Contents
The summary of the invention is exactly what it sounds like: a brief summary of the invention. Prior to the ruling in
Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co.,
1 the summary typically included a paragraph similar to the abstract (to be discussed in detail below), laying out the basics of the invention, and then a long list of paragraphs which read something like: “It is an important objective of the present invention to provide …” and “It is a further objective of the present invention … .” Post-
Festo, though, these “objectives” could be seen as specific limitations to the function of the invention when interpreting the claims (i.e., the equivalent of file wrapper estoppel, but at the time of filing, rather than during prosecution). Thus, the summary of the invention is now strictly a summary in a few paragraphs, with no stated objects or intentions.
Here is my own personal trick of the trade: As many practitioners do, I write my claims first, before anything (actually, I do my drawing sketches first, then I draft my claims using the sketches). Then, for the first paragraph of the summary of the invention, I copy the first independent claim right into the summary section. I then edit the claim to read like normal English; that is, taking out all the semicolons and indentations, taking out all the archaic claim language like “said,” and writing everything in proper grammatical sentences.
If each independent claim represents a different embodiment (as they should), I will then tailor subsequent paragraphs to include these variations and alternatives, such as, for example, a second paragraph which reads, “Alternatively, the gizmo may be replaced by a fuzzy gadget, thus allowing the third support member to be connected to the … .” Do you have to write a summary like this? Absolutely not. This is simply my personal trick (and I’ll be using it for all sections of the application) and it allows me to (a) produce a proper summary quickly and easily; (b) produce a summary which is in conformance with the various USPTO rules; (c) write a summary which provides sufficient support for what is claimed (in compliance with
35 U.S.C. § 112(a),
2 as we will learn in chapter 8); and (d) write a post-
Festo summary which does not include any limitations which may later be interpreted in a narrowing way.
Let’s start with the chair claims from chapter 1. I will use the apparatus claims (both independent claims will go into the summary, and we will return to the dependent claims in the next chapter) and the one method claim. Thus, the invention itself is not just the chair, but the chair and the method of making the chair:
1. A chair, comprising:
a seat having opposed upper and lower surfaces, the upper surface thereof being adapted for supporting the buttocks of a user;
a plurality of support legs, each said support leg having an upper end and a lower end, each said upper end thereof being mounted to the lower surface of said seat with each said support leg extending downwardly therefrom, each said lower end being adapted for removable positioning on a support surface; and
a backrest having opposed upper and lower ends, the lower end thereof being secured to the upper surface of said seat, said backrest extending upwardly therefrom, whereby said chair may be removably transported by the user to the support surface for providing the user with temporary comfortable support.
2. The chair as recited in claim 1, wherein said seat has a substantially rectangular contour.
3. The chair as recited in claim 1, wherein said backrest comprises:
an inverted, substantially U-shaped frame having an upper portion and a pair of lower ends;
a plurality of vertically extending slats, each said vertically extending slat having an upper end and a lower end, the upper ends thereof being secured to an inner surface of said inverted, substantially U-shaped frame; and
a horizontally extending slat secured to, and extending between, the pair of lower ends of said inverted, substantially U-shaped frame, wherein the lower ends of said plurality of vertically extending slats are secured to said horizontally extending slat.
4. The chair as recited in claim 3, wherein the upper surface of said seat has a pair of recesses formed therein for receiving the pair of lower ends of said inverted, substantially U-shaped frame.
5. A method of making a chair, comprising the steps of:
(a) mounting upper ends of a plurality of support legs to a lower surface of a seat such that each said support leg extends downwardly therefrom; and
(b) securing a lower end of a backrest to an upper surface of said seat such that said backrest extends upwardly therefrom.
The first step is writing a simple introductory statement, and then transplanting the independent claims into the summary:
SUMMARY OF THE INVENTION
The present invention is a chair which may be removably transported by a user to a desired support surface for providing the user with temporary comfortable support. The chair includes a seat having opposed upper and lower surfaces, the upper surface thereof being adapted for supporting the buttocks of a user; a plurality of support legs, each said support leg having an upper end and a lower end, each said upper end thereof being mounted to the lower surface of said seat with each said support leg extending downwardly therefrom, each said lower end being adapted for removable positioning on a support surface; and a backrest having opposed upper and lower ends, the lower end thereof being secured to the upper surface of said seat, said backrest extending upwardly therefrom, whereby said chair.
A method of making the chair includes the steps of: (a) mounting upper ends of a plurality of support legs to a lower surface of a seat such that each said support leg extends downwardly therefrom; and (b) securing a lower end of a backrest to an upper surface of said seat such that said backrest extends upwardly therefrom.
Next, we convert the above into “normal” English, taking out the word “said,” using proper punctuation, putting things into the proper tense, and so forth:
SUMMARY OF THE INVENTION
The present invention is a chair which may be removably transported by a user to a desired support surface for providing the user with temporary comfortable support. The chair includes a seat having opposed upper and lower surfaces. The upper surface thereof is adapted for supporting the buttocks of the user. A plurality of support legs are further provided, with each support leg having an upper end and a lower end.
Each upper end of each support leg is mounted to the lower surface of the seat with each support leg extending downwardly therefrom. Each lower end of each support leg is adapted for removable positioning on the support surface. The chair further includes a backrest having opposed upper and lower ends, with the lower end thereof being secured to the upper surface of the seat such that the backrest extends upwardly therefrom.
