Patent Article by William S. Ramsey, P.C.

October 2009

William S. Ramsey, P.C.Columbia Maryland
Registered Patent Attorney
410-740-2225 or email:
Not Legal Advice.

Table of Contents



No Common Law Patent.

Only Inventor May Obtain a Patent.

Role of the Patent Bar.

Duty to Disclose.

Presumption of Validity.

Patent Contract.


What a Patent Does.

What a Patent Does Not Do.

Types of Patents.


Inventions That Can Be Patented.

Examples of Patentable Inventions.

Nonpatentable Inventions.


Conditions for Patentability; Novelty and the
Loss of Right to Patent.

Conditions for Patentability: Non-obvious Subject Matter.






Steps to Obtaining a Patent.


Foreign Patents.

Patent Promoters.


Cover Page.



Appendix A: Checklist For A Client Who Has An Invention.

Appendix B: U.S. Pat. No. 5,167,504.                                                           


            This article will provide for a reasoned response when a client says "I have an invention."  The meaning of a patent and requirements for obtaining a patent will be covered.  Finally, the features of an issued patent will be discussed and a checklist provided for assisting a client-inventor.           



A.  No Common Law Patent.

              The only way to obtain patent protection for an invention is through the formalities and limitations under the U.S. statutes through the Patent and Trademark Office (PTO).  The federal patent laws preempt state statutes providing similar protection.  Hunter Douglas Inc. v. Harmonic Design Inc. F.Supp. 1249 (Cal. 1997).  Trade secret protection useful until the secret is revealed, generally by selling the invention to the public or using the invention in public.  Also, the patent law favors disclosure; a person practicing a trade secret may become a patent infringer if another person independently discovers the secret and obtains a patent on it.


B.  Only Inventor May Obtain A Patent.

            U.S. statutes require that the inventor sign the patent application (unless the inventor is dead or otherwise unavailable).  35 U.S.C. 115.  Patent validity requires all coinventors sign the application.  35 U.S.C. 116.  Foreign countries allow either the inventor or the assignee of the invention to file for a patent.  

            The inventor or inventors own the patent unless other arrangements have been made.  As a practical matter, this means that all corporation clients should have agreements with their employees and contractors for the assignment of inventions made in the course of their employment to the company.  Such assignments should be (but are not required to be) filed at the PTO under a "race notice" system.  35 U.S.C. 261.  All assignments concerning a patent or patent application are kept secret until the patent issues, when the assignments become available to the public.

            Unfortunately, the assignment recordal system at the PTO is not as useful as it could be.  Recording an assignment at the PTO preserves the rights of the assignee against another assignment from the assignor.  An assignee has three months to file the

assignment for the filing to be effective, however, and the PTO requires about three months to make the recorded assignment available to the public.  Therefore a review of the assignments discloses the ownership status of the patent as it existed about six months before the review.

C.  Role of the Patent Bar.

            Only a member of the Patent Bar may represent an inventor before the PTO.  35 U.S.C. 33.  The Patent Bar consists of engineers or scientists who have passed a test on patent law administered by the PTO.  If the engineer or scientist also is an attorney, he or she is called a Registered Patent Attorney.  If not an attorney, he or she is termed a Registered Patent Agent.  In this article all members of the Patent Bar will be called "patent lawyers" while acknowledging that patent agents are not attorneys. 

            The inventor may also file a patent application as his or her own representative (pro se).  37 C.F.R. 1.31.  If patentable matter appears to be disclosed in a pro se application but the applicant is not familiar with the prosecution of a patent application, the Examiner may suggest obtaining a patent lawyer.  Manual of Patent Examining Procedure Sec. 401.   If the inventor persists in prosecuting his or her own application, and the disclosure is adequate, the Examiner may assist by writing and allowing a claim, allowing a patent to issue.  Unfortunately for the pro se inventor, such Examiner written claims invariably are very narrow. 

            The expertise and skill of the patent lawyer is directed toward sufficient disclosure of the invention and writing and prosecuting the claims.  About half the time spent by the patent lawyer in writing the application is dedicated to drafting the claims.  Patent application prosecution involves amending the application in response to rejections and objections raised by the Examiner.  Virtually all of patent prosecution is directed to the claims.  It is not surprising, therefore, that the pro se applicant generally does not obtain the breath of claims justified by his or her invention.        

