* Patent Spec + Claims = Foundation + House

17 Seconds #71 – A Publication For Clients And Other VIPs.

There are two parts to the patent application: the specification (the written description and the drawings, sometimes referred to as the “spec” for short) and the claims (which define the scope of your patent rights in very odd legal language, kind of like how deeds describe real estate rights in very odd legal language). The spec/claim relationship is best explained by analogy.

Think of the spec as the foundation of a building. The claims are the building. When you first file a patent application, you exclaim to the USPTO, “Look, I have built a skyscraper!” Then the USPTO requires you to narrow the scope of the claims to overcome the prior art (i.e. stuff invented before your invention). The USPTO says, “We think that your building is a 2BR cape.” And after a few months of back-and-forth, you both agree: “The building is a house: a 4BR colonial.” You issue a joint press release announcing the house, the press release is your issued patent (which, fun fact, always issues on a Tuesday).

During the course of patent prosecution (the back-and-forth discussion between applicant/USPTO consisting of office action, office action reply, lather/rinse/repeat), only the claims (the building) change. The spec (foundation) does not, in fact the spec cannot change by law. Once the foundation is done, it is done. So no matter which application (provisional or nonprovisional patent application) comes first in the life of your patent, the foundation must be rock solid. For this reason, startups should write provisionals the same way they write nonprovisionals: on a firm foundation. By going down the provisional route, startups can defer some of the claim-writing cost/work until later. Filing a nonprovisional first (with few claims) followed by a preliminary amendment later (with more claims) has the same cost-deferring effect of a provisional, with the added benefit of “getting in line” to be examined (which does not happen with a provisional patent application).

Do not build your house on sand. Build your house on a firm foundation.

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