The Specification and Claims of a Patent Application

By: ANDREW SCHROEDER
Submitted: 2009-07-28 12:57:11
Print this article | Tell a friend | For publisher | Social Bookmarking
Rating:
 

You can think of the specification of a patent application as being similar to a candy bar wrapper.  On every candy bar wrapper there will be a list of ingredients: sugar, chocolate, corn syrup, nuts, etc.  As with candy bar wrappers, the specification of a patent application will have a list of ingredients, or components which enumerate all of the different types of parts that can be used in that invention.

For instance, there are many types of candy bars: there are chocolate candy bars, toffee candy bars, milk chocolate candy bars, energy bars, etc.  Unlike candy bars, a patent specification may have the ingredients to cover several different types of alternative embodiments, or candy bars.  This is because in a patent application you may want to how to make a chocolate candy bar, a toffee candy bar, an energy bar, etc.  So a patent specification will usually list more components of an invention than are actually used with each embodiment.  In other words, in some inventions you may use tape, in others you may use glue, or in others, you may use a nail.  You get the idea.

You can also think of a patent specification as the instruction manual on how to assemble that bookshelf you bought at the store.  In those manuals they will usually list all of those parts, but they will also show you how they are connected with each other (the leg bone is connected to the thigh bone, the thigh bone is connected to the…)  Likewise, patent specifications will usually dictate how those parts will be interrelated or connected with each other in order to enable one skilled in the art to practice the invention.

There are many different types of claims of a patent application.  Some patent claims are about the type of invention.  There are apparatus claims, method or process claims, claims to designs, chemical composition, etc.

There are also claims which are related to the scope of a patent.  Generally speaking, broad patent claims are more valuable and marketable than narrow claims.  Broad patent claims are similar to a fishing net.  The bigger the net, the more fish on your plate.  In patent terms, a broad claim will give you a larger monopoly and potentially more opportunities for licensing.

Narrow claims are claims with less scope.  These claims are more difficult to infringe, and are typically less valuable.  The narrowest claims are called “picture claims” which typically list many different components and are usually the most likely to pass muster with the USPTO.

There are also independent claims and dependent claims.  You can think of independent claims and the dependent claims as being one really long, and grammatically incorrect sentence, which your high school English teacher would be quick to fail in a book report.  In other words, you can pretend that there is no period between the independent claim and the dependent claim because the dependent claim is conflated in scope with the independent claim.

It should be noted that if the independent claim is infringed, you do not need to worry about the dependent claims.  However, if there is no infringement on the independent claim, but there is infringement on the dependent claim, there is still infringement.

los angeles patent trademark attorney
los angeles lawyer bankruptcy attorney

Andrew Schroeder is a California Licensed Attorney licensed to practice before the United States Patent & Trademark Office (USPTO).

Article source: Expert Articles

Most Recent Articles in Patents category

  • The process of discerning patent infringement - By: ANDREW SCHROEDER
    Discerning whether there is direct patent infringement is kind of like being an insurance claims adjuster. There are a lot of similarities between patent infringement and insurance claims. Words like "scope" and "coverage" are bandied about liberally. Both endeavors require a lot of legal hair-splitting.
  • Provisional Patent applications vs. Non Provisional Patent Applications - By: ANDREW SCHROEDER
    Provisional applications used to be the very first step of the patent application process. Provisional applications were typically written by the inventor and then sent over to the USPTO. Sometimes, these provisionals were proof read by a patent attorney even though they were incomplete. As a result, inventors would save time and money. Unfortunately,case law now requires that provisional patent applications be completely enabling and nearly match up word for word with their non provisional counterparts.
  • Do your own patent search - By: ANDREW SCHROEDER
    Due to the advent of the USPTO patent online database and Google Patents, inventors can now do their own patent searches free. In the process, inventors and others seeking patent protection can save hundreds to thousands of dollars.
  • What you need to know about pending patent applications - By: ANDREW SCHROEDER
    What you should take away from this article is that the term patent pending does not mean that you have concrete rights from the time you file your application. It is more accurate to say that you have prospective rights in the event that your application is accepted. Upon acceptance, it is true that the damages accrues from the filing date of your application of your provisional or nonprovisional application.
  • Websites and Intellectual Property, and improvement patents - By: ANDREW SCHROEDER
    To clear up confusion as to how to protect the Intellectual Property of websites, this article will give a brief explanation on how websites might be protected under Patent Law, Trademark Law, and Copyright Law. This article will also explain in depth the concept of improvement patents.
  • The Specification and Claims of a Patent Application - By: ANDREW SCHROEDER
    You can think of the specification of a patent application as being similar to a candy bar wrapper. On every candy bar wrapper there will be a list of ingredients: sugar, chocolate, corn syrup, nuts, etc. As with candy bar wrappers, the specification of a patent application will have a list of ingredients, or components which enumerate all of the different types of parts that can be used in that invention.
  • Assignments and Licenses of Patents, Trademarks, and Copyrights - By: ANDREW SCHROEDER
    The main difference between assigning a patent and licensing a patent is important. Assigning Patents, Trademarks or Copyrights is basically selling the complete ownership interest in that patent, trademark, or copyright. And the licensing of a patent, trademark, or copyright is like "renting" that patent, trademark, or copyright.
  • How to Read the Claims of a United States Patent - By: ANDREW SCHROEDER
    The claims of a US Patent is the most important section, and is curiously listed in the end of most patent documents. The claims to a US Patent are what an engine is to an automobile. The specification is the chassis, the background is the paint job (sort of) and the abstract is the cup holder.
  • Trasylol Lawsuit: understand everything - By: Paul Justice
    If you are a victim or have a loved one that received Trasylol, it is essential that you file a Trasylol lawsuit immediately.
  • An introduction to US Defense Lawyers - By: Ron Victor
    An US defense lawyer is an attorney, which represents a charged party in all law matters, comprising in a court of law. The charged person is generally recognized as the defendant, so the name states, defense lawyer.