A method of making the chair includes the steps of: mounting upper ends of the plurality of support legs to the lower surface of the seat such that each support leg extends downwardly therefrom; and securing the lower end of the backrest to an upper surface of the seat such that the backrest extends upwardly therefrom.
That, believe it or not, is it. The summary is now complete and is in perfect conformance with all rules and requirements. More important, in our post-Festo world, we are not unnecessarily limiting anything.
As a final note, the Manual of Patent Examining Procedure (MPEP) has this to say: “A brief summary of the invention indicating its nature and substance, which may include a statement of the object of the invention, should precede the detailed description. Such summary should, when set forth, be commensurate with the invention as claimed and any object recited should be that of the invention as claimed.”
The MPEP goes on to note: “Since the purpose of the brief summary of invention is to apprise the public, and more especially those interested in the particular art to which the invention relates, of the nature of the invention, the summary should be directed to the specific invention being claimed, in contradistinction to mere generalities which would be equally applicable to numerous preceding patents. That is, the subject matter of the invention should be described in one or more clear, concise sentences or paragraphs. Stereotyped general statements that would fit one application as well as another serve no useful purpose and may well be required to be canceled as surplusage, and, in the absence of any illuminating statement, replaced by statements that are directly on point as applicable exclusively to the case at hand … . The brief summary, if properly written to set out the exact nature, operation, and purpose of the invention, will be of material assistance in aiding ready understanding of the patent in future searches. The brief summary should be more than a mere statement of the objects of the invention … . The brief summary of invention should be consistent with the subject matter of the claims.”
3Footnotes — § 4.01.:
2 This was previously
35 U.S.C. § 112, first paragraph. The change in nomenclature comes from the 2011 America Invents Act (AIA).
The abstract is a brief summary of the invention—even briefer than the summary. The abstract is limited to 150 words maximum. The abstract serves to provide patent searchers with a quick look at the invention to see if they want to read more—it is not generally seen as being legally limiting and does not require a great deal of effort or analysis. Please keep in mind that independent inventors, in particular, tend to think that the abstract is of great importance, since it is printed on the first page of the issued patent, but legally speaking, it carries little to no real weight.
Carrying on with my “trick” to application drafting, I copy the summary into this section and then just start deleting words or editing phrases to shrink it down to 150 words. As a game, I always write abstracts that are exactly 150 words (this is my own personal game, you certainly don’t have to do this—just don’t exceed 150 words or you will receive an objection from the Patent Examiner). The present summary above is 199 words long, so that’s what we start with:
ABSTRACT OF THE DISCLOSURE
The present invention is a chair which may be removably transported by a user to a desired support surface for providing the user with temporary comfortable support. The chair includes a seat having opposed upper and lower surfaces. The upper surface thereof is adapted for supporting the buttocks of the user. A plurality of support legs are further provided, with each support leg having an upper end and a lower end.
Each upper end of each support leg is mounted to the lower surface of the seat with each support leg extending downwardly therefrom. Each lower end of each support leg is adapted for removable positioning on the support surface. The chair further includes a backrest having opposed upper and lower ends, with the lower ends thereof being secured to the upper surface of the seat such that the backrest extends upwardly therefrom.
A method of making the chair includes the steps of: mounting upper ends of the plurality of support legs to the lower surface of the seat such that each support leg extends downwardly therefrom; and securing the lower end of the backrest to an upper surface of the seat such that the backrest extends upwardly therefrom.
Now we start cutting and rewriting to shrink it down:
ABSTRACT OF THE DISCLOSURE
A chair is provided. The chair includes a seat having opposed upper and lower surfaces, and the upper surface is adapted for supporting the buttocks of the user. A plurality of support legs are provided, and upper ends thereof are mounted to the lower surface of the seat with each support leg extending downwardly. Lower ends thereof are adapted for removable positioning on the support surface. The chair includes a backrest having opposed upper and lower ends, with the lower end being secured to the upper surface of the seat such that the backrest extends upwardly therefrom. To manufacture the chair, the upper ends of the plurality of support legs are mounted to the lower surface of the seat such that each support leg extends downwardly therefrom, and the lower end of the backrest is secured to an upper surface of the seat such that the backrest extends upwardly therefrom.
Exactly 150 words long, and the abstract clearly gives an idea of the general field and features of the invention, which is its purpose.
Appendix A shows a sample patent application exactly as it is filed. Note that the abstract goes on its own page, after the claims. From the MPEP: “A brief abstract of the technical disclosure in the specification must commence on a separate sheet, preferably following the claims, under the heading ‘Abstract’ or ‘Abstract of the Disclosure.’ The sheet or sheets presenting the abstract may not include other parts of the application or other material. The abstract in an application filed under
35 U.S.C. 111 may not exceed 150 words in length. The purpose of the abstract is to enable the United States Patent and Trademark Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.”
The MPEP goes on to say: “The content of a patent abstract should be such as to enable the reader thereof, regardless of his or her degree of familiarity with patent documents, to determine quickly from a cursory inspection of the nature and gist of the technical disclosure and should include that which is new in the art to which the invention pertains … . A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains … . The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art … . Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps. Extensive mechanical and design details of apparatus should not be given.”
4Footnotes — § 4.02.: