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How To Write Your Own Patent Application

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By LEWJ


Part 2

Two more sections of your patent application remain to be completed. They are your Abstract, and your Claims. These will now be considered.


WRITING THE ABSTRACT

After your invention has been thoroughly specified you can compose the Abstract for it on a sheet by itself. Your Abstract should be clear and straightforward with no wasted words. The standard is a description no more than 150 words in length. Reviewing the Abstracts of different patents will help you get a good sense of how one should be written. An Abstract for the electronic table invention could be written thus:

"An electronically operated portable table with means for local and remote control. The table's leg uses an electronically controlled, calibrated pivot joint which allows a 180 degree pivot radius, providing a 90 to 180 degree tilt of the tabletop in four directions. Vertically adjustable concentric tubing allows a height adjustment of 1 to 6 feet above floor level. Local electronic control of the table is push-button operated. The table is adjusted from a distance of 20 feet by a remote control device. A vertically adjustable base at the lowest end of the table's leg serves as a support upon which the table is stabilized. Control of the table's height is suitable for adults, children, and those confined to a wheelchair. Angular positioning of the tabletop provides a customized vertical or semi-vertical writing surface for seated or standing users. Base rollers provide easy relocation of the table."



UNDERSTANDING CLAIM LANGUAGE

Unlike in the case of everyday written language, the words of patent claims have critical legal meaning. Not only their ordinary meaning, but their denotation and connotation (what they mean and what they suggest) in the context of the invention itself and in relation to each other is critical. Words like "better," "stronger," or "improved" have to be precisely described in invention claims rather than simply written. An invention idea that says its result is "better" or "improved" must point out in its claims the element(s) of the invention to which such words are believed to apply. The use of the words "comprise" and "consist" in claims supply an example of word denotation and connotation. If an invention is claimed as "consisting" of certain elements, the inventor is interpreted to mean that the invention is thus completely claimed and is limited to those elements. Because of the narrowness of the claims, denoting limited claim scope, a similar invention that adds any element not named in the prior invention is patentable without infringing upon the prior one. However, an invention claimed as "comprising" certain elements is afforded broader scope for its claims because of not specifically limiting its elements. The word "comprising" is interpreted to mean "made up in part of, but not limited to" the elements cited. Use of the word "comprising" suggests that elements other than those cited in the claims can be used to operate the invention. Any similar invention that contains similar elements may be ruled as an infringement upon the prior invention.

Another feature of claim writing is the use of the word "said." Though it can become a bit tedious and redundant, that legal wordage performs the highly important function of precisely identifying the elements of a claim that have been previously cited. Directly, exactly, and respectively, the word "said" points to the elements of an invention. The word "means" is another word basic to claim language. Similar to the word "comprising," its role is to cover an invention broadly so that naming all its possible functional elements is not necessary in order to provide legal protection for it. A claim that properly uses the word "means" helps an inventor avoid claiming only results or advantages and to claim the novel structure of an invention instead. This meets a basic requirement for claims and cannot be sidestepped on the way to a patent. This standard also enables claims to cover variations of an invention's structure that other inventor's could otherwise later use to claim essentially the same invention. For instance, a claim that uses the word "means" to stand for ways of applying force with a hammer covers manual as well as mechanical methods of use. Backed up by a thorough Specification that cites various use methods, such a claim would have strong support. The phrase "device for" can also be used in claims to indicate a means for accomplishing some invention result. The word "contiguous" applies to elements of the invention that are touching.


CLAIMING YOUR INVENTION

There is one universal law for patent applications: they live or die by their claims. A new inventor's knowledge, writing skills and determination are most tested in the composing of claims. Even a Provisional Patent Application, though, is better off with at least one claim attached. Like the Abstract, claims go on separate sheets. In patent law, "claim" refers to a set of words which precisely and particularly point out, specify and teach an invention. Valid claims clarify any element of an invention which justifies it as unique above prior disclosures in its field.

