US issued patents can be found at http://patft.uspto.gov/netahtml/PTO/search-adv.htm. It can be a bit tricky at first to navigate this site (e.g., searching a patent number has to be typed in “PN/(10234567)), but once you get the hang of it, it is good for searching. Google patents also has a searchable database of patents, one that includes international patents. Additionally, each jurisdiction around the world has publicly accessible databases of their issued patents, though not all of them are in English.
Utility patents generally have several parts, though not all are required. Below is an example patent. U.S.-Patent-No.-9443668Download
The first page of a utility patent always has biographical information regarding the patent, including the names of the inventors, an assignee if any (e.g., the entity that the inventors assigned the rights to the patent to, and who owns the patent), the filing date, title of the invention, any references that the patent examiner applied during prosecution of the patent application, an abstract of the invention (e.g., a brief description of what the technology is all about), etc. The next few pages are generally drawings that help to illustrate the invention. These drawings typically are annotated with reference numbers that will be used later in the patent to more clearly present the invention. Starting on page 9 of the example patent above is the written description of the technology covered by the patent. As you will see, the written description of the example patent includes a background (column 1), a summary (columns 1 and 2), a brief description of the drawings (columns 2 and 3), a description of the preferred embodiments (starting in column 3), and claims** (starting in column 12).
The background section of the patent is provided to give the reader of the patent context for the invention, to let the reader know with what general space the invention is concerned, and also with what general problem the invention is to solve. This is a useful section for many reasons. It often can help patent examiners to search for relevant art, and show them why your invention will benefit the public. Although it might seem like having a patent examiner not cite relevant art is a good thing, if there is relevant prior art out there, you will most definitely want the patent examiner to cite it. You do not want to be sneaky in getting your patent. This is because, though a patent examiner may not be on his or her game by not finding relevant art, if your client’s invention is worth something great, you can bet that an opposing counsel in litigation will find any relevant art that a patent examiner has missed. Furthermore, if relevant art is cited during prosecution of the patent application, and a patent is still granted in view of that art, that fact will be good evidence to use later in court to support the position that the invention is novel and nonobvious over the art. In other words, it is to your advantage to have that relevant art be found early on, so you have confidence in the strength of the patent. Moreover, if you, as the attorney or inventor, are aware of prior art that is material to your invention, you must by law disclose that prior art to the patent office for consideration during prosecution of your application. Failure to do so can have dire consequences. One other point worth noting with respect to the background is that this section is an admission of prior art. Stated differently, patent examiners are well within their rights to assume that everything you state in this section is prior art (e.g., existing technology). As such, it is wise not to state anything that is novel about your invention in this section. That situation would be an admission to the patent examiner that your invention is prior art, and not novel.
The remaining sections of the written description focus on the specifics of the invention. The crucial sections are the final two, the long written description, and the claims. They are far more critical than the summary/brief description of the drawings, and can have significant consequences if they are not drafted properly. The main body of the disclosure, referred to in this particular patent as the “DESCRIPTION OF THE PREFERRED EMBODIMENTS” and starting in column 3, must satisfy the requirements of 35 USC 112. The relevant portion of that statute provides, “[t]he 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 or joint inventor of carrying out the invention.”
This essentially means that the written disclosure, or specification, must clearly set forth how to make and use the invention. This is not a negotiable item. The patent system works by inventors teaching the public their invention. They cannot hide the secret sauce. Of course, not every single detail of an invention is required to be disclosed. Inventors do not have to tell the public every measurement they used, specific alloy of a metal used, or color of a component, etc. Now, if a ratio of measurements is what makes the invention novel, then the inventor must disclose that ratio. But otherwise, details that do not contribute to the inventions novelty over the prior art do not have to be disclosed.
Most written disclosures are read in conjunction with the drawings that are shown earlier in the patent. That is, to read a patent, it is typical to flip back and forth between the drawings and the written description. As you will see in the text of the body of the example patent, there are numbers all over the place. If you are reading a sentence in a patent and it states, “As shown in Figure 99, the gear 1,000 is connected to the shaft 8,000,” the best way to understand this is to, after reading that sentence, look at Figure 99, find numbers 1,000 and 8,000, see how those components relate, and then return to the text. As a picture says a thousand words, often moving between a textual description and a figure can illuminate the essence of the invention. However, not all patents are so easy to visualize. Software patents, for example, cannot be illuminated as easily by drawings.
Finally, as you will see in column 12, there is a section that begins with the text, “What is claimed is”. Like the body of the written description, this section is required. Specifically, another portion of 35 USC 112 provides, “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” This section is, I believe, the most important section of the patent. It is cryptic, frustrating to people who do not deal in patent law (and many who do), and absolutely essential to get right. Failure to have properly drafted claims, where each word is chosen with exacting purpose, is a doomsday scenario for protecting an invention via a utility patent. For more information on this, please see my post entitled Why is drafting the claims of a utility patent so challenging?
This article was authored by John P. Powers, and is intended to keep readers current on matters affecting intellectual property and is not intended to be legal advice. If you have any questions about its content, please leave a comment below.
©John P. Powers, 2020, all rights reserved.