PARTS OF A NON-PROVISIONAL PATENT APPLICATION
A non-provisional patent application includes numerous parts. In this article, I will describe each part that is found in a typical non-provisional patent application and give a description of what is in each section.
The title of a non-provisional patent application needs to be something that is broad and generally describes the subject matter of the application. A lot of times people want to put specific things in the title or things such as trademarks or brand names. These items are not appropriate for the title. The title should just be a broad, simple statement that gives a general overview of what is in the application itself.
RELATED APPLICATION SECTION
If a non-provisional patent application relates back to a provisional patent application or other non-provisional patent application, then the very first section should be a section entitled related applications that includes a reference to the earlier application. For example, a typical related application section might read something like this application claims the benefit of US Application No. 123, 456 entitled Machine and filed on January 1, 2022, which is hereby incorporated by reference in its entirety.
Some older examples and earlier types of patent applications call this the field of the invention, however, modern practices do not use the word invention in a patent application. Therefore, modern title for this section is simply field or, if you feel like it needs to be something longer, it could be field of the disclosed subject matter, but I prefer just Field. In the Field section, you want to give a general idea about what the patent application relates to and a more specific one, so for example, you may say the Field generally relates to automobiles and, in particular, to electric automobiles.
The summary section typically contains a paraphrased version of the claims so as you read the summary or read the claims, whichever you read first, and then read the other one, you will feel like there is a lot of repetition between these two sections and that will be true and that is on purpose for legal reasons. The reason that the summary section contains a paraphrased version of the claims is that it provides literal support in the application for the claim language. This can be important in the U.S., but is also important in other countries, and may be more important in other countries, such as Europe, where literal claim support is required. The U.S. is a little more flexible on this, but some other countries have a strictly literal claim support requirement. Therefore, it is always a good practice to include in the summary a paraphrased version of the claims that includes the exact claim language. You can also put other things in the summary that would be typically considered what most people would think of as a summary as like an overview of the invention that is in the patent application, but essentially as long as the summary contains the paraphrased version of the claims that is sufficient.
The background section is not required in a patent application, but there is often one there to kind of set the stage and I would say that they are useful at least in setting up the problem sometimes that the invention was conceived to solve and so in the background section, you want to mention what the problems are that the invention is addressing, maybe what some other solutions have been, and maybe some problems with some of those solutions, but you want to keep your background section pretty vague and equivocal. You do not want to use language like, you know, this invention in Patent No. blah, blah, blah does not do xyz functions, you know, that kind of thing. Do not get too specific about it. Do not mention patent applications or patents in the background section. Just stick to high level mentioning of what the problems are, maybe what some conventional solutions have been, and maybe some problems or limitations that may be with some of those solutions and keep it equivocal like that. Do not do any absolutes about what is wrong with certain things or what things are missing and that kind of thing. Just keep it very high level and vague summary of what the issues are that you are trying to solve with the invention. If you want to have a background section at all. Again, it is not required.
BRIEF DESCRIPTION OF THE DRAWINGS
This is a section where there must be a brief description corresponding to each one of the drawings in a patent application. If there is not a brief description for each drawing, the patent office will initially object to the application and their objection to it can sometimes be very confusing because it will look like they are objecting to the drawings when what they are really objecting to is the fact that you do not have a brief description of each of the drawings. So, for example, if you have Figures 1 through 4, there needs a brief description for each of Figures 1 through 4. If you have figures that have letters after them, so, for example, you have Figures 5A, 5B, 5C, you also need to have each one of those have a brief description or, in some cases, you can bundle them together in something like Figs. 5A through 5C are various views of the subject matter. And, so, as long as you cover every figure in the brief description, then you should be good. And in the brief description, remember the section is titled Brief Description, so just keep it very brief there. So, for example, you could say Fig. 1 is the diagram of an example of a car in accordance with the disclosed subject matter. Or, Figure 2 is a diagram showing the details of the wheel of the example car in accordance with the disclosed subject matter or in according to one or more implementations, or something like that. You want to keep it very short, but also inclusive and do not limit yourself. You want to have the brief description applicable to one or more implementations of the disclosed subject matter and do not limit yourself further than that.
