Introduction

USPTO rules require that every non-provisional patent application include an Abstract.  This Abstract is a concise summary of the invention disclosed in the application.  This summary enables the Office (and the public) to quickly determine the nature of the disclosed subject matter.

Although only a summary, it is prudent to draft an Abstract with care. The Abstract is a part of a written disclosure of the application and Federal Courts may properly rely on an Abstract to construe claims.  For this reason, it is beneficial to draft an Abstract at least as broadly as the broadest independent claim.

The many requirements for a patent Abstract are set forth in 37 CFR 1.72(b) and MPEP § 608.01(b). These respective sections of the Rules and the Manual of Patent Examination Procedure should be an Applicant’s primary resources.  The USPTO may properly object to any Abstract that does not satisfy all of the requirements and may require correction by the applicant.  The following are the five most common reasons the Office will object to an Abstract:

1.  The Abstract is not on a separate sheet
A proper Abstract commences on a separate sheet that does not include either other parts of the application or any other material.  Preferably, an Abstract is presented after the claims, which preferably follow the Specification.

2.  The Abstract is too long/too short
A proper Abstract is between 50 and 150 words and does not exceed 15 lines of text.

3.  The Abstract includes improper language
A proper Abstract avoids the legal phraseology commonly found in patent claims, such as “means” and “said.”  Instead, the language used should encompass that which is new and be clear and concise.  Thus, a proper Abstract also avoids phrases that can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc.

Remember – the content of an Abstract should enable a reader, regardless of his or her degree of familiarity with patents, to determine quickly whether there is a need to consult the full patent text.

4.  The Abstract is non-narrative/non-descriptive
A proper Abstract neither discusses purported merits or speculative applications of a disclosed invention nor does it compare the invention with prior art. Rather, a proper Abstract efficiently describes the disclosed subject matter and encompasses what is believed to be novel. Accordingly, extensive mechanical and design details of an apparatus should not be included.

5.  The Abstract is more than one paragraph
A proper Abstract is a single paragraph within the range of 50 to 150 words.

Abstract Drafting Suggestions

1.  An Abstract is part of the written disclosure of an application and can be used to construe (and likely limit) the claims in future litigation.  So, when drafting this portion of an application always keep in mind Miranda – “anything you say can and will be used against you in a court of law.”

2.  A common drafting strategy is to incorporate the language of the broadest independent claim, without the “patentese” (pure claim terminology).  This strategy tends to produce an Abstract that is both adequately broad and that avoids characterizations of the invention.  Moreover, this strategy is efficient because it leverages the care and effort used to draft the independent claim on which the Abstract is based.

3.  When an invention is of a basic nature, the Abstract may be directed to the entire disclosure.

4.  When an invention is an improvement of an old apparatus, process, product, or composition, the Abstract preferably focuses on the improvement.

5.  When an invention is in the nature of compounds and compositions, the abstract preferably sets forth both a process for making and a use of the compound or composition.

6.  Where applicable, an Abstract should include the following:

(1) if the invention is a machine or apparatus, its organization and operation;
(2) if the invention is an article of manufacture, its method of making;
(3) if the invention is a chemical compound, its identity (i.e., the general nature of the compound, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas”) and use;
(4) if the invention is a mixture, its ingredients; and
(5) if the invention is a process, its operations or steps.

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

This is the first of a two part series on maximizing patent value by minimizing prosecution time before the U.S. Patent Office.

Introduction

Under U.S. Patent Laws, a patent is enforceable from the date the application issues up to 20 years after the application was filed. It is during this so-called “patent term” that the majority of the reward for an applicant’s investment in prosecuting the application is realized. The most direct way to maximize this patent term is to minimize the prosecution time of the application to earn the earliest possible issue date. This series will discuss several strategies to consider to achieve this goal.

Draft the Application to Appeal to Examiner’s Discretion

An often overlooked factor in patent prosecution is that examiners have some discretion as to the order in which they choose to “pick up” and examine applications from their docket. Examiners are supposed to take up applications in a specified hierarchy specified by Section 708 of the Manual of Patent Examining Procedure (MPEP), which generally specifies that applications are to be examined in the order of their effective filing dates. The PTO, however, ensures compliance with this requirement by monitoring whether the oldest application on each docket is acted upon every other week (known as a by-week). As a result, after an examiner acts on the oldest case on his/her docket, that examiner has some discretion to “cherry pick” applications from their docket thereafter.

Sometimes Examiners Need to Find an Easy Application to Examine

Examiners are under ever increasing production pressures and sometimes they need an easier to examine application to boost their production. For example, consider that an examiner is responsible for ensuring that the application satisfies the Patent Laws and Rules, understanding the claimed invention and conducting a thorough search of the art, and allowing only patentable subject matter. Also, examiners are required to meet certain production quotas measured every by-week. Thus, when an examiner needs to make up ground to meet his/her production quota at the end of a by-week, they tend to look for applications from their docket that will require easier-to-generate first Office Actions, so that they can increase their production. There is, therefore, an opportunity to obtain earlier examination of an application by drafting the application in a manner that makes the application “attractive” to an examiner, when the examiner needs a quick production boost.

How to Draft an “Attractive” Application

What exactly makes an application “attractive” to an examiner is impossible to answer with specificity because, as the saying goes, “beauty is in the eye of the beholder.” As a general rule, however, easier to examine applications tend to be more attractive to examiners. And, easier to examine applications share a common trait; they are drafted with the examiner’s job in mind. So, these applications are written clearly and efficiently, and avoid unnecessarily complex sentence structures. Also, these applications include easy to understand figures that correspond well to the written description, are well-labeled, and illustrate every claim feature. These applications tend to require an art search of a relatively reasonable scope by keeping the number of claims to a minimum, especially the number of independent claims. Also, these applications use reasonable claim language that accurately and specifically identifies the claimed invention. Sometimes, these applications even describe, at the beginning or the end of the detailed description portion of the written description, some of the subject matter an applicant believes is patentable. All of these traits tend to make an examiner’s job easier by: (1) minimizing the time an examiner must spend to understand the invention to be examined; (2) minimizing and focusing the scope of the search for prior art; and (3) minimizing the need to identify objectional informalities (e.g., inconsistencies between the written description and the drawings, claim features not shown in the drawings).

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

© 2007, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com