The following is a near transcript of Episode 6 of the "Patenting for Inventors Podcast."
This episode is going to be an overview of the parts of a utility patent. If you remember from my previous episodes, there are also design patents and plant patents, and the parts that are required are different. I’ll cover those in a later episode. This episode is just going to be a very brief explanation of the parts of a utility patent, which is the type of patent most inventors want. It’s usually for physical inventions and new methods of doing things.
I’m going to be going through the same product that I talked about in episode four, the 3-in-1 Avocado Slicer by Oxo. It’s probably easier to follow along in this episode if you actually have that patent in front if you. If you don’t have it in front go to google.com/patents and in the search bar type in the patent number 8,726,799.
Only one result should pop up and it says “avocado slicer.” Click on that link. If you’re not following along, this episode will probably just go right over your head so you should really pause the podcast and follow along on your computer when you have the patent in front of you.
Now we can either look at this patent in the web browser version, which is what might see, or you can see how an actual patent looks by clicking on the top right of the screen, where it says “View PDF.” Click "View PDF" and you will get a PDF of the actual patent that we’re going to go through.
This is a 12 page patent, which is actually pretty short for a patent. Usually there is one front page, but for this patent, the patent office couldn’t fit all of the patent information on one front page so there are two front pages, followed by five pages of figures and seven pages of text.
The first two pages of this patent are the front pages. The front pages have some information about the patent like the title, inventors, important dates, the company that owns the patent, and lots of other things I’ll go into in a future episode. Right now, I just want to focus on the parts of the patent that you actually write yourself as the inventor. On the front page, the only thing you really write yourself is the Abstract.
The Abstract is just a very brief summary of your invention, which is supposed to be 150 words or less. It’s supposed to be written in a simple way that a layperson can understand. It’s not supposed to be super technical or legal sounding. Below that is a single drawing from your patent application. When you fill out the paperwork for your patent application you tell the Patent Office what figure you think is most representative of your invention and the Patent Office will put that figure on the front page of the application.
Next in the patent are going to be figures. In this patent there are 12 figures and the inventors were able to put them onto 5 pages because each figure doesn’t need its own separate page. You should put in as many figures as you need to show all the parts of your invention and how it works.
After the figures we get to the first page of the text. You start out with a section called the background of the invention. In the background you shouldn’t put anything about your own invention. It should just be about what came before your invention, and you usually write it in a way that shows that there’s something not perfect about how the past inventions tried to solve a problem.
In this patent application the background section talks about how traditional avocado slicers work and how the pit is usually removed, and how people usually slice avocados. Then it talks about some of the multifunction avocado slicers that are out there and some of the problems with them. It doesn’t say anything about the inventor’s new avocado slicer, that’s the next section, the Brief Summary.
In this patent they called it the Brief Description, but in most patents you’ll see it called the Brief Summary or Brief Summary of the Invention. This is just a few paragraphs that describe your invention. It might cover a few of the main versions of your invention but it doesn’t go into every little detailed variation that your invention could have.
Brief Description of the Drawings
The next section is called the Brief Description of the Drawings. Each description that you have should be in one short sentence. Usually the first part of the sentence says what the view is, such as, “This is a top view” or “This is a front view” and then the second part of the sentence is a very brief description. It can be really broad, such as “this is a front view of one embodiment of an avocado slicer.” And that’s it. Sometimes it can be more detailed but it's not necessary because that’s what the next section is for, the Detailed Description.
The Detailed Description, or sometimes people call it the Detailed Description of the Embodiments is where you go into the details of your invention. Usually what people do is go illustration by illustration and write about every single part and how it’s connected.
Every listed part described is followed by a number that you type in, and this number matches up with numbers in the drawings that point to that part. So as the reader reads along this patent, she can look at the figures and know what the inventor is talking about. The Detailed Description of the Embodiments is almost always going to be the largest section of your patent application because it has to be detailed.
