Patent Applications - How To File For A Utility Patent

Writing the Specification For A Utility Patent

The specification is a written detailed description of the invention and how to make and use the invention. The specification must be written in full, clear, concise, and exact language that a person that is skilled in the technology involved in your invention could make and use your invention. The patent office examiner will be skilled in the technology involved with your invention.

Patent specifications are not written at a layperson's level of understanding, they are written at an expert's level of understanding.

In addition, they are ways to write things based on legal interpretation that can give you the best patent protection.

Writing the specification for a utility patent requires both technical and legal skill.

Remember you must follow the Patent Office's paper format for anything you prepare. You can also file electronically (more about that at the end).

Formatting and Numbering The Pages

  • All the pages of the specification including claims and abstract, have to be numbered consecutively, starting with 1. This does not apply to the transmittal letter sheets or other forms.
  • The page numbers should be centrally located preferably below the text.
  • The text lines of the specification must be 1.5 or double spaced (lines of other text not comprising the specification need not be 1.5 or double spaced).
  • Include an indentation at the beginning of each new paragraph, and number the paragraphs starting at (0001 etc.).
    Use all of the section headings listed below to represent the different parts of the specification. Section headings should be in all upper case letters without underlining or bold type. If the section is not applicable to your patent and contains no text, type the text "Not Applicable" following the section heading.

    Section Headings

    Detailed instructions for each section heading will be on the pages following this one.
    • TITLE OF INVENTION
    • CROSS-REFERENCE TO RELATED APPLICATIONS
    • STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT
    • REFERENCE TO A SEQUENCE LISTING, A TABLE, OR A COMPUTER PROGRAM, LISTING COMPACT DISC APPENDIX
    • BACKGROUND OF THE INVENTION
    • BRIEF SUMMARY OF THE INVENTION
    • BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING
    • DETAILED DESCRIPTION OF THE INVENTION
    • CLAIM OR CLAIMS
    • ABSTRACT OF THE DISCLOSURE
    • DRAWINGS (When Necessary)
    • OATH OR DECLARATION
    • SEQUENCE LISTING (When Necessary)

    Next > Detailed Instructions For Each Section Heading

    Do you want to know what the Patent office does after you file your patent application, or what you might have to do after they receive it? See "Examination of Patent Applications".

    TITLE OF INVENTION

    The title of the invention (or an introductory portion stating the name, citizenship, residence of each applicant, and the title of the invention) should appear as the heading on the first page of the specification. Although a title may have up to 500 characters, the title must be as short and specific as possible.

    CROSS-REFERENCE TO RELATED APPLICATIONS

    Any nonprovisional utility patent application claiming the benefit of one or more prior filed co-pending nonprovisional applications (or international applications) under laws 120, 121 or 365(c) must contain in the first sentence of the specification following the title, a reference to each prior application, identifying it by the application number or international application number and international filing date, and indicating the relationship of the applications, or include the reference to the earlier application in an application data sheet. Cross-references to other related patent applications may be made when appropriate.

    STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT

    The application should contain a statement as to rights to inventions made under federally sponsored research and development (if any).

    REFERENCE TO A SEQUENCE LISTING, A TABLE, OR A COMPUTER PROGRAM, LISTING COMPACT DISC APPENDIX

    Any material submitted separately on a compact disc must be referenced in the specification. The only disclosure material accepted on compact disc are computer program listings, gene sequence listings and tables of information. All such information submitted on compact disc must compliant with rule 1.52(e), and the specification must contain a reference to the compact disc and its contents. The contents of compact disc files must be in standard ASCII character and file formats. The total number of compact discs including duplicates and the files on each compact disc must be specified.

    If a computer program listing is to be submitted and is over 300 lines long (each line of up to 72 characters), the computer program listing must be submitted on a compact disc compliant with rule 1.96, and the specification must contain a reference to the computer program listing appendix.

    A computer program listing of 300 or less lines may similarly be submitted on compact disc. The computer program listing on compact disc will not be printed with any patent or patent application publication.

    If a gene sequence listing is to be submitted, the sequence may be submitted on a compact disc in compliance with laws 1.821, 1.822, 1.823, 1.824, and 1.825, instead of submission on paper, and the specification must contain a reference to the gene sequence listing on compact disc.

    If a table of data is to be submitted, and such table would occupy more than 50 pages if submitted on paper, the table can be submitted on a compact disc compliant with rule 1.58, and the specification must contain a reference to the table on compact disc. The data in the table must properly align visually with the associated rows and columns.

    Next > Background of Invention, Summary, Drawing Views, Detailed Description

    The description, together with the claims forms the bulk of your patent application. It is here that you give a full account of your invention. The description begins with background information relevant to the invention and describes the invention in increasing levels of detail. One of your goals in writing the description is to compose it so that someone skilled in your field would be able to reproduce it just from reading your description and looking at the drawings.

    Reference Material

    BACKGROUND OF THE INVENTION

    This section should include a statement of the field of endeavor to which the invention pertains. This section may also include a paraphrasing of the applicable U.S. patent Classification Definitions or the subject matter of the claimed invention. In the past, this part of this section may have been titled "FIELD OF INVENTION" or "TECHNICAL FIELD."

    This section should also contain a description of information known to you, including references to specific documents, which are related to your invention. It should contain, if applicable, references to specific problems involved in the prior art (or state of technology) which your invention is drawn toward. In the past, this section may have been titled "DESCRIPTION OF THE RELATED ART" or "DESCRIPTION OF PRIOR ART."

