Patent and Invention Help Forum

Patent Abstract

Max D.

Patent Abstract
« on: March 09, 2018, 10:33:59 AM »
Dear Brad,

thanks for making available all this information about patents
and dedicating part of your time to answering our questions!

Why do you include an ABSTRACT in your Provisional PA template?
As far as I know, it is not required?
It also takes time to elaborate it, and might bear the risk
of being used to limit the scope of the PPA.

As an exprienced Patent Professional you surely have reasons for including this section,
would you share them with us?

Thanks a lot and best wishes,
Max


« Last Edit: March 09, 2018, 12:04:39 PM by Brad »

Brad

  • Patent Agent
  • *****
  • 1945
  • Owner of PatentFile, LLC
    • View Profile
    • Patent File
Re: Patent Abstract
« Reply #1 on: March 09, 2018, 12:15:48 PM »
Hi Max,

Thanks for your great question.  Why do you think the abstract is not required?  I have always treated it as a required part of the disclosure (see 37 CFR 1.72):  https://www.uspto.gov/web/offices/pac/mpep/s608.html#d0e44136

While true the office will not examine the abstract in the provisional and will likely not even object if you don't include one that seems like a ripe spot where someone in the future may try to argue you did not file a proper disclosure because your provisional did not have an abstract.   I am involved in a case now where we are picking through every detail of a provisional to try and find an error and if there was not an abstract there that would be something we may bring up to argue it was not a valid disclosure because it was missing an abstract.   I am also not sure of non-US laws which may require you to have an abstract at the time of filing so if anyone plans to file their patent later outside of the US they would be smart to include an abstract now.


Now in practice I often will copy/paste from the Brief Summary section and make the my abstract so there is only 10 seconds of additional work needed to make the abstract so its really not a big deal or something I think much about.   Its also best practice for your Brief Summary (and abstract) to be your claims re-written into paragraph form so you are not therefore limiting the scope of your invention any more than your claims are already doing.

Hope the helps and if you did see some article or case law that says no abstracts for provisionals please share as I would love to read it.


My free patent template: https://patentfile.org/free-provisional-patent-template/

Hire Me:  https://patentfile.org/packages/

Disclaimer: The information on this site is not legal advice and is not a substitute for an attorney or a law firm.  You should seek legal counsel for legal questions.

Max D.

Re: Patent Abstract
« Reply #2 on: March 09, 2018, 12:44:36 PM »
Dear Brad,

thank you for answering with that much detail!
I understand from your answer why the abstract is relevant indeed,
so I will include one.

https://www.uspto.gov/web/offices/pac/mpep/s601.html
states that an abstract is required for NON-provisional patents,
and that provisional ones PREFERABLY should include the same sections as nonprovisionals.
This is not exactly strict, but underlines the advice you gave.

http://patentablydefined.com/2009/09/28/patent-abstracts-common-problems-with-them-and-tips-for-drafting-a-better-abstract/

states that only NON-provisional patents need an abstract.
However, now I trust your advice more for the reasons you gave.

Thanks and regrds,
Max









Brad

  • Patent Agent
  • *****
  • 1945
  • Owner of PatentFile, LLC
    • View Profile
    • Patent File
Re: Patent Abstract
« Reply #3 on: March 09, 2018, 01:32:34 PM »
Thanks for sharing.  I am not sure if I agree with your interpretation of the patent rules though:   The link you posted states:

Quote
II.GUIDELINES FOR DRAFTING A PROVISIONAL APPLICATION UNDER 35 U.S.C. 111(b)
A provisional application should preferably conform to the arrangement guidelines for nonprovisional applications. The specification must, however, comply with 35 U.S.C. 112(a) and refer to drawings, where necessary for an understanding of the invention. Unlike an application filed under 35 U.S.C. 111(a) which requires claims before examination, a provisional application does not require claims. Furthermore, no oath or declaration is required. See MPEP ยง 201.04.


To me the rules go out of their way to say the claims are not required so why would they also not say the abstract is not required?

In any event I think you are smart to go ahead and just include to "play it safe"




« Last Edit: March 12, 2018, 02:09:05 PM by Brad »
My free patent template: https://patentfile.org/free-provisional-patent-template/

Hire Me:  https://patentfile.org/packages/

Disclaimer: The information on this site is not legal advice and is not a substitute for an attorney or a law firm.  You should seek legal counsel for legal questions.

 

Menu Editor Pro 1.0.2 | Copyright 2014, Matthew Kerle