D.  Duty to Disclose.

            Every person involved with a patent application (inventor, assignee, patent lawyer) has a positive duty to disclose to the PTO any information relevant to the examination of the application, under penalty of invalidity of the issued patent.  Since the patenting procedure is ex parte the patent applicant is obligated to present both sides of the case for patentability.  Failure to disclose may form the basis of a charge of fraud on the patent office. 

            As a practical matter, this usually involves submission of copies of the prior art discovered in a patent search or cited in the patent application.   A copy of each publication is sent to the PTO with an Information Disclosure Statement (IDS).  37 C.F.R. 1.98.   

            This requirement may become substantial, as every patent lawyer tends to err on the side of excessive filing rather than take the chance of failing to file a reference later found to be relevant.  I recently filed an application along with about 1000 pages of prior art including a 300 page Ph.D. thesis.  Companies with a long history of patenting in specific areas, such as pharmaceutical companies, often file literally hundreds of patents and publications with each patent application. 

            This duty to disclose may appear to be in conflict with an attorney's duty of loyalty to his or her client. How can the duty of loyalty be met when an attorney is giving the PTO information which may cause rejection of his or her client's patent application?   This apparent paradox is resolved by the concept that the patent attorney's duty is to obtain a valid patent for his or her client. 

            The duty to disclose seems to be unique to the U.S. patent system.  I once lectured on the subject of fraud to an audience of visiting Chinese patent attorneys and judges.  My discussion on the duty to disclose caused considerable hilarity and general disbelief.  After some frustration (I thought it had to do with translation), I finally had to state that, no matter what they thought of the duty to disclose, compliance with it was necessary if they wanted to obtain valid U.S. patents for their clients.   

E.  Presumption of Validity.


            There is a statutory presumption of validity of a patent.  35 U.S.C. 282.  

            Since a patent is a product of the government, a person accused of infringement who wishes to show a patent is invalid has the burden of showing invalidity by clear and convincing evidence. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802, F.2d 1367 (Fed. Cir. 1986).

            Federal circuit courts have exclusive jurisdiction in patent infringement cases.  The three statutory defenses may be paraphrased, "I didn't do it", "It doesn't matter if I did it because I had a license to do it", and "It doesn't matter if I did it because the patent is invalid."  35 U.S.C. 282. 

            The Court of Appeals for the Federal Circuit in Washington has exclusive jurisdiction to hear appeals from district court decisions in patent cases.  The use of a single appellant court has the very desirable effect of insuring uniformity in patent law throughout the country.    

            Patent litigation is beyond the scope of this article.  It will suffice to say that patent infringement trials are said to be second only to antitrust trials in costs.  Only the largest corporations can afford a full-blown patent dispute.  As a consequence, most patent infringement issues are settled before a suit even is filed.        

F.  Patent Contract.

            A patent may be thought of as a contract with society.  In exchange for disclosure of the secrets of the invention, the inventor receives a monopoly for practice of the invention for a limited time.  The Constitution in Art. 1, Sec. 8 enables Congress to promote the progress of science and useful arts through granting to inventors for limited times the exclusive right to their discoveries.  This provision was not in recognition of a natural right, but rather an experiment in social engineering - the economic benefit of a monopoly was thought to stimulate inventing.  Does it work?  Most people involved with patents would agree the system works, although could work better.    


            A.  What a Patent Does.

            A patent allows the owner to sue in federal district court whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent.  35 U.S.C. 271(a).

            B.  What a Patent Does Not Do.

            A patent is not a license to the patent owner to make, use, etc. any invention in the United States.  This is because the making of a product, for example, may be covered by several patents.  There may be a patent on the product obtained by a first inventor.  A second later different inventor may invent an improvement to the product and be granted a patent on the improvement.  The first inventor cannot practice the improvement without a license from the second inventor.  The second inventor cannot practice the improvement without infringing the patent of the first inventor.  This situation often is resolved by a cross-license between the inventors.

