Patent abstract: Traps for the unwary

What is a patent abstract?

A patent abstract is a short section of a utility patent that concisely summarizes the invention. Preferably located after the claims, the abstract should commence on a separate sheet under the heading “Abstract” or “Abstract of the Disclosure.”

The purpose of the abstract is not to disclose all the details of the invention, but rather to provide a concise statement of the invention to enable readers to decide if they should read the patent specification for further details.

When preparing a utility patent application, the applicant should pay particular attention to certain rules regarding the abstract since it is one of the areas that often leads to errors and objections.

Why does the abstract of the disclosure matter?

Practically speaking, the patent abstract matters because of all the common pitfalls that can lead to further delay and costs. To avoid making those common mistakes, a few key rules should be following in preparing this short section of the patent application.

What terms should the abstract avoid?

MPEP 608.01(b) provides guidelines for preparing patent abstracts. Essentially, the abstract should be written in narrative form with clear and concise language.

There is a tendency to summarize the invention by simply paraphrasing an independent claim. While you may be able to get away with such paraphrases in the Brief Summary of the Invention [see MPEP 608.01(d)], such an approach can lead to an objectionable abstract.

The following are terms and phrases that should be omitted from the abstract:

  • “This disclosure concerns”
  • “The disclosure defined by this invention”
  • “This disclosure describes”
  • “means”
  • “said”

Furthermore, the abstract should not refer to merits or advantages of the invention, or compare the invention to the prior art.

What are key requirements for the abstract of the disclosure?

Besides avoiding the terms above, the abstract should contain no more than 150 words and 15 lines of text.

One of the most common issues with new US utility applications claiming priority to a foreign application is an abstract with over 150 words. In such cases, we recommend correcting the abstract upon the initial filing of the application to avoid an unnecessary Office Action and the resulting chores of docketing the deadline, reporting it to the client, filing a response, etc.

How should abstracts be written in foreign and PCT patent applications?

Perhaps, the easiest way to comply with US practice would be to draft an abstract in less than 150 words. No matter what language the foreign or PCT application is originally written in, keep the abstract brief. This can avoid the need for a Preliminary Amendment when filing a US national stage or direct priority application.

How to correct the abstract

If you are filing a new US application containing a conventional priority claim (Paris Convention), then the abstract can simply be revised in the specification itself without need to show markings.

If you are entering the US national stage of a PCT application, then a Preliminary Amendment with a marked-up version of the amended Abstract should be filed with the initial filing of the national stage application.

Is an abstract required?

Yes, an abstract is required. 37 CFR 1.72 sets forth the requirements.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
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Shiwei Liu
2023-02-20
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Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
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2023-02-20
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2023-02-16
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2022-09-09
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InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
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2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
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2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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