Patent Law Editing and Proofreading Services

A patent application reaches the office as a set of papers whose dimensions are fixed in advance. For application papers filed on paper or by facsimile, 37 CFR 1.52(a)(1)(ii) fixes the sheet size and then sets the margins as minimums.¹ The left margin is at least one inch, and the top, right, and bottom margins at least three quarters of an inch.¹ Paragraph (b)(2) asks for a single column of text, one and a half or double spaced, in a nonscript font.¹

The parts in sequence, and an option for the paragraphs

The arrangement is recommended rather than commanded. Under 37 CFR 1.77(b), the specification "should include the following sections in order", and thirteen are listed.² The list opens with the title of the invention and the cross-reference to related applications, and closes with the claims, the abstract, and any sequence listing.²

Paragraph numbering is offered, not required, and 37 CFR 1.52(b)(6) begins by excepting a reissue application and a reexamination or supplemental examination proceeding.¹ Elsewhere the paragraphs of the specification, other than in the claims or abstract, "may be numbered at the time the application is filed".¹ The same sentence continues that they "should be individually and consecutively numbered using Arabic numerals, so as to unambiguously identify each paragraph."¹

Where the writing gets tested

The statutory requirement is short. Under 35 U.S.C. 112(b), the specification "shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention."³ The requirement rests on two adverbs, particularly and distinctly, and the Supreme Court has stated the standard those words set.

Nautilus, Inc. v. Biosig Instruments, Inc. was decided on June 2, 2014.⁴ The test is a conditional. A patent "is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform" a particular audience.⁴ That audience is "those skilled in the art", and what they must learn "with reasonable certainty" is "the scope of the invention."⁴ The Court then declined to apply the standard it had announced, quoting Cutter v. Wilkinson for the point that it is "a court of review, not of first view."⁴ It vacated the judgment of the Federal Circuit and remanded.⁴

The form of the claims is governed separately. Under 37 CFR 1.75(i), "Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation."⁵ Paragraph (g) has the least restrictive claim "presented as claim number 1", with dependent claims "grouped together with the claim or claims to which they refer to the extent practicable."⁵

Numbering the drafter does not control

Once prosecution starts, the numbering follows the rule. Under 37 CFR 1.126, "The original numbering of the claims must be preserved throughout the prosecution."⁶ When claims are canceled the remaining claims "must not be renumbered", and added claims begin "with the number next following the highest numbered claim previously presented (whether entered or not)."⁶ A file can therefore run claims 1, 4, 7, and 12. At allowance the examiner "if necessary, will renumber the claims consecutively in the order in which they appear or in such order as may have been requested by applicant."⁶

Amendments carry their own notation. Under 37 CFR 1.121(c), each claim in an amendment takes a status identifier in parentheses after its number, and the rule lists seven: original, currently amended, canceled, withdrawn, previously presented, new, and not entered.⁷ The same paragraph adds one combined identifier, for a withdrawn claim that is also being amended.⁷ Added text is underlined and deleted matter is struck through.⁷ Double brackets have two uses: they may show a deletion of five or fewer consecutive characters, and they must be used where strike-through cannot be easily perceived.⁷

What we work on, and what we do not

Claim drafting is legal work and it is not ours. We do not write, broaden, narrow, or interpret a claim, and we express no view on whether a claim is definite or on what it covers. Those decisions belong to the attorney or agent prosecuting the application.

The work that remains is on the page and in the wording. A reading reports how many spellings of one term appear across the specification and the claims. Where a claim introduces an element, the reading reports whether an antecedent for it appears earlier in that claim. Reference numerals are checked against the drawings they point at. Each document a client sends is kept confidential.

The specification is written once and read for years afterward. Its readers are examiners at the office, attorneys on the other side, and sometimes a court applying the reasonable certainty test. None of them was present when the sentence was drafted.