Patent Overview

Patent Overview

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Patents have been around for a long time.  In fact, the term patent comes from a Latin term “litterae patentes” meaning an open letter, which referred to medieval monarchs conferring rights and privileges.^[1]“The History of Patents,” Intellectual Property & Science, Thomson Reuters, available at http://ip-science.thomsonreuters.com/support/patents/patinf/patentfaqs/history/.   Additionally, although no one country is known to be the birthplace of patents, Italy is known to have at least created a system to protect Venetian glass-blowers against other local workers.^[2]Id.   In the United States, the first patent was granted to Mr. Samuel Winslow in 1641 for a new process of making salt by the Massachusetts General Court.^[3]“The Story of the United States patent and trademark office,” Department of Commerce/Patent & Trademark Office, U.S. Government Printing Office, p. v. (1981)   

Many differences exist between older and more modern patents.  For example, older patents tend to block all of the text together into one body without defining the sections.  Nonetheless, many of the elements of older patents are found in modern patents, including one or more drawings, a brief description of the drawings, background to the invention including the objectives of the invention, a detailed description of the invention, and one or more claims.  You will also notice with older patents that the patent itself was used as a testamentary document, as evidenced by the signature of two witnesses.

Rules, formats, and the nitty-gritty details regarding patent prosecution are found in the Manual of Patent Examining Procedure (M.P.E.P.).^[4]Rather than carrying around the 1000+ page manual, I recommend downloading the digital version or accessing the online version, available at http://www.uspto.gov/web/offices/pac/M.P.E.P. /index.html.   To become a registered patent practitioner (e.g. agent, attorney, etc.), one must pass the patent bar exam, which tests heavily the content of the M.P.E.P.  We will refer to the M.P.E.P. in subsequent chapters in regards to coming up with effective strategies to use in prosecuting patents.

The M.P.E.P. indicates that a patent application must include: “(A) a specification as prescribed by section 112 of this title; (B) a drawing as prescribed by section 113 of this title; and (C) an oath by the applicant as prescribed by section 115 of this title.”^[5]M.P.E.P. § 601.   Section 112 of 35 U.S.C., referenced by the M.P.E.P. indicates that:

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.

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.^[6]35 U.S.C. § 112.

Additionally, it is worth noting that although much may be contained in a patent specification, the extent of the protection is dictated by the bounds of the claims.

As shown, the boundaries of the claims must be contained within the bounds of the specification.  Although many other embodiments (e.g. other rocks, etc.) may be disclosed within the specification, the claims may cover just one embodiment within the specification.  For this reason, one specification may be the basis for multiple claim sets (e.g. in multiple applications, etc.).  Note also that I did not indicate that the specification may include multiple inventions, for the specification should be targeted to only one invention.  Nonetheless, more than one embodiment or application of the invention may be disclosed in the application as long as it is related in some manner to the invention.