When inventors apply for a patent, they must set forth the utility of their invention and describe it. Which utilities and description meet the grade, and which don't? The U.S. Patent and Trademark Office (PTO) recently proposed new guidelines for its examiners. These guidelines were discussed in an article titled "Biotech Faces Evolving Patent System" in the last issue of The Scientist.1 PTO had not at that time published specific examples of how the guidelines would be interpreted. The office did so on March 1, issuing training materials replete with examples, most of which pertain to biotech (www.uspto.gov).
In focusing on the "genus" and "species" of a claimed invention, the written-description examples are legally and scientifically complex. They're best discussed with a patent agent or lawyer. The utility examples (www.uspto.gov/web/offices/pