The Patent Specification
What Are Its Requirements?
You are already aware that the patent specification is the body of
the patent that includes all of the background, summary, detailed description
of your invention and the claims. What you may not know about is the peculiar
set of rules that define what should and should not be in the specification.
These rules are spelled out in a rather short section of the
patent rules at 35 U.S.C. § 112 (Patent Specification). When you read them they
sound rather straightforward (for something written by congress) but like all
laws the history of case law has clarified and redefined what almost every
sentence really means. Your patent practitioner is the one who has to deal with
the patent specification but you should understand the boundary conditions
he/she is operating under. So we will spend a little time here exploring this
35 U.S.C. § 112
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 inventor
or a joint inventor regards as his invention.
A claim may be written in independent or, if the nature of the
case admits, in dependent or multiple dependent form.
Subject to subsection (e), a claim in dependent form shall contain
a reference to a claim previously set forth and then specify a further
limitation of the subject matter claimed. A claim in dependent form shall be
construed to incorporate by reference all the limitations of the claim to which
A claim in multiple dependent form shall contain a reference, in
the alternative only, to more than one claim previously set forth and then
specify a further limitation of the subject matter claimed. A multiple
dependent claim shall not serve as a basis for any other multiple dependent
claim. A multiple dependent claim shall be construed to incorporate by
reference all the limitations of the particular claim in relation to which it
is being considered.
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the recital of
structure, material, or acts in support thereof, and such claim shall be
construed to cover the corresponding structure, material, or acts described in
the specification and equivalents thereof.
That First Paragraph
mentioned, The last five paragraphs are the rules for claims - the first short
paragraph, contains the rules for the written description. But don't let that
short first paragraph fool you - it is loaded with little traps for the unwary
- and many practitioners have been caught in those traps. So we will begin in
the next article by exploring this little paragraph - particularly that first
little phrase - the Written Description.