            C.  Types of Patents.


                        1.  Utility patent.  The most common type, and what people generally think of as a "patent".  It includes a detailed description of the invention and the method of making and using it, concluded by at least one claim which describes the metes and bounds of the invention.  U.S. Patent No. 5,167,504 is attached as Appendix B and the elements of the patent are discussed in section VIII below.         

                        2.  Design patent.  A patent which claims the "ornamental design" for an article of manufacture.  The single claim is not expressed in words but in the form of drawings.  35 U.S.C. 171. 

            Design patents are very valuable under the right circumstances.  For example, a design patent for the shape of the Black and Decker DUSTBUSTER® vacuum cleaner has been very valuable in suppressing infringers. 

            On the other hand, the vast majority of design patents are worthless.  They are issued to individual inventors whose inventions do not qualify for utility patents.  These inventors, however, have been convinced by patent promoters that their inventions have commercial value.  They mistakenly believe they can reap this value through a design patent.

                          3.  Plant patent.  These patents cover the asexual reproduction of distinct and new varieties of plants.  35 U.S.C. 161. 

            The issued patents generally include color pictures of the patented plant.  New variety of plants also may be claimed as "compositions of matter" in utility patents (see Sec. IV below).

                        4.  Provisional patent applications.  A provisional patent application is not a patent, but is a patent application which has no claims, is not examined at the PTO, and expires within one year of the application date, unless it is cited as priority in a utility patent application.  35 U.S.C. 111. 

            It is useful for preserving foreign patent rights when the inventor is committed to disclosing the invention before a utility patent application can be filed.  It seems that university professors only approach a patent lawyer two weeks before a scheduled presentation of the invention at a scientific conference.  Under these circumstances a provisional patent application is clearly indicated. 

            The primary weakness of a provisional patent strategy is that it provides priority only to the degree that the disclosure is adequate enough to meet the 35 U.S.C. 112 requirements (see section VI. C. below).  In addition, foreign patent applications must be filed within one year of the earliest filed application, which means, if a provisional application is used, both the foreign and U.S. utility patent a have to be filed and the fees paid on the same day (more on foreign filings in section VII. C. below). 


            A.  Inventions That Can Be Patented.           

            Whoever invents or discovers any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor,....  35 U.S.C. 101.  

            Patentability extends to "Anything under the sun that is made by man".  Diamond v. Chakrabarty 447 U.S. 303 (1980).

            B.  Examples of Patentable Inventions.

            In other words, patentable inventions include:

                        1.  Process or improvement.  These inventions include chemical processes, computer software, and methods of doing business.  Methods of doing business patents are probably the most intense area of patenting at the moment.  The patentability of these processes was recognized in a case which confirmed the validity of U.S. Pat. No. 5,193,056.  This patent covers a method of organizing and reporting on a partnership portfolio and partner fund.  State Street Bank & Trust Co. v. Signature Financial Group Inc., 149 F.3d 1368 (Fed. Cir. 1998). 

            A recent en banc decision of the Court of Appeals for the Federal Circuit narrowed the allowable range of method claims, with potential adverse effect on many method of doing business patents and patent applications.  In re Bilski, 545 F.3d (Fed. Cir. 2008).

                        2.  Machine or improvement.  These inventions include vacuum cleaners, wrenches, and televisions.

                        3.  Manufacture or improvement.  These inventions include rugs, CD's containing computer programs, and anything changed by human intervention.           

                        4.  Composition of matter or improvement.  These inventions include drugs, genetic-engineered microorganisms and animals, and human genes.

            C.  Nonpatentable Inventions.

               A "force of nature" appears to be the primary remaining category of nonstatutory inventions which cannot be patented.  These are basic scientific discoveries not incorporated in useful devices or processes.  For example, Einstein's law relating energy and matter presumably could not have been patented; but a nuclear reactor which generated electricity could.  Boyle's law relating gas volume and pressure presumably would have been unpatentable as a force of nature; but a scientific instrument whose operation is based on Boyle's law would have been patentable.  The category on nonstatutory inventions is flexible; it is likely that additional nonstatutory categories will be discovered.    


