General
The heart of a patent application is comprised of the description
and the claims.
The description includes specifications and drawings, and
discloses how an invention is made and how it is used. The
claims are based upon the description and set out the legal
limits of what is protected by the patent.
Although it is thought that the claims are the most important
part of the patent, when an inventor reviews a draft patent
application, the description, not the claim, should be the
focal point of the review because of the following:
The description cannot be amended to include new material
after an application is filed. The claims can be amended after
filing but only to the extent that they claim what is described
in the specification or shown in the drawings.
The description is also the most important part of the patent
when trying to determine if your invention is patentable in
view of an existing patent, that is, when your application
is being studied for its prior art disclosure, If an invention
is described in a printed publication, such as a patent (which
is considered a printed publication), more than one year before
your patent application is filed for the invention, the invention
will not be patentable. Therefore, in reviewing a patent for
its prior art effect, the specification and drawings should
be the primary focus, not the claims.
The claims are analyzed by an examiner to determine the scope
of protection of a patent. This is important when deciding
if your product infringes that of a competitor or if the competitor’s
product infringes your patent. The claims are also useful
in determining how to “design around “ a patent
so that you do not infringe an existing patent
 see
previous page | see next
page 
|
