Patent Applications

An inventor obtains a patent by submitting an application to the USPTO. The application must include a specification, descriptive drawings, an oath or declaration and a fee.

In General … [a]n application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director … [The] application shall include (A) a specification as prescribed by section 112; (B) a drawing as prescribed by section 113; and (C) an oath or declaration as prescribed by section 115. … The application shall be accompanied by the fee required by law.

35 U.S. Code § 111 (a).

The application’s specification describes the invention, problems with the prior art and the best mode contemplated by the inventor.

The 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.

35 U.S. Code § 112 (a).

The specification must distinguish the invention from prior art and describe any preferred embodiments or best modes for the invention.

The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his invention must be set forth.

37 CFR 1.71 (b).

The specification also includes one or more claims pointing out the subject matter of the invention.

The 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.

35 U.S. Code § 112 (b).

The claims specify the metes and bounds of what the patent protects.

The primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent. A secondary purpose is to provide a clear measure of what applicants regard as the invention so that it can be determined whether the claimed invention meets all the criteria for patentability and whether the specification meets the criteria of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph with respect to the claimed invention.

Manual of Patent Examining Procedure, Chapter 2100, Section 2173.

The full specification may be used later to construe the meaning of claims and may limit the scope of coverage that a patent’s claims provide.

The specification is the single best guide to the meaning of a disputed term and is usually dispositive. … In particular, the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor, in which case the inventor's intention, as expressed in the specification, is regarded as dispositive.

Openwave Systems, Inc. v. Apple Inc., 808 F. 3d 509, 513 (Fed. Cir. 2015).

A patent must include drawings where necessary for understanding the subject matter of an invention.

The applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented. When the nature of such subject matter admits of illustration by a drawing and the applicant has not furnished such a drawing, the Director may require its submission within a time period of not less than two months from the sending of a notice thereof.

35 U.S. Code § 113.

The USPTO will examine an application and issue a patent if the examiner deems it legally appropriate to do so.

The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.

35 U.S. Code § 131.

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