    BRIEF SUMMARY OF THE INVENTION

    This section should present the substance or general idea of the claimed invention in summarized form. The summary may point out the advantages of the invention and how it solves previously existing problems, preferably those problems identified in the BACKGROUND OF THE INVENTION. A statement of the object of the invention may also be included.

    BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING

    Where there are drawings, you must include a listing of all figures by number (e.g., Figure 1A) and with corresponding statements explaining what each figure depicts.

    DETAILED DESCRIPTION OF THE INVENTION

    In this section, the invention must be explained along with the process of making and using the invention in full, clear, concise, and exact terms. This section should distinguish the invention from other inventions and from what is old and describe completely the process, machine, manufacture, composition of matter, or improvement invented. In the case of an improvement, the description should be confined to the specific improvement and to the parts that necessarily cooperate with it or which are necessary to completely understand the invention.

    It is required that the description be sufficient so that any person of ordinary skill in the pertinent art, science, or area could make and use the invention without extensive experimentation. The best mode contemplated by you of carrying out your invention must be set forth in the description. Each element in the drawings should be mentioned in the description. This section has often, in the past, been titled "DESCRIPTION OF THE PREFERRED EMBODIMENT."

    Next > Claims, Abstract

    CLAIMS

    The claims form the legal basis for protection. You can (and probably should) have several claims for each patent. The aim here is to ensure that you make all the claims necessary to protect your invention. While some of your claims will cover individual features of your invention, others will cover broader elements.

    The claim or claims must particularly point out and distinctly claim the subject matter which you regard as the invention.

    The claims define the scope of the protection of the patent. Whether a patent will be granted is determined, in large measure, by the choice of wording of the claims.

    One Claim Is Required For Filing

    A nonprovisional application for a utility patent must contain at least one claim. The claim or claims section must begin on a separate sheet. If there are several claims, they shall be numbered consecutively in Arabic numerals, with the least restrictive claim presented as claim number 1.

    The claims section must begin with the statement, "What I claim as my invention is..." or "I (We) claim..." followed by the statement of what you regard as your invention.

    One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application.

    All dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable.

    Any dependent claim that refers to more than one other claim ("a multiple dependent claim") shall refer to such other claims in the alternative only.

    Each claim should be a single sentence, and where a claim sets forth a number of elements or steps, each element or step of the claim should be separated by a line indentation.

    In Claims Every Word Is Important

    The meaning of every term used in any of the claims should be apparent from the descriptive portion of the specification with clear disclosure as to its import; and in mechanical cases, it should be identified in the descriptive portion of the specification by reference to the drawing, designating the part or parts therein to which the term applies. A term used in the claims may be given a special meaning in the description.

    The fee required to be submitted with a nonprovisional utility patent application is, in part, determined by the number of claims, independent claims, and dependent claims.

    Reference Material

    ABSTRACT OF THE DISCLOSURE

    The abstract is a short technical summary of your invention that includes a statement of the use of the invention. It is primarily used for searching purposes.

    The purpose of the abstract is to enable the USPTO and the public to determine quickly the nature of the technical disclosures of your invention. The abstract points out what is new in the art to which your invention pertains. It should be in narrative form and generally limited to a single paragraph, and it must begin on a separate page.

    An abstract should not be longer than 150 words.

    Reference Material

    Next > Drawings, Oath, Sequence Listing, Mailing Receipt

    DRAWINGS (when necessary)

    Drawings must be included with your application if the invention can be illustrated so that it is easier to understand the patent. They must be legible, labeled and referred to in the description.

    A patent application is required to contain drawings if drawings are necessary for the understanding of the subject matter sought to be patented. The drawings must show every feature of the invention as specified in the claims.

    Omission of drawings may cause an application to be considered incomplete.

    If you need to create patent drawings use our Guide to Patent Drawings.

    OATH OR DECLARATION, SIGNATURE

    The oath or declaration is made on the following forms:The oath or declaration identifies the patent application with the applicants, and must give the name, city, and either state or country of residence, country of citizenship, and mailing address of each inventor. It must state whether the inventor is a sole or joint inventor of the invention claimed.

    Providing a correspondence address will help to ensure prompt delivery of all notices, official letters, and other communications. In addition, a shortened declaration can be used when you also file an Application Data Sheet.

    The oath or declaration must be signed by all of the actual inventors.

    An oath may be administered by any person within the United States, or by a diplomatic or consular officer of a foreign country, who is authorized by the United States to administer oaths. A declaration does not require any witness or person to administer or verify its signing. Thus, use of a declaration is preferable.

    A full first and last name with middle initial or name, if any, of each inventor are required. The mailing address and citizenship of each inventor are also required if an application data sheet is not used.

    SEQUENCE LISTING (when necessary)

    If they apply to your invention, amino acid and nucleotide sequences must be included as they are considered part of the description. They should be in paper and computer-readable format.

    You must prepare this section, for the disclosure of a nucleotide and/or amino acid sequence, with a listing of the sequence that complies with the following patent rules: 1.821, 1.822, 1.823, 1.824, and 1.825, and may be in paper or electronic form.

    Obtaining A Receipt For Mailed Patent Application Documents

    A receipt for patent application documents mailed to the USPTO can be obtained by attaching a stamped, self-addressed postcard to the first page of the documents included in the patent application. However, the postcard has to include a long list of information.

    See - Obtaining a Receipt for Documents Mailed to USPTO

    Next > Creating Patent Drawings For A Utility Patent