You might be thinking, "Why do I want to describe in excruciating detail how my invention is made and works, because that makes it really easy for anyone to just copy it." Well, that’s actually the point. The tradeoff for you getting a patent and being able to exclusively make, use and sell it for usually 20 years, is that you have to publicly disclose how your invention is made, and works, so that after those 20 years are up, anyone can make it.
If you don’t want to tell people about how your invention works, that’s fine, you don’t have to, but then you shouldn’t file a patent application, you should just keep it a trade secret. But remember, if you try to keep it a trade secret, if anyone reverse engineers your invention, then you have no protection whatsoever.
So how detailed do you have to be in the Detailed Description? I’ll go into the details of the requirements for the Description of the invention in a later episode because a lot needs to be discussed, but the gist of it is that you should be very detailed in your description, and the best way of making and using your invention. If you aren’t detailed, you might not get a patent at all, and even if you do get a patent, it might get invalidated if anyone ever challenges the validity of your patent by saying that your written description was insufficient.
So now we’re done with the detailed description and we’re left with last and most important part of the patent, which are the claims.
Claims will take up several episodes on this podcast series because the claims describe what you’re able to stop other people from doing. You can think of claims like your house property lines.
If someone asked you to describe where you live. You might start describing your state, or your city, or your community, different landmarks, parks near you, schools, or the weather. That’s analogous to the detailed description section. It can be very lengthly and describe lots of important things things but it doesn’t really tell people what line they can’t cross to enter your property.
If you want to tell people what line they can’t cross then you have to describe your property boundaries, which might be the exact longitude and latitude coordinates or how many feet it is from one corner of your property to the other, That’s what the claims of a patent are analogous too. It’s telling people what product boundaries they cannot cross.
In your claims, you must say exactly what the boundaries of your invention are. Claims are probably the toughest part of the application to write, and if there’s any area where you want a patent attorney, this would be it, because there are so many pitfalls in claim drafting, and I’ll go over some of those in later episodes.
I’m not saying you can’t draft claims yourself, you can. If you got shot in the leg you can technically do surgery on yourself and take out the bullet and sow your up. Or, you can hire someone that has years of experience and training in doing surgery. Your choice, right?
It’s not a life and death situation if you don’t use a patent attorney to write the claims, but it could be the life or death of protecting your invention if it's not done right. There are plenty of guides online on how to draft patent claims and I’ll go through some basic claim drafting strategies in later episodes, but just know that you’re risking protecting your invention for a few thousand dollars.
And if you didn’t do it right, and you get a rejection, you’ll be paying a patent attorney a lot more to fix it up, and sometimes it actually can’t be fixed it all. So draft claims at your own risk.
In the patent we are looking at, this patent has 19 claims. We’re just going to look at claim 16 as an example. If you look at claim 16, you can see that there are four elements shown by intended paragraphs. One element starts with “a handle,” the next section starts with “a first blade member,” the next section starts with “a second blade member,” and the last section starts with “at least two spaced apart engagement members, and follows with that pierce the avocado pit.” Each of those elements is further detailed in the claim itself, but those are the big picture elements of claim 16.
So for Claim 16, the inventor is saying that in one version of their invention, there are four requirements that must be present. If it doesn’t have these four elements, then it’s not the invention of Claim 16. It might be the invention of some other claim, but not claim 16. If you made a product that only had three of these four elements, then that wouldn’t be infringing Claim 16. I’ll go over claim infringement in another episode, but for now, just know that the Claim section is where you are specifically describing the boundaries of your invention.
In sum, remember the main parts of the patent. The Abstract, which is a short one paragraph, the Drawings, the Background of the Invention, a brief few paragraph for the Summary of the Invention, a Brief Description of the Drawings, a Detailed Description of the Embodiments, and the Claims.
All the written parts together are called the Specification, so if you hear that word, it just means the written parts and figures of the patent.
There are certain situations where you have to include some additional parts for your patent application, which I’ll also go over in later episodes.