            A.  Conditions for Patentability; Novelty and the Loss of Right to Patent. 

            A person shall be entitled to a patent unless --


            1.  Before the applicant invented the invention:

                        a. the invention was known or used by others in this country, or

                        b.  patented or described in a printed publication in this or a foreign country. 35 U.S.C. 102(a).

            2.  More than one year prior to filing the application:

                        a.  the invention was patented or described in a printed publication in this or a foreign country, or

                         b.  the invention was in public use or sale in this country.  35 USC 102(b).

            3.  Abandonment.  The inventor has abandoned the invention.  35 USC 102(c).

            4.  Foreign patenting. The inventor has patented the invention in a foreign country on a foreign application filed more than one year before the U.S. application was filed. 35 U.S.C. 102(d).

            5.  Foreign patent application.  The invention was described in a published patent application filed in the U.S. before the applicant invented the invention, or

the invention was described in a granted patent filed by another in the U.S. before invention by the applicant if the international application was published in             English. 

35 U.S.C. 102(e)

            6.  Noninvention.  The applicant did not himself invent the subject matter sought to be patented.  U.S.C. 102(f).

            7.  Second to invent.   Is not the first to invent as determined by an interference proceeding. 

            Necessary terms of art - 

The "inventor" is the person who created the conception of the total invention.

"Reduction to practice" is either the construction of a working prototype of the invention or the filing of a patent application.

            An interference proceeding determine which of two inventors is the first inventor.  Of two applicants, the first to file obtains the patent unless the second to file can prove the he was first to invent and was diligent in reducing the invention to practice.  35 U.S.C. 102(g). 

            As a practical matter, the most important 35 USC 102 conditions are (a) described in a printed publication in this or a foreign country before invention by applicant, (b) described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to filing of the application. 

            Some conditions are rarely applicable, such as 35 U.S.C. 102(f), the inventor has abandoned the invention.  Abandonment requires an express act by the inventor, such as ridiculing another's attempt to make the invention.  Delay alone does not result in abandonment.

            Interferences are declared in approximately 2% of applications.  Interferences are settled by a trial before the Board of Patent Appeals and Interferences.  The vast majority of interferences are settled between the parties before trial; probably in part because a case before the Board is not heard for about 5 years.

B.  Conditions for Patentability:  Non-obvious Subject Matter.

                An invention is unpatentable if, while not identically disclosed or described as in 35 U.S.C. 102, it has differences such that the invention as a whole would be obvious at the time the invention was made to a person with ordinary skill in the art to which the subject matter pertains.  35 U.S.C. 103(a).

            This is the most common rejection made by PTO Examiners.  Two or more prior art references are combined in such a way as to disclose the invention as claimed, and the combination is asserted to be obvious.  The most effective way of overcoming such rejections requires amending the claims by making them narrower and avoiding the prior art, or showing the combination in the application has unexpected valuable properties. 

            Patentability is not affected by the manner in which the invention was made.  35 USC 103(a).  This provision eliminates the earlier "stroke of genius" aspect of patenting.  It makes no difference if the invention is made by a chemist after years of laboratory research, or by that chemist in the course of an especially good dream.

C.  Specification.

            The term "specification" as used here means the entire written patent application.


            The specification must contain a written description of the invention and the process of making and using it in such clear, concise and exact terms to enable any person skilled in the art to make and use it. 

            The specification also shall include the best mode of the invention known by the inventor at the time the invention was made. 

            There must be one or more claims which particularly point out and distinctly claims the invention.  35 U.S.C. 112.    

            This is interpreted as requiring the specification include at least one specific working example of the invention.   Note.  Examples (also termed "embodiments") given in the specification are just that, one or more specific examples of the invention.  The invention when properly claimed will include claims which are broader than any specific example presented in the specification. 

D.  Drawings.

            If necessary to the understanding of the invention, one or more drawings must

be submitted.  35 U.S.C.  113. 

            When drawings are appropriate, the PTO generally requires that every element mentioned in a claim be illustrated in a drawing.  A common practice is to file an application with the patent lawyer's hand drawings, and to file formal machine-made drawings at a later time.  Today many clients make their own formal drawings using computer-aided programs.

