Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 149

This is the longest section of the specification of the patent application, and comprises a detailed description of the invention’s structure and interrelated functions of the structural elements, followed normally by a description of one cycle of operation of the structure, where there is a cycle of operation. For example, compositions of matter do not have an operation to describe, except probably the method of making the composition. The description of the invention in this portion of the specification also describes the interrelationship between each of the elements of the invention, and their cooperation with each other. The description of the invention, as mentioned previously, must be set forth with such particularity to enable any person skilled in the art to make and use the claimed invention without undue experimentation once the patent expires. Since the extent of the knowledge of those skilled in the art varies from art to art, the level of detail varies from patent application to patent application. However, any doubt as to the amount of detail which should be included in the description of the invention should be resolved by adding detail. Remember that once the patent application is filed, no new matter can be added to the specification. Therefore, it is important to include all material elements and functions in the patent specification as initially written.

Normally, in describing a mechanical or electrical invention, the structure is defined in a logical way, usually from an input to an output, or from a base upward as in describing the construction of the invention. In the chemical field, detailed descriptions include a wide range of specific examples or embodiments of the invention, as well as all known equivalents of the specific elements of the invention. In non‐chemical cases, the detailed description need only cover one specific embodiment of the invention; however, it is preferable that alternative embodiments of the invention be set forth in the specification to advise the reader of the issued patent that several embodiments of the invention are covered by the issued patent’s claims.

Since there is a requirement, even after the AIA, that the detailed description of the patent application set forth the “best mode” of the invention contemplated by the inventor at the time the application is filed, you must ensure yourself that the best mode is set forth in the application. This requires that if you have performed additional work on the invention while the patent attorney was preparing the patent specification, you must add the additional material to the application after the application has been drafted and furnished to you for review and comment. Keep in mind that a “best mode” of the invention discovered one day after or at any time subsequent to the filing of the application is of no consequence. That “mode” can be covered in a subsequently filed continuation‐in‐part patent application.

The patent specification also points out features of the subject invention that produce the previously described advantages, and which comprise improvements over the prior art. This again is part of the “sales” presentation advising the Patent Examiner how the invention differs from past technology. The specification can also point out how your invention solves a long‐standing problem or need in the prior art. This will reinforce the argument that the invention was not obvious to one skilled in the art.

Upon reviewing the patent application once it is completed by the patent attorney, satisfy yourself that the description of your invention is correct, complete, and is set forth in a logical, flowing manner. The description of the structure should be in an easy‐to‐understand format, and the statement of operation or function should also be logical, starting, for example, from an input and working through to the output, or from the beginning of the operation to the end.

Also, when reviewing the patent application submitted to you by the patent attorney, determine whether you believe that the Patent Examiner, when he or she reads the application, will determine instantaneously that there is an invention described in the patent application. Also, ensure that the patent attorney has adequately defined all of the novel features of your invention.

To obtain a filing date for the patent application, it must be filed with the USPTO with at least one claim, all the pages of the specification, and all the drawings. If any one of these elements is omitted, no filing date will be assigned to the application.

If you determine from reading the prior art obtained through a pre‐filing patentability search that the Patent Examiner may make an argument of lack of novelty, or obviousness based on the prior art, the patent application specification should anticipate these arguments and furnish rebuttal information in the specification itself. Therefore, when reviewing the patent application, be sure that you understand the differences between your invention and the disclosures of the prior art of which you are aware.

In the patent specification, technical details such as dimensions, angles, materials of construction, circuit components, values‚ and the like may be omitted, unless they are critical to the novelty or understanding of the invention. However, all details critical to the practice of the invention must be set forth. Again, my recommendation is to err on the side of inclusion if you cannot determine the essentiality of all details. Also, remember that if your issued patent is ultimately subjected to enforcement in a court of law, the ultimate reader of the patent may be a federal judge and/or jury who have no technical knowledge whatsoever. Therefore, when reviewing the patent application, review it from the standpoint that some day a nontechnical person may have to determine the scope and content of the invention described in the issued patent.

The specification must also include sufficient information to enable a person skilled in the art to make and use the invention. If it is found that the specification is not complete, or describes an inoperable invention, the issued patent ultimately could be held to be unenforceable. It has been my experience that a properly prepared patent application is a finite merger of proper technical disclosure and description, and excellent and artful use of the English language, all applied to technology.

The description portion of the patent specification concludes with a general statement of intent not to restrict the invention to the precise embodiments described, but to have the patent cover any device or process that falls within the scope of the claims that are ultimately allowed by the Patent Examiner.