Patent It Yourself - PDF Archive

182 | Patent it YOURSELF
(2) Advantages. Here list the advantages of your
invention (optional).
f. The Summary should briefly describe the
invention as claimed.
g. Drawings†—Figures. This is a brief listing of the
Drawing figures and may include the subsection
below, Reference Numerals.
h. Reference Numerals (optional but desirable).
These are the Drawing numbers that designate
the respective parts of your invention, such as 10
motor, 12 shaft, etc.
i. Detailed Description—First Embodiment—Figs.
1-X. This is a narrative description of the structure
of the invention’s main embodiment. If the
invention contains a program listing which is not
extensive (over about ten pages), include it here
or in the drawings. If it is longer, put it on a CD-
ROM. Detailed Description also includes the three
subsections below, Operation—First Embodiment,
Description—Additional Embodiment, and
Operation—Additional Embodiment.
j. Operation—First Embodiment. This portion of
the Detailed Description explains how the main
embodiment of the invention works or operates.
k. Description—Additional Embodiment—Figs. Y-Z.
This portion of the Detailed Description describes
the structure of an alternative embodiment, if you
have one.
l. Operation—Additional Embodiment. This
portion of the Detailed Description describes the
operation of the alternative embodiment. (Repeat
for all additional embodiments.)
m. Conclusion, Ramifications, and Scope. This part
again summarizes the invention’s advantages, the
alternative physical forms or uses it can take, and
a broadening paragraph to remind any judge that
it shouldn’t be limited to the particular form(s)
shown.
7. Claims. These are precise sentence fragments that
delineate the exact nature of your invention—see
Chapter 9.
8. Sequence Listing.† Include this heading only if a
nucleotide or amino acid sequence is part of the
invention and you provide it on paper.
9. Abstract. This is a brief summary of the entire
specification. It is technically considered part of the
specification.
10. A completed Patent Application Declaration (PAD)
form (Form 10-1A or PTO/SB/01 [use the simpler
PTO/SB/01A if you include an Application Data
Sheet—see Item 12]). The PAD is a statement under
penalty of perjury that you’re the true inventor
and that you acknowledge a duty to keep the PTO
informed of all material information and prior
art related to your invention. (A Small-Entity
Declaration is no longer needed.)
11. An Information Disclosure Statement, List of Prior
Art Cited by Applicant (Forms 10-5 and 10-6 or
PTO/SB08a and 08b), and copies of such prior art,
other than U.S. patent references. Technically, these
aren’t part of the patent application, but because
they’re supposed to be sent to the PTO with or
soon after the application, I’ve included them here.
These inform the PTO of relevant prior art or any
circumstances known to you that may potentially
affect the novelty or obviousness of your invention.
12. An Application Data Sheet (ADS) (Form PTO/
SB/14) to provide the bibliographic data about the
application (Inventors’ names, addresses, etc.). This
document is mandatory if filing by EFS-Web but I
strongly recommend that you file one if you are filing
by mail to reduce data-entry errors. As stated, you
can use a simpler declaration, PTO/SB/01A, if you
include an ADS.
Note that a printed patent contains additional data, such
as references cited, field of search, and so on. You should not
include this additional data in your patent application. The
PTO will add this data when they print the patent.
A Provisional Patent Application (PPA) must include
some, but not all, of the parts just listed for a regular patent
application. The parts that must be included for a PPA are:
• items 1–3, and 5 (postcard, payment, transmittal
letter or cover sheet (Form 3-5 or PTO/SB/16), fee
transmittal, and drawings), and
• items 6a (title), 6g (drawing figures), 6i (description—
main embodiment), 6j (operation—main
embodiment), and 6k and l (description and
operation—alternative embodiments).
Note that the PPA uses a different transmittal letter or
cover sheet (Form 3-5 or PTO/SB/16) and has a different fee.
(See Appendix 4, Fee Schedule.)
The PTO’s Rule 77 (37 CFR 1.77) states that the elements
of a patent application should be arranged in the above
order with the above headings in capital letters. I thus
recommend that you use this format for smoothest sailing
of your application through the PTO. However, since the
headings are rather broad and don’t break your application
into enough easily digestible parts—as this book does—I
recommend you add the additional headings in the above
list, namely the Advantages, Reference Numerals, and
Description and Operation of the various embodiments.
I also recommend that you add any further headings you