E.  Models.

            The PTO Examiner has the option to require submission of a working model or specimen (for chemical inventions).  35 U.S.C. 114. 

            In practice, the PTO requires working models only when the invention is thought to be a (unpatentable) perpetual-motion machine.

F.  Formalities.

            The application must include a declaration signed by the inventor or all coinventors, with provisions for filing in the case of the death or refusal to file of an inventor or coinventor.  35 U.S.C. 115-118.  

            Government fees must be paid. 35 U.S.C. 41.


A.  Steps to Obtaining a Patent

            1.  Preliminary patentability search.            Although not required by the PTO, I always strongly recommend obtaining a search.  I prefer to search personally at the Public Search Room at the PTO buildings in Crystal City, Alexandria, VA.  The search is done using the same computer database used by the Examiners.  It lets one review patents at a rate of about 1 per second.  I then select the 6 - 10 or so patents and published patent applications closest to the invention (termed "prior art"), obtain copies, and analyze the patentability of the invention in light of the closest discovered prior art.   My written report to the client includes copies of the prior art and my opinion about his or her invention.  Of course, sometimes the report is solidly negative.  In most cases, I conclude the combination of elements in the invention is patentable.  I end the report with a claim of the breath that probably can be allowed by the PTO, and, of course, information on the costs of proceeding should the inventor take the next step.

            The search report assists the inventor in deciding whether to proceed with a patent application.  In addition, it is very useful in drafting the patent application and claims.  It is unethical and futile to try to obtain a claim that is invalid. 

            2.  Drafting the application. The application is drafted in an interactive process between the patent lawyer and inventor.  Additional examples of the invention are always discovered during this step and included in the specification and claims.  The drafter strives to disclose and claim the invention in its broadest aspects.  About half the time required for drafting is spent on the claims.

            3.  Filing the application.  The application, along with various formalities including a filing fee, is filed at the PTO.  This establishes the application's priority date.  After that date the inventor can feel free to disclose the invention without effect on the prosecution of the case.


            4.  Prosecuting the application.  There is a long period (up to 1 1/2 years in busy arts) after filing while the application works it's way to the top of the stack on the Examiner's desk and an Office Action is sent.  The Office Action inevitably rejects most or all of the claims.  In most cases the Examiner is correct.  He or she is expert in the area of the invention and probably has discovered prior art (almost always patents or published patent applications) which are covered by the claims in the application.  A wide variety of rejections and objections also may be based on some formal deficiencies in the application.  The response, in the form of an amendment, generally amends the claims or the specification, generally making the claims narrower to avoid the prior art.   If the Examiner is wrong or doesn't understand some aspect of the invention we argue the point, or even visit the PTO and interview the Examiner to present a more convincing explanation.    More than one Office Action and amendment may be necessary. In nearly all cases claims acceptable to both the inventor and PTO can be developed and a Notice of Allowability is issued.  The issue fee is paid and the patent issues.

            It is important to note that no additional disclosure of the invention may be added to the application after it is filed, although the claims may be amended in any way.  It is very common for the inventor to make additional invention after filing.  This may be claimed by filing a new application (continuation-in-part) consisting of the original application plus the new matter and claims.  This must be filed while the original (parent) application is pending, that is, before issuance or abandonment.

            5.  Post-Issuance Matters.  The duty of disclosure ends with the issuance of the patent, and infringers may be sued on that day.  Maintenance fees must be paid at 4, 8, and 12 years after the patent issues in order to keep it in force.

B.  Costs.


            A U.S. patent is the world's greatest bargain, as it protects the invention in the world's largest market at some of the lowest costs.  The government fees for most inventors total about $1,300 (filing fee $545 and issue fee $755).  The patent lawyer drafting fees vary by the size of the application; from about $6,000 to about $12,000 to the sky's the limit for extremely long human gene patent applications.  Each amendment involves a patent lawyer's fee of about $1,000 to $2,000, again depending on length. 

            Government maintenance fees are $490 at four years; $1,240 at eight years; and $2055 at 12 years

            All the above government fees assume the inventor or assignee is a Small Entity, that is, a business of fewer than 500 employees or a non-profit institution.  Fees are doubled for large entities.

