I'm a bloody beginner! And you know I've got questions!

Criteri...

For the background/summary section, I don't speak from drafting experience, but I know there are those on both sides of the issue.  Theoretically, in the event that you are aware of prior art which could perceivably affect the patentability of your invention(s), the background summary section gives you an opportunity to try and emphasize what makes your invention(s) different or better than the prior art, and to just try and overcome any objections to patentability before they may arise.  Of course you can always accomplish the same (or similar) replying to office actions, but theoretically the background/summary section gives you an opportunity to market your invention's patentability to a patent examiner, proactively.  Also, btw, you are given the opportunity (and are technically required) to submit any lists of prior art that you are aware of on an Information Disclosure Form which is separate from your actual patent application.

The abstract is meant to serve as an accurate enough summary of your invention(s), nothing more or less.


"envision" and "in testing" are besides the point.  In an alternate embodiment, the system has a surface texture.  This is a patent, not a marketing plan.

But really, the exact wording in the description only means so much.  Not that you shouldn't be careful when writing the description, but the claims are where a tiny mistake can have huge consequences...You might want to consider paying an attorney to write your claims and/or look over the rest of your patent.

Generally, you don't have to worry about any patent attorneys stealing your invention.  The guy in charge of your patent club, who knows whether or not his invention was stolen, statistically inventors do have their ideas stolen, but they are also easily disgruntled at times and do not always pay attention to what they don't want to know.  And attorneys have ethical codes they are required to adhere to, and generally have much more to lose than gain by stealing your invention. Less honest attorneys will generally make their money by bs'ing clients into paying top dollar for half-assed work that might or might not be in the client's best interest (or something to the extent), not by stealing ideas.

gpw

Drafting a patent is hard. I hope this helps: It is not advisable to put any level of detail regarding the blow-by-blow description of the prior art in the application either as a table or otherwise. Making a table for yourself to be clear what features of your invention which prior art does and doesn't have, is a good thing to do.  It will be useful in writing and reviewing your claims and particularly when you get a rejection. The Background section can say something like "While there are many past attempts to solve this problem, they all suffer from one of more of the following disadvantages: ...". If you did put your analysis of the prior art in the application it could be used against you to argue "inequitable conduct" based upon the theory that you led the examiner astray. Of course you do need to list the relevant prior art you are aware of in an IDS. "Easy to use" is a benefit - you do not get patents on benefits but on the specific structure (that might provide that benefit). The prior art doesn't have a handle, you do have a handle.

There are various schools of thought on the summary: very short, complete paraphrasing of the claims into normal English. The reason you do not see objectives much any more is that if you say "an objective of my invention is to do X", it might be taken that anything that doesn't do X is therefore not your invention even if it otherwise falls under one of your claims. "An object of some implementations of my invention ... "  could avoid that problem.

The Abstract is an abstract of your overall disclosure. The summary is a summary of your invention (claims).

The Specification must explain to a person of avg. skill in the art how to make and use the invention. The claims do not explain, they are more like a list or a definition - they draw a box around your invention to tell us that what is inside the box is what you say is yours.

I would not try to sound legal by sprinkling it in. Re-reading Pressman's book might help. However, there have been recent cases regarding claim language covering: (a) When does "a" mean "one" and when does it mean "one or more"? (b) Does "completely covered" fall into "partially covered" ? (c) When does "and" mean "or"? so this is all harder than it looks.

While you want the examiner to read your application and get the overall impression - 'hey this a cool invention", you should not sell one embodiment as being the be-all. It could be taken later to argue that any other embodiments are not really it.

It would be very very unusual for a registered patent practitioner to steal an inventors idea. They can make a very good living doing what they do, see dozens of ideas a month, and would not want to lose their registration to practice before the PTO forever for an ethics violation. If you express a big concern about this it might make it harder to find an attorney or agent to work with. They do not want to be in litigation with a paranoid client.

You might consider a patent agent as an alternative to a patent attorney. Both have equal standing at the USPTO.

MYK

Quote from: fuggy on 09-07-08 at 09:51 am