In the case of the electronic table, an article of manufacture is made adjustable by means of an electronic method for mobilizing it. That puts our electronic table into the category of an article of manufacture for which apparatus and method claims can be written. Apparatus claims would cover the physical structure of the table, and method claims would cover the way the table is operated. Successful method claims provide broad coverage. The broader a claim is, the harder it will be for competitors to avoid infringing it. This is because a sufficiently broad patent claim effectively limits the possible ways the invention it covers can be copied (designed around) by competitors and still be legal. Such claims protect an invention by legally denying others the right to use the essential elements that make up the invention. The claims requirement highlights again the necessity for an inventor to do good prior art research; there's no other way he or she would know how broad to write their claims or how narrow their claims would need to be to avoid infringing prior patent rights. If there is any new method or ingredient involved in the manufacturing of an invention, that too can be claimed so as to be able to legally challenge even the act of manufacturing a copycat version of the original. Be advised that when an invention has few key elements to be claimed in order for it to be completely covered, its patent will be strong. All the key elements necessary for the operation of the invention thus come under the legal protection of the patent; any attempt to copy the invention would either infringe upon it, be inferior to it, or be inoperable. This is the ideal outcome and the end game of patent writing. Getting there, however, can be a considerable challenge.

Besides the need for precision and inclusiveness, claim writing involves the craft of selecting words which accurately describe an invention and also create a legally acceptable balance of broad and narrow terms. For instance, let's suppose the first inventor of the hammer claimed his new invention thus:

What is claimed is:

1. A handheld device for driving nails, consisting of;

a. a tubular handle for holding with a human hand,

b. an iron headpiece immovably affixed to the top of said handle.

This claim does not refer back to another claim, so it's called an independent claim. There are several drawbacks to this claim. One problem here is that our inventor has made his main claim too specific, or narrow; there's no need to attach limiting descriptive words to the handle or headpiece in the claim. Any material in either case that supported the hammer's function would need protection, no matter the shape or substance. The inventor has also restricted his invention as a device that is "consisting of" only the elements named. His patent protection would be challenged by the next patented hammer that featured a removable headpiece with a fork at the rear for lifting nails and a handletip with flex pins to support different types of the headpiece. Why? Because the original inventor specifically pointed out that his invention consisted of an immovably fixed main element and was for driving nails. The second hammer adds valuable elements not cited or suggested in the original inventor's claim, namely, a headpiece structured for lifting nails and a handle with variable headpiece support. Without a collective history in the prior art which suggested the altered elements of the second hammer and with no equivalent embodiments in the original inventor's Specification, the second inventor's effort would be patentable over the original invention. According to patent law, all the structural limitations of a claim have to be taught in the prior art to disqualify a new invention for patenting. In our example, the second hammer's structural elements qualify it as an "Unsuggested modification"; the forked headpiece would produce a new use for an old device, and the variable support structure of the handle would amount to a new combination of materials that produced a result not anticipated by the prior art. To establish stronger legal protection for his hammer, the original inventor should have claimed his invention more broadly and should have added drawings and Specification details showing embodiments equivalent to the improved hammer patented after the original. To fully protect an invention, then, the claims of a patent must include all specification elements which an inventor calls his invention, and vice versa.

On the other hand, the same invention could be claimed thus;

What is claimed is:

1. A device for striking objects, comprising;

a. A handle,

b. A hard end piece.

Our inventor has been careful to define his idea more broadly this time. The problem with this claim, though, is that it's far too broad for allowance. If a claim this broad was allowed by a patent examiner, the inventor would be legally entitled to deny patents for any devices matching the description in this claim. That would include a very wide range of devices, from nunchucks to baseball bats! Such a claim would never be granted because it would be an inadmissable infringement upon all prior art in its category. A more suitable claim example for the hammer is found at the ClaimCrafted site listed below.

Getting back to our electronic table, we could claim it like this;

What is claimed is:

1. A rotating table, comprising:

a. a tabletop

b. an electric current,

c. an electronic leg,

d. a revolving leg joint,

e. a support base

Here it should be pointed out that the previously stated claim requirements demand that claims show a structurally connected invention. An inventor meets that standard by writng claims which show the relationship between the elements that make up the invention. The above claim lists the elements of the electronic table without revealing their working relationships. Instead of showing a coherently operative invention, the claim presents a flat list of its parts. Let's rewrite this claim using claim language and telling what the parts structurally do for each other as we go. The first set of claims will describe the invention as a method.

