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Copyright & Patents/Invention claims and prior art



1) When writing a patent, is it necessary (mandatory) to describe all the technology, steps, methods, prior art etc related with the invention, or is it only necessary to describe the technology, steps etc related with the specific CLAIMS for which protection is sought?

Thanks very much in advance for any help.

ANSWER: You want to disclose what is relevant to what you are claiming. However, what you are asking is sort of tricky, as your invention is defined by the allowed claims. From that viewpoint, you must disclose all prior art relevant to your invention.

In case of doubt about prior art, you should list it as you want it considered by the examiner. If his missed something that was relevant, someone wanting to invalidate your issued patent could use it against  you. Err on the side of caution, would be my take on the matter.

The recent American Invents Act, also known as the Patent Deform act, makes it tougher to hold on to a patent when questions arise.

Best wishes on your project.

George H. Morgan
Patent Agent

---------- FOLLOW-UP ----------

QUESTION: Thanks. THats interesting. I hadn't heard of the American Invents Act.

If the invention depends on certain other known methods, when disclosing all relevant prior art, is it necessary to cite the specific incarnations of the prior art (i.e. specific inventions/patents) or can one simply explain the overarching function of the existing prior art without citing known inventions/methods?

The easy way to list all that is to download the Information Disclosure Sheet from and list the patent numbers, fill in the blanks such as inventor, publication date, and the relevant pages and/or figures. You do not have to go into great written detail.

Then, in the Background Information part of your specification, discus briefly, prior art attempted solutions to this big problem you see, and through in a boiler plate statement that "As is disclosed in the subsequent specification, the preferred embodiment of the present invention addresses these and other problems of the existing solutions." (I am quoting this from memory. David Pressman's "Patent It Yourself" may have better wording.)

If you have not perused "Patent It Yourself" by David Pressman, you should. It is an excellent "Cookbook". & also Edward R. Hamilton, Bookseller has an inventory of 13th Editions for under $8.00. Or, you can buy from Nolo Press in Berkeley, Ca., a 14th edition for approx. $42. However, the 13th will get the job done.

I hope this helps you.

George H. Morgan
Patent Agent  

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George H. Morgan, P.E., Patent Agent


U.S. Patent Law only, no copyright or trademark qualification. I was a volunteer in the past, but my homeland defense activities pulled me away at times, and I was dropped. If you want me back, I am willing to come back.


Thirty one years as a Registered U.S. Patent Agent and a lifetime in product and manufacturing process and methods development as well as sales and marketing of new products with a number of blue chip corporations.

Rotary, Society of Automotive Engineers, American Army Aviation Association, Registered Professional Engineer, St. Vincent De Paul Society, Indiana Guard Reserve Officer

Various Society of Manufacturing Engineers & Society of Automotive Engineers technical publications. Ref. my web site:

B.S. in Mechanical Engineering (Machine Design Option), L.S.U., Baton Rouge, Louisiana; M.S. in Mechanical Engineering (Heat Transfer and Thermodynamics Option), University of Missouri at Rolla, Missouri, Helicopter Maintenance Course, 18 weeks, Ft. Sill Army Aviation School, Troop Information and Education Leadership Course, Ft. Sill, Oklahoma, Numerous Society of Automotive Engineers Seminars, Dale Carnegie Management Training Instructors Course.

Awards and Honors
Bausch & Lomb Science Award, Indiana Homeland Defense Service Ribbon, 2003.

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