C.  Foreign Patents.

            1.  Public disclosure.            The biggest difference between U.S. and the vast majority of  foreign country patent statutes is in the effect of public disclosure of the invention.  In the U.S. the application must be filed within one year of public disclosure (printed publication, public sale or use, etc).  In the vast majority of foreign countries any public disclosure before filing bars any filing.  If the client has not made a public disclosure, no disclosure should be made before the U.S. application is filed in order to protect the option of foreign filing.

            2.  Foreign filing procedure.

                        a.  Direct filing.  If only one or two foreign filings are desired, patent attorneys should be contacted in each country in time to allow translation if necessary and filing in the foreign country within one year of the U.S. filing.

                        b.  Patent Cooperative Treaty (PCT) filing.  PCT filing of the U.S. application within one year of the U.S. filing preserves patentability rights in the some 83 signatory countries for up to 30 months from the first filing date.  The point of PCT filing is to delay for up to 30 months the expensive foreign filings.  At that point filings must be made in each individual country where patent protection is desired.  The application then is examined in each country.  By that time the U.S. patent probably will have issued, and the claims in the applications in each foreign country should be amended to correspond to the issued U.S. claims.  At that point many foreign patent offices will say "If it's good enough for the U.S., it's good enough for us" and issue the patent.  A desirable tendency is to form cooperative groups of countries for common examination of applications.  The most useful group is the European Patent Office which will examine a single application for 13 European countries.  But at the conclusion of the examination there must be separate filings in each European country where protection is desired.

            3.  Foreign filing costs.  The PCT filing costs about $3,300 in government fees and $1,000 in patent lawyer fees.  Filing in individual countries is the black hole of patent prosecution, and involve foreign patent lawyer, translation, and government fees.  In addition, most foreign countries charge substantial maintenance fees for each year an application is filed.  It is not hard to end up spending $100,000 on foreign patents.

            4.  Foreign patenting trends.  Since the patent statutes are very similar in each country with a patent system, it would simply make sense to have a system whereby a single filing and examination would result in world-wide patent protection.  Don't count on it happening anytime soon.  The WTO is working on harmonizing patent statutes throughout the world, a necessary first step, but a single-filing is a long way off.                 

D.  Patent Promoters.

Attorneys can provide a real benefit to their clients by advising restraint in responding to the sales efforts of invention promoters.  Clients should carefully evaluate the details of the promotion contract.  Invention promotions are required to disclose to prospective clients the number of clients who have contracted with them and the number of such clients known to have more money through the promotion services than they paid for the services.  35 U.S.C. 297. 

In one disclosure I have seen the company had had 28,892 clients, of whom zero had made money.  I don't think this is unusual.  Before sending money to an invention promotion firm the client should check them out – the nonprofit United Inventors Association has an excellent site at; another good one is at  The Federal Trade Commission has a worthwhile brochure at


            U.S. Pat. 5,167,504  Bilingual Dictionary is attached as Appendix B.  A discussion of the elements of the patent follows.

            A.  Cover Page. 

             The significance of the numbers in the square brackets is not apparent: patent lawyers generally attribute such oddities to misguided attempts to conform to international practice. 

            [19]  United States Patent.  Everything needs a title.

            [11]  Patent Number.  Patents are numbered sequentially.  The patent number is the basic identifier for the patent. 

            [45]  Date of Patent.  The day (always a Tuesday) the patent was issued.  Still important for some purposes, but not for duration of  patent life.

            [54]  Title of Invention. 

            [76]  Inventor's name and address. 

            [73]  Assignee.  None in this case, but indicates the owner if the application was assigned at the time of filing.  Of course, the application or the patent may be subsequently assigned and that will not appear on the cover page.  Assignment records are open to the public after the patent issues.

            [21]  Application number.  Here important information is missing.  Applications are numbered in series of 1,000,000 applications.  The series number for this case is series 7 because the application was filed between 1987 and 1992.  Here the complete application number is 07/763,416.

            [22]  Filing date.  This is the priority date and is important because the patent life is 20 years from the earliest filing date. 