What is claimed is:

1. A method for controlling variable adjustment of an article of furniture having contiguous support, the improvement comprising;

a. providing electronically adjustable contiguous support for a flat surface of said article of furniture, and

b. providing means for powering and controlling said variable adjustment and electronically adjustable contiguous support of said flat surface of said article of furniture.

2. the controlling means for said variable adjustment and electronically adjustable contiguous support of said flat surface of claim 1, wherein said controlling means is attached or from a source unattached to said article of furniture,

3. the electronically adjustable contiguous support of claim 1, wherein said electronically adjustable contiguous support has, in combination, a vertical adjustment device and a revolving adjustment device for controlling said variable adjustment of said flat surface of said article of furniture,

4. the electronically adjustable contiguous support of claim 1, further including transporting and grounding means for said article of furniture,

5. the powering means of claim 1, wherein said powering means for said variable adjustment and electronically adjustable contiguous support is supplied by transmissive energy.


The first claim above is the independent claim, or main claim. Claims 2-5 are called "dependent" claims because they refer back to the independent claim and can also refer to other dependent claims. Dependent claims are used to narrow or further describe the main claim. Dependent claims don't have to be cited in sequence back to other dependent claims by requirement but are more easily followed when they are. In the above exemplary claim, the dependents refer to the elements of the main claim in sequence as those elements appear there; this creates a structural picture that is more easily comprehended. The "electronically adjustable contiguous support" referred to for the flat surface (tabletop) is of course the leg of the table. Then why not just call it a "leg," or an "adjustable leg," and be done with it? If we consider the issue of alternative embodiments, the possibility arises wherein the tabletop could be supported at the end of a structure attachable to a wall surface. Technically, the wall support would not be a table leg, which is a vertical support structure by plain definition and by its ordinary meaning.  A significant fact to consider is that patent examiners (and judges) can legally interpret a claim according to the ordinary meaning of its words. This is one reason why the matter of describing alternative embodiments in a Specification and adequately covering them in the claims is so important. The words "contiguous support" cover the table's support structure more broadly, then, being inclusive of ANY attached or attachable support for the tabletop. But why not write the support down as an "adjustable contiguous support," which is what it is? Because the phrase "adjustable contiguous support" by itself would make the claim too broad; various types of tables have long featured manually adjustable support structures. Defining the electronic table over the prior art in its field (providing that this invention was in fact 'new'), the phrase "electronically adjustable contiguous support" would effectively narrow that structural element by specifying its particular mode of operation in contrast to what had come before it. Only non-contiguous support means would avoid infringing this claim and its prior art.

Claim 2 covers the pushbutton and remote control structures of this invention. Claim 3 covers the pivot joint and tubing of the table leg. Claim 4 covers the base structure and roller(s) of the table, and claim 5 covers the power necessary to operate the invention. The key word there is "transmissive." The words "transmissive power" include any form of energy conducted or channeled from a source to cause the invention to operate. The invention would thereby include but not be limited to an electric power source. In other words: if someone were to invent a table like that described in this invention, and then powered it by hydraulic means, nuclear fission, or even psychokinesis, that invention would constitute an infringement upon the original one. Why? Because the channeled energy in each case would be transmissive energy (energy transmitted from a source), which is expressly claimed in the original invention. If electronic tables were NOT new inventions, the 5th claim would have to be omitted and some part of the remaining structure of the invention would have to clear the prior art.

A set of apparatus claims could be written for this invention as follows:

What is claimed is:

1. An article of furniture controlled by a transmissive energy source, comprising;

a. a contiguous attachment beneath a flat surface, said contiguous attachment and flat surface having a variable range of vertical and angular adjustment,

b. an energy transmitter.

2. the flat surface of claim 1, wherein said flat surface is a device for supporting objects and inscription activities,

3. the contiguous attachment of claim 1, wherein said contiguous attachment consists, in combination, of one tube within a second tube to form a concentric tube structure as means for producing a variable range of vertical adjustment of said flat surface of said article of furniture,

4. the contiguous attachment of claim 1, further including, in combination, an internal gauge and a pivotal joint as means for producing a variable range of angular adjustment of said flat surface of said article of furniture,

5. the contiguous attachment of claim 1, further including at least one affixed ball bearing and a base as means for transporting and grounding said article of furniture,

6. the energy transmitter of claim 1, wherein said energy transmitter is a device for powering said vertical and angular adjustment of said flat surface of said article of furniture.

