The process of obtaining a U.S. patent begins with the preparation and filing of a patent application. A utility patent application includes an abstract outlining the invention, a background and summary section identifying the field of the invention, briefly describing the known prior art and the problems and inadequacies of the prior art, and summarizing the invention. The application also includes detailed drawings, and a brief description of these drawings. This is followed by a detailed description of the preferred embodiment of the invention. The patent laws require that the application describe the invention in sufficient detail that a person of ordinary skill in the art could make and use the invention.[1] They also require that the applicant disclose the best mode or version of the invention known at the time of filing.[2] Failure to meet these requirements can prevent a patent from issuing, or if a patent does issue, can result in the patent later being declared invalid. Because infringement is determined by reference to the claims, one need not be concerned that a detailed disclosure of the invention will limit the coverage of the patent. Generally, the more complete the disclosure, the greater the chances for obtaining a valid patent.
A utility patent application concludes with one or more claims.[3] A claim is a one-sentence description of the invention that points out the subject matter of the invention. The claims determine the scope of a patent because the patent is infringed only when someone imports, makes, uses, or sells the invention described in at least one of the patents claims.[4]
A design patent application comprises drawings of the design, a brief description of the drawings, and a standard claim to the “ornamental appearance as shown and described.” Virtually any kind of product can be the subject of a design patent, although a design patent cannot protect purely functional features of a product’s appearance or products that are not visible in their normal use.
The patent application must be complete at the time of filing because once a patent application is filed no new matter can be added to it.[5] To protect any subsequent developments or improvements to the invention a continuation-in-part application adding the new matter to the prior application, or an entirely new application, must be filed.
[1] 35 U.S.C. §112 provides in part: “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”
[2] 35 U.S.C. §112.
[3] 35 U.S.C. §112 provides “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”
[4] 35 U.S.C. §271.
[5] 35 U.S.C. §132 provides in part “No amendment shall introduce new matter into the disclosure of the invention.”