cross-sectional view through a single layer of a prior art object formed by an outer contour bead deposited along an outer contour tool path and an inner contour bead deposited along an inner contour tool path, having internal voids formed due to the distance between the inner and outer tool path vertices;

FIG. 10C is a top, cross-sectional view through a single layer of a prior art object formed by an outer contour bead deposited along an outer contour tool path, and an inner raster bead deposited along an inner raster tool path within an inner contour boundary, having voids formed due to the distance of the outer tool path vertex and the inner contour boundary;

FIG. 11A is a top, cross-sectional view through a single layer of an object formed by an outer contour bead deposited along an outer contour tool path, and an inner contour bead deposited along an inner contour tool path, having the inner tool path vertices relocated closer to the outer tool path vertices;

FIG. 11B is a top, cross-sectional view through a single layer of an object formed by an outer contour bead deposited along an outer contour tool path, and an inner raster bead deposited along an inner raster tool path within an inner contour boundary, having the inner contour boundary vertices relocated closer to the outer tool path vertices;

FIG. 12A is a top, cross-sectional view of a prior art tool path generated to produce a layer portion having a square outer perimeter and round inner perimeter;

FIG. 12B is a top, cross-sectional view of guide lines and offset boundaries generated for use in forming the raster tool paths of FIGS. 12A and 13;

FIG. 13 is a top, cross-sectional view of a tool path generated to produce a layer portion having a square outer perimeter and round inner perimeter, having improved filling near the inner perimeter;

FIG. 14 is a top, cross-sectional view of an outer offset boundary having better positioned vertices, generated for use in forming the tool paths of FIGS. 15 and 16;

FIG. 15 is a top, cross-sectional view of a tool path generated to produce a layer portion having a square outer perimeter and round inner perimeter, the raster tool path being drawn within the outer boundary of FIG. 14, and having improved filling near the outer perimeter;

FIG. 16 is a top, cross-sectional view of a tool path generated to produce a layer portion having a square outer perimeter and round inner perimeter, the raster tool path drawn within the outer boundary of FIG. 14, and having relocated or better positioned raster tool path perimeter vertices, providing improved filling near the outer perimeter and inner perimeter;

FIG. 17 is a fragmentary, top view of an outer contour bead abutted by two raster bead pairs formed of raster segments joined at raster vertices, illustrating a sub-perimeter void between the raster bead pairs, and between the raster bead pairs and the contour bead;

FIG. 18 is a fragmentary, top view of the beads of FIG. 17, after partial execution of a method including jogging or relocation of the contour tool path vertices;

FIG. 19 is a fragmentary, top view of the beads of FIG. 18, after completion of the method of FIG. 18, showing elimination or reduction of sub-perimeter voids by improved positioning of the raster vertices;

FIG. 20 is a fragmentary, top view of the beads of FIG. 17, after partial execution of a method not including jogging or relocation of the contour tool path vertices; and

FIG. 21 is a fragmentary, top view of the beads of FIG. 20, after completion of the method of FIG. 20, showing elimination or reduction of sub-perimeter voids by improved positioning of the raster vertices.

 

Note that if there is a relationship between the drawings, either spatial or sequential, this is mentioned.

 

 

DETAILED DESCRIPTION

The easiest way to do this is to put your drawings in some sort of order that makes sense to you, and label all the parts with both names and numbers (you will leave the names off the final version), then start talking about the invention.

 

If this is a software invention, consider using Visio flow charts, state diagrams, and any block diagrams.  For class diagrams, etc, use whatever you have. 

 

If you are going to be claiming something higher level than a detailed level description, then you had better have it here.  This may be excruciatingly difficult.

 

Go through the drawings (Figures) in your preferred order and same something about each numbered part.  Talk and talk then talk some more.  Explain the inter-relationship between parts and especially between the drawings!  Tell the reader how the drawings are related to each other.

 

The best source for learning this is existing patents themselves.

 

Try to proceed through the numbered Figures in numerical order and not jump back and forth too much.  When you start to talk about a new Figure, consider beginning your paragraph with something like “FIG 3 illustrates a detail view of one embodiment of element 45 from FIG 2.”  This way the reader can tell which drawing you are referring to.

 

Do not use extremely limiting words.  E.g. do not say something is critical, essential, required, necessary, etc, unless you do not mind being limited to those words in your claims.  Do not use the word “invention” unless it is limited or qualified in some way.  E.g. Do NOT say “the invention has silicon gel”, INSTEAD say “some embodiments of the invention have a gel, which may include silicon gel.”

 

When done, do a search on your patent application for the words “invention” and the words “is” and “are” to make sure they are all qualified in some way. 

 

CLAIMS

This is almost too hard to describe in any summary.  One way to write claims is to finish one or both of the following two sentences, using bullet points for the elements and steps.

 

I believe I am the first person to make an apparatus having the following elements

 

I believe I am the first person to create a method having the following steps

 

Even better yet, divide the elements or steps into those which are old (already known) and those which make up the improvement. Also, go back and try to interrelate the elements.  E.g. The knee bone is connected to the thigh bone, ….. For the humor impaired, this is from on old song; it does not describe how the patella is connected to the femur. 

 

ABSTRACT

Sum up the main points of the invention and maybe try to sell the invention in the last sentence. Again, see examples in the U.S. Patent and Trademark Office web site.