DETAILED DESCRIPTION SECTION
The detailed description section is where you take each one of the figures that you mentioned in the Brief Description Section and now describe it in detail. So, for example, you could take Fig. 1 that is a diagram of a car and start to describe each one of the elements that is shown in that figure, so you may say the car has a body, it has some wheels, it has a door, it has a windshield, and that kind of thing, so this is where you go into the details of that. And I usually like to approach it in a kind of a two-phase thing where I name out all of the parts and then I turn to how those parts function or how they are connected and that will set-up the relationship of all of those parts and what they do, so you may say the car has some wheels and it also has a steering wheel, and then you may continue on the description of that figure by saying in operation when a user turns the steering wheel in a given direction, the two front wheels turn in that direction also. Now this is just a simple example, but it gives you an idea of how you might want to approach a detailed description where you name out all of the parts and then start to name how they are connected and how they function to kind of tie them all together based on the drawing. So, you put a detailed description for each one of your figures and here it is a good time to take and once you are done with the detailed description, go back, double check all of your drawings. Make sure that you have described each figure and that you described each reference number of each figure.
This section needs to start on its own page and the claims are numbered paragraphs that set forth in what we call in patent law the meets and bounds of the invention. To me, an analogy to think of about claims is they are essentially like the property line around a piece of property. And, so, the claims define the boundary, and when you are issued a patent, it's like it gives you the right to put a fence around that boundary and keep everyone out. So, the claims are really important. This is what the patent examiners are examining. They look at the whole application and they may have certain things to say about the application in general, but when it comes down to actually getting a patent, it is the claims that are allowed to issue as the patent. And, so it is very important to realize that the whole application isn't the patent. The claims are actually what gets patented in a patent application. So these paragraphs are very important because the very particular way they are written, they have to follow certain formatting rules, they have to follow numbering rules. There are a lot of rules that apply to the claims and the claim language and so this is a section that can be fairly difficult to draft and usually requires the help of a patent attorney or a patent agent. It is possible to draft your own claims though and there are some resources to do that, but just in general know that the Claims Section is very important. It follows a strict set of rules and is something that you really have to pay attention to, whether you draft your patent application or someone else does. The claims are important. And, one other thing I would say is about the claims is once you are done with the claims, you now need to take the claims and compare them to the drawings to make sure that every claim feature you have is shown in the drawings and, then, when you go to the detailed description, make sure that feature is described and this is especially important for the features that I would kind of call the heart of the invention. You want those features clearly shown in good detail in your drawings and you want a nice description of those features as well, because those are your key features. There are things surrounding them that are probably well known things or components that you are known to put together that do not really matter too much for the invention other than to give it a context or a framework, but there will be certain key features in there, and I just you know refer to these key features a lot of times as the secret sauce. It is those secret sauce features that you want to make sure are covered in your diagrams well and in your description. So, if anything, go overboard on those, but make sure they are fully described and fully shown. Whether you draft your application or your attorney does and, when you are reviewing it, you want to make sure that those features have really been emphasized in the Claims Section.
The final section in the patent application is the Abstract. It needs to begin on a new page as well, like the Claims, and the abstract can just be a short summary of the subject matter of the patent application. It needs to be limited to 150 words, so it's very short. I typically just do a one sentence one because there is not a real requirement to do too much here other than have an abstract of the subject matter, so I typically just put a very short, you know, concise statement about the subject matter in for the abstract. And, again, you do not want to be too limiting. So some final points about patent applications that may kind of surprise you that I mentioned above, but I want to just emphasize one more time and that is that patent applications typically do not mention the word invention and often do not mention inventor, but they may mention inventor sometimes, but they definitely do not mention the word invention, which seems counterintuitive since you are trying to protect an invention, but they do not mention that, and typically you do not refer to any other prior art by any specifics and so that is something that is a little counterintuitive. You do not refer to the other stuff that has been done before typically by number, at least here in the U.S. In Europe and in some other areas around the world, they follow some different conventions, but for the U.S. here we do not mention any numbers or anything. So gives you kind of an overview of the different sections that are in a patent application, what goes in them and what they are there for.