Patents - Fundamentals of Industrial Chemistry: Pharmaceuticals, Polymers, and Business - page 38

and more advisable to do so with the aid of a registered patent agent or patent
attorney. The USPTO recommends that the inventor be represented by a
registered agent or attorney. The USPTO maintains a register of people who
have the legal, scientific, and technical qualifications necessary to render
applicants for patents a valuable service. Certain of these qualifications must
be demonstrated by the passing of an examination, often called the patent
bar exam. Those admitted to the examination must have a college degree in
engineering or physical science or the equivalent of such a degree.
The USPTO registers both attorneys at law and persons who are not
attorneys at law. The former persons are referred to as “patent attorneys”
and the latter persons as “patent agents.” Both patent attorneys and patent
agents are permitted to prepare an application for a patent and conduct the
prosecution in the USPTO. Patent agents, however, cannot conduct patent
litigation in the courts or perform various services which the local jurisdiction
considers as practicing law. For example, a patent agent could not draw up
a contract relating to a patent, such as a licensing agreement if the state in
which he/she resides considers drafting contracts as practicing law.
It is important for the inventor to involve the assistance of a skilled
attorney or agent because otherwise there is a high risk of making mistakes in
the application which could result in the patent not being allowed or severely
limited in protection. Often wording, and in particular wording of the claims,
has important meaning which may be overlooked by an inventor. Imagine
for example, an invention of a salad. The application may claim a salad con-
sisting of lettuce, pears, gorgonzola cheese, and tomatoes. Or the application
may claim a salad consisting essentially of lettuce, pears, gorgonzola cheese,
and tomatoes. Or the application may claim a salad comprising essentially
of lettuce, pears, gorgonzola cheese, and tomatoes. Ignoring novelty and
obviousness arguments, for the sake of this example, let's assume the patent
is allowed and issues. Can a competitor sell a salad made from lettuce, pears,
gorgonzola cheese, and tomatoes and also croutons?
It depends upon the wording of the claim. The answer is yes, a competitor
can sell the salad if “consisting of” was used in the claim. The answer is no
if “comprising” was used in the claim. The term “comprising” is inclusive or
open-ended and does not exclude additional, unrecited elements or method
steps. The phrase “consisting of” excludes any element, step, or ingredient not
specified in the claim.The phrase “consisting essentially of” limits the scope
of a claim to the specified materials or steps “and those that do not materially
affect the basic and novel characteristic(s)” of the claimed invention.
A patent application typically contains a background statement which
gives the field of the invention and explains the state of the art prior to the
invention and the need for the invention. It then gives a summary of the
invention followed by a detailed description. There is typically a section that