            [60]  Related U.S. Application Data.  None in this case, but it is possible to file additional applications based on the first application and enjoying the priority date of the earlier application.  It is not unusual for several patents to issue based on one initial application.  No matter how many related applications are involved, however, each will expire 20 years from the filing date of the earliest application.

            [51]  International Classification.  This one has a superscript "5".  I have no idea what that means.  I've never used the international classification.

            [52]  U.S. Classification.  Each patent is classified by class/subclass and most are classified in several subclasses.  The vast numbers of classes and subclasses give the strength to the U.S. patent system.  It is the largest collection of technical information in the world. 

            [58]  Field of Search.  These are the class/subclasses searched by the Examiner during the examination. 

            [56]  References Cited.  The references (generally but not necessarily patents) reviewed by the Examiner during the examination of the application.  In essence, the Examiner has judged that the patent should issue despite these related prior disclosures.  This list becomes important when questioning the validity of a patent in an infringement action.  It's harder to assert that a patent is invalid in light of a previous disclosure if the Examiner was aware of that disclosure and nevertheless allowed the patent to issue. 

            Primary Examiner.   The supervisor Examiner who must sign off on any office action.

            Assistant Examiner. The Examiner who does the work.  These names are not of much practical value as an Examiner has quasi-judicial status.  Examiners may not be subpoenaed or questioned regarding their judgments in subsequent actions.

            Attorney, Agent or Firm.  The patent lawyer who represented the inventor.  Obviously important information. 

              [57]  Abstract.  A "plain English" summary of the invention. 

            If there are one or more drawings, a reduced version of the most representative figure is included at the bottom of the cover page.

            B.  Figures.

            Each element of the claims must be shown in the figures.  Here there are 6 Figs.  Each shows one embodiment of the invention, a bilingual dictionary with typographic elements which emphasize cognates and related words.

            C.  Specification. 

            The purpose of the specification, other than the requirements of IV. C. above, is to teach a layman (judge and jury) the details of the invention and the extent of its valuable contribution to technology. 


                        1.  Field of the Invention.  Merely a paraphrase of the description in the patent classifications.

                        2.  Description of Related Art.  The inventor's first opportunity to sell the invention.  The invention's contribution to western civilization is first described in glowing terms.  Then each known item of prior art (discovered in a patentability search) is discussed in a way which distinguishes the present invention from the prior art.  Finally, the advantages of the present invention are recited.

            Summary of the Invention.

            Again the advantages and distinctiveness of the invention is emphasized.  At the end the "objectives" are briefly described.  The purpose is to let the layman know what is going on with the invention.

            Brief Description of the Drawings.

            That's what it is. 

            Description of the Preferred Embodiments.

            Here at least one example (embodiment) is described in enough detail to enable any person skilled in the art of the invention to make and use the invention.  The written description refers to the drawings.


            The claims describe the metes and bounds of the invention.  Note that claim 1 is broader than any of the embodiments detailed in the specification.   That is an important goal of a patent lawyer.  Here claim 1 is the independent claim.  All of the remaining 17 claims are dependent on claim 1, that is, the dependent claims contain all the limitations of claim 1 and each dependent claim adds additional limitations.  The dependent claims basically cover the specific examples in the specification. 

            There is a good reason for having both at least one broad independent claim and at least one dependent claim.  Suppose years from now the patent owner sues an infringer.  In order to show the patent is invalid the infringer does an extensive prior art search.  An article published in 1920 in Russian is discovered which discloses a dictionary which falls within claim 1.  Claim 1 now is invalid, although neither Mr. Mann, his patent lawyer, nor the Examiner was aware of the article's existence until it was presented in court.  It is possible; however, that one or more of the dependent claims was not disclosed by the article.  These claims remain valid and provide the basis for the infringement suit.

Appendix A.

Checklist For A Client Who Has An Invention.

            1.  Has the invention been publicly disclosed through written publication?

            2.  Has the invention been used in public or sold or offered for sale in the U.S.?  If so, when?

            3.  Are you the inventor?

            4.  Are there any other inventors?

            5.  Who owns the invention?  Is it related to your job?

            6.  Have you had any dealings with invention promotion corporations?

            Patent lawyers are listed by zip codes at and through bar societies.

Appendix B.

(U.S. patent #5,167,5040)
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