As can be seen, one set of claims may cite another set of claims in slightly different terms. This demonstrates how different sets of claims can be written to further clarify an invention idea. A patent examiner is thus afforded more views of an invention in the language of the original claims and the Specification. For the sake of logical structural order the flat surface is claimed before the "contiguous attachment" beneath it is. Claims 3, 4 and 5 cover the table's height, tilt, transport and rest support devices, and claim 6 covers the powering means for the table.

As a last resort, you can ask your patent examiner to write your claims for you at no charge. You may still need to broaden them after that, though, so you would need to have some knowledge and instruction as well as practice. You can write up to 20 claims for your invention. Anything over that total incurs a charge per extra claim. Twenty-two claims will cost you over a hundred dollars. And if you send in more than 3 independent claims---say 2 over the limit---you'll pay $440 extra to the USPTO.


OBVIOUSNESS VERSUS UNOBVIOUSNESS

Receiving a strong patent for an invention depends upon the level of originality an invention shows over the prior art in its field. This is called "unobviousness." An invention is declared unobvious if its claims (a) cite a valuable structure or method not suggested in the prior art claims of its field, and (b) do not describe a structure or method that would be obvious to someone with ordinary but complete knowledge in the field. Though such a person is necessarily hypothetical, this last regulation is a basic patent examination standard in favor of objectivity. The claims of an unobvious or substantially original invention show at least one new result that uniquely offers value in an unexpected way. In achieving that outcome, an unobvious invention combines or discloses known or unknown physical properties in a way that produces sufficiently valuable new effects. Using the hammer invention as an example, let's say an inventor seeks a patent on a hammer he invents. The original hammer's handle is made of a straight piece of wood; the inventor of the new hammer designs his handle with slight indents for finger-grip. Based on the fact that the original hammer performs the same function in its normal use that the 'new' one does, the 'new' hammer would be a case of obviousness. It would not qualify for a patent because of not producing any new result beyond what was previously offered by the original hammer. No new property or combination of properties is revealed by the finger imprints upon the 'new' hammer; the original hammer inherently (within the scope of its intended function) offered finger-grip. This example highlights a patent law called inherency. For invention claims to win strong patents they must describe a substantially original invention and violate no patent laws. Inventions whose claims do not describe substantially original structure or method will be ruled as cases of obviousness.


USE RELIABLE INFO SOURCES

There are enough legitimate information sources available to inventors these days to help them avoid inventor help scams. Much of it is provided free of charge or at minimal cost. Accurate info on patent application forms, paper size, margin and drawing rules, etc., are easily obtained online @ uspto.gov. That information and much more will be mailed upon request to anyone at no extra cost. I suggest that serious inventors click the MPEP link listed below or type "MPEP" into a Yahoo or Google Search bar and bookmark or photocopy the documentation there. MPEP stands for Manual Of Patent Examination Procedures. Info on claim rules, obviousness and unobviousness, and patent regulations in general are thereby obtainable right from the source. The insight into patenting provided by this research is highly valuable to the independent inventor, furnishing access to what virtually amounts to free attorney advisement on the subject. The book by David Pressman is a fully stocked info gallery, loaded with all the necessary forms and instructions from A to Z. The book provides value that far outweighs its cost. It was very helpful personally, and I cannot recommend it enough. Just suffice it to say that it's a 10-star A-1-Teacher-Parent-Pal info source. Serious inventors will want to add it to their info library. It can make writing your own patent application an easier, successful and less expensive self-determined journey. Bon voyage!






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creativeone59 profile image

creativeone59  says:
4 weeks ago

Thank you for a very informative and educational hub on How to write your own patent application, thank you so much for sharing it. creativeone59

LEWJ profile image

LEWJ  says:
4 weeks ago

This part turned out longer than I thought it would, but that could'nt be helped. There's still much that could've been added. It also took longer to complete than I anticipated at the outset. I'm in no rush, though, to pile up hubs here; from the start my idea was to take my time and write about only what interests me. Your thanks are appreciated.

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