obvIPat - Obviously Patentable

The blog for inventors, in-house counsel, & entrepreneurs.

Not Your Father’s Patent Application, Part 2

by Orlando Lopez

We continue in this posting, the discussion of the differences between today’s patent application and the patent applications of 10-15 years ago. A significant change is the construction of the summary.

Typically, the summary section of today’s patent application consists mainly of a rewrite of the independent claims.  This change in the patent applications is a result of the Federal Circuit decisions that give special importance in interpreting claims to sections of the patent application that describe the invention as a whole – the summary and the abstract (see for example, CR Bard et al. v. U.S. Surgical Corp., 388F. 3d 858 (Fed. Cir. 2004)).  However, the detailed description section should include a detailed description of one or more embodiments of the invention and not only a recital of the claims.

So in a well-written application, the fear that there are lurking problems (“hidden bombs” as one commentator called them) should be unfounded because, in addition to the recital of the claims in the summary, the detailed description must have enough details so that one skilled in the art (a term that patent attorneys use to describe one that is knowledgeable in the technical area of the patent application) would recognize the invention and would be able to, with some experimentation, re-create the invention (patent attorneys refer to these requirements as the written description and enablement requirements, as detailed in the Patent Statute).

So, although today’s patent applications read differently, they still meet all the requirements of a patent application.  Many applicants and inventors reply to this argument by stating that they do not intend to litigate their patents since they cannot afford to litigate. We will discuss this topic in future postings.


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