608.01(a) Arrangement of Application
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| 608.01(a) |
(a) The elements of the application, if applicable, should appear in the following order:
(1) Utility application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see § 1.76).
(4) Specification.
(5) Drawings.
(6) The inventor’s oath or declaration.
(b) The specification should include the following sections in order:
(1) Title of the invention, which may be accompanied by an introductory portion stating the name, citizenship, and residence of the applicant (unless included in the application data sheet).
(2) Cross-reference to related applications.
(3) Statement regarding federally sponsored research or development.
(4) The names of the parties to a joint research agreement.
(5) Reference to a “Sequence Listing,” a table, or a computer program listing appendix submitted on a compact disc and an incorporation-by-reference of the material on the compact disc (see § 1.52(e)(5)). The total number of compact discs including duplicates and the files on each compact disc shall be specified.
(6) Statement regarding prior disclosures by the inventor or a joint inventor.
(7) Background of the invention.
(8) Brief summary of the invention.
(9) Brief description of the several views of the drawing.n.
(10) Detailed description of the invention.
(11) A claim or claims.
(12) Abstract of the disclosure.
(13) “Sequence Listing,” if on paper (see §§ 1.821 through 1.825).
(c) The text of the specification sections defined in paragraphs (b)(1) through (b)(12) of this section, if applicable, should be preceded by a section heading in uppercase and without underlining or bold type.
The order should always be what is listed above:
- However, in the case of provisional applications, the claims and any other non-applicable material may be skipped; note that the general order should be the same
For applications filed on or after September 16, 2012, if there is a discrepancy between the information submitted in an application data sheet and the information submitted elsewhere in the application, the application data sheet will control except for the naming of inventors.
For applications filed before September 16, 2012, if there is a discrepancy between the information submitted in an application data sheet and the information submitted elsewhere in the application, the application data sheet will control except for the naming of the inventors and the citizenship of the inventors.
608.01(b) Abstract of the Disclosure
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| 608.01(b) |
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(b) A brief abstract of the technical disclosure in the specification must commence on a separate sheet, preferably following the claims, under the heading “Abstract” or “Abstract of the Disclosure.” The sheet or sheets presenting the abstract may not include other parts of the application or other material. The abstract must be as concise as the disclosure permits, preferably not exceeding 150 words in length. The purpose of the abstract is to enable the Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.
The title and abstract:
- should be provided so a reader can quickly determine what was invented
- should be a clear, concise statement of the technical disclosure of the patent and should include the subject matter that is new to the invention
- should mention modifications or alternatives incorporated into the invention that make it an improvement over the previous art
- must commence on a separate sheet
- should include the following:
- if a machine or an apparatus; its organization and operation
- if an article; its method of making
- if a chemical compound; its identity and use
- if a mixture; its ingredients
- if a process; the steps to follow
- should only be a summary, no details are necessary
- should be a mixture of background art and the new invention
- should include the general nature of the compounds or if applicable, a composition
- should be a single paragraph
- 150 words (maximum) – abstract should not exceed 15 lines of text
- may not contain implied phrases such as “the disclosure concerns”
- the title should never have the articles "a," "an," and "the" as its first words
- they will be deleted when the Office enters the title into the Office's computer records and when any patent issues
Material disclosed in the abstract may be amended into the specification without violating the forbidden new matter rule.
If the abstract contained in the application does not comply with the guidelines, the examiner should point out the defect to the applicant in the first Office action, or at the earliest point in the prosecution that the defect is noted, and require compliance with the guidelines.
Upon passing the application to issue, the examiner should make certain that the abstract is an adequate and clear statement of the contents of the disclosure and generally in line with the guidelines.
- If the application is otherwise in condition for allowance except that the abstract does not comply with the guidelines, the examiner generally should make any necessary revisions by a formal examiner’s amendment after obtaining applicant’s authorization rather than issuing an Ex parte Quayle action requiring applicant to make the necessary revisions.
608.01(c) Background of the Invention
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The Background of the Invention may (but is not required to) include the following parts:
- Field of the Invention: A statement of the field of art to which the invention pertains. This statement may include a paraphrasing of the applicable U.S. patent classification definitions. The statement should be directed to the subject matter of the claimed invention.
- Description of the related art including information disclosed: A paragraph(s) describing to the extent practical the state of the prior art or other information disclosed known to the applicant, including references to specific prior art or other information where appropriate. Where applicable, the problems involved in the prior art or other information disclosed which are solved by the applicant’s invention should be indicated.
608.01(d) Brief Summary of Invention
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A brief summary of the invention indicating its nature and substance, which may include a statement of the object of the invention, should precede the detailed description.
- Such summary should, when set forth, be commensurate with the invention as claimed and any object recited should be that of the invention as claimed.
Since the purpose of the brief summary of invention is to apprise the public, and more especially those interested in the particular art to which the invention relates, of the nature of the invention, the summary should be directed to the specific invention being claimed, in contradistinction to mere generalities which would be equally applicable to numerous preceding patents.
The brief summary, if properly written to set out the exact nature, operation, and purpose of the invention, will be of material assistance in aiding ready understanding of the patent in future searches. The brief summary should be more than a mere statement of the objects of the invention.
The brief summary of invention should be consistent with the subject matter of the claims.
A brief summary of the invention indicating its nature and substance, which may include a statement of the object of the invention, should precede the detailed description. Such summary should, when set forth, be commensurate with the invention as claimed and any object recited should be that of the invention as claimed.
608.01(f) Brief Description of Drawings
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When there are drawings, there shall be a brief description of the several views of the drawings and the detailed description of the invention shall refer to the different views by specifying the numbers of the figures, and to the different parts by use of reference letters or numerals (preferably the latter).
608.01(g) Detailed Description of Invention
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A detailed description of the invention and drawings follows the general statement of invention and brief description of the drawings.
- An applicant is ordinarily permitted to use his or her own terminology, as long as it can be understood.
- Necessary grammatical corrections, however, should be required by the examiner, but it must be remembered that an examination is not made for the purpose of securing grammatical perfection.
The reference characters must be properly applied, no single reference character being used for two different parts or for a given part and a modification of such part.
- Every feature specified in the claims must be illustrated, but there should be no superfluous illustrations.
The description is a dictionary for the claims and should provide clear support or antecedent basis for all terms used in the claims.
The specification must clearly convey enough information about the invention to show that applicant invented the subject matter claimed.
608.01(h) Mode of Operation of Invention
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The absence of a specific working example is not necessarily evidence that the best mode has not been disclosed, nor is the presence of one evidence that it has.
If the best mode contemplated by the inventor at the time of filing the application is not disclosed, such defect cannot be cured by submitting an amendment seeking to put into the specification something required to be there when the application was originally filed. Any proposed amendment of this type should be treated as new matter.
