Patent It Yourself - PDF Archive

ChaPter 8 | How to DRAFT the SPECIFICATION and INITIAL DRAWINGS | 205
a brief description of any alternative embodiments you can
think of and that (as stated) you didn’t consider important
enough to show in the drawing and describe in detail in your
description. I usually put exotic, untested embodiments,
as well as minor variations in color, size, and materials in
the broadening paragraph. It’s very desirable to include as
many ramifications as possible in order to get your claims,
especially “means” clauses, interpreted as broadly as possible.
The courts will interpret a patent in a narrower manner if
it describes a single embodiment only. (See Chapter 9 on
drafting claims for a discussion of “means” clauses and their
relationship to the specification.)
Thus you should go through the entire application and,
for each element of the inventive device or method, state in
the ramifications paragraph whether that element can be:
• eliminated or duplicated
• changed in size (made smaller or larger)
• made of a different material
• made in a different shape
• made of a different color
• connected or associated with its adjacent elements in a
different manner
• given a different mode or function of operation—for
example, suction rather than blowing, or
• made integrally or separately (modular or in sections).
It’s very important to be as comprehensive as possible
when describing ramifications because the recent decisions
of the court have tended to interpret claims narrowly,
unless the infringed device is described or mentioned in the
specification.
Look at the sample specification at the end of this chapter
to see how this is done.
That’s just about all there is to drafting the specification
portion of your application. What’s left, you ask? The small
matter of “Claims,” that’s what. I’ll tell you how to write
these in the next chapter.
n. Sequence Listing PPA
If you provide a sequence listing of a nucleotide or amino
acid sequence on paper, you should include this heading
and the listing on a separate sheet after your claims and
before your abstract. If you have no sequence listing, don’t
include the sheet or this heading.
o. Abstract
Your abstract should be drafted on a separate sheet, after
the claims. However, it will be printed on the first page of
your patent and appears right after the sample specification
of Fig. 8G, since the claims have been saved for the next
chapter. The abstract is relatively easy to do once you’ve
done the specification, and since it’s very closely related to
the specification, I’ll cover it here.
The abstract should be put on a new page with the
heading “Abstract.” To do the actual abstract, write one
paragraph providing a concise summary of the specification
in no more than 150 words. Spend enough time writing the
abstract to make it concise, complete, clear, and as broad
(nonlimiting) as possible. This is because the abstract is
usually the part of an application that’s read first and most
frequently consulted. Look at the abstracts of several of
your prior-art patents to get an idea of what’s involved. To
be concise, your abstract should not include throat-clearing
phrases like “This invention relates to,” but rather, should
get right into it and state—for example, “An improved
bicycle pedal mechanism having…, etc.” Also don’t limit
your abstract to the invention or one embodiment; rather
refer to other embodiments and never “the invention.” If
you think you may file the application in other countries,
you should include reference and figure numbers in the
abstract (with each one in parentheses) to comply with
the international rules. International filing is covered in
Chapter 12. It’s also desirable to include some advantages of
one or more embodiments in the abstract.
J. Review Your Specification
and Abstract Carefully
After you’ve completed your draft, review it carefully to be
sure you’ve included everything about your invention you
can think of. Also, be sure that there is no possible ground
for anyone to say that you haven’t included enough to teach
one skilled in the art how to make and use your invention
or that there’s anything in the specification that a court
can use against you to limit your invention. Also make
sure whatever you write is clear and unambiguous because
if it’s possible to do so, some reader will always interpret
anything you write to mean something other than what you
intended. You may have to go through two, three, or more
drafts to get it right. Be sure to compare your specification
with those of other recent patents in the field so that yours
is at least as complete as theirs. Allow yourself plenty of
time—for example, a few days to do the drawings, a few
days to write the introductory parts of your specification,
and a few days to do the static description. In this way you
won’t feel pressured and thus you’ll be able to do a better,
more readable, more legally adequate job. Because the
drafting of an excellent patent application is admittedly a
difficult and tiring task, you may be tempted, after finishing
the draft, to file it right away and not to check it carefully.