Patent It Yourself - PDF Archive

202 | Patent it YOURSELF
4. MEDIOCRE: The defendant died two months later
while visiting New York. (Emphasizes location.)
BETTER: The defendant died while visiting New York
two months later. (Emphasizes time.)
BEST: Two months later, while visiting New York, the
defendant died. (Emphasizes the main point.)
If you’re uncertain which words carry the most punch, read
your sentences aloud.
Use of “A,” “The,” and “Said”
Although the articles “a” and “the” are two of the
most common and elementary words in the American
language, many writers often use them improperly.
The articles “a” and “an” are indefinite articles, i.e.,
they do not refer to any definite or already known thing.
Example: “I bought a car.”
The articles “the” and the legal word “said” are definite
articles, i.e., they refer to a definite or already known
thing. Example: “I bought the car that we saw yesterday.”
When you first introduce something, your reader
is not familiar with it, so always introduce it with an
indefinite article. Example: “The device has a handle 10
that is connected to an ax head 12.”
When your specification refers again to something
that has already been introduced, your reader is familiar
with it, so always use a definite article “the.” For example,
if the parts have already been introduced, say, “The lever
and the handle are made of plastic.”
If you are referring to the parts by their number,
or if they’re plural, you often don’t need to use “the.”
Examples: “Lever 10 and handle 12 are made of plastic,” or
“Levers such as this are well known.”
In claims (see Chapter 9) the same rules apply, except
that you should use “the” to refer to a part that has not
been expressly mentioned but is implied and “said” to
refer to a part by the exact name by which it has already
been recited. For example, if the claim has already recited
a tabletop comprising a flat sheet and four elongated
legs, say, “… said legs being attached to the underside of
said tabletop.”
Never use “a” to refer to an already-introduced part.
For example, if a lever has been introduced, do not
subsequently say, “A lever is connected to the handle.”
Never introduce something with “the.” For example, if
a lever has not been introduced, do not say, “The lever is
made of plastic.”
Common Misconception: If you put a specific feature of your
invention, such as a preferred size, a preferred material, a
preferred shape, etc., in your specification, the scope of your
invention will be limited to this feature, so any device that
lacks this specific feature will not infringe.
Fact: The scope of an invention is determined mainly by
the claims and far less by specifics that are included in
the specification. If you do recite any specific feature in a
claim, that claim will be limited to this specific feature, but
if the specific feature is stated in the specification, it will
help provide an adequate disclosure. The specific feature
should not be stated in a limiting manner, however. Wrong:
“The lever of my invention is made of nylon.” Right: “I
contemplate that the lever of this embodiment be made
of nylon, but other materials are also suitable.” The patent
laws, rules, court decisions, and practitioners actually
require and recommend that the specification include as
many specifics of the invention as possible, especially in
critical areas, so no one will ever be able to validly attack
the adequacy of the specification for failure to teach how
to make and use the invention. However, again, when
stating the specifics of an invention in the specification,
it’s important to (1) state that these specifics are what you
presently prefer for this embodiment, and (2) include as
many variations as you can envision—for example, “I
presently contemplate that the lever of the embodiment
of Fig. 1 have a rectangular cross section 2 mm by 4 mm
and be 4 cm long and made of austenitic steel. However it
can have different cross sections, such as oval, triangular,
circular, etc., and different sizes and materials, such as
high-carbon steel, titanium, polycarbonate, etc.”
Avoid technical language, Greek letters, and subscripts,
insofar as possible, but if you use any technical terms, be
sure to define them for any lay judge or young examiner
who may read your application. One patent litigator has
suggested drafting all patent applications for a judge with
a degree in political science, English, or government—that
is, try to make your description as nontechnical as possible,
without eliminating any crucial details. If you do have
a technical invention, such as a computer, biotechnical,
electronic, chemical, medical, or complex mechanical
invention, start your explanation from ground zero,
assuming your reader, who may be a new examiner or a judge
with a degree in political science, knows nothing about the
field. Then explain the field of the invention, the problem you
solve, and any technical information your reader will need to
understand it. You don’t need to write a complete textbook,
but you should provide a full guide from ground zero to the
level of the invention. I recommend that, for any reasonably
complex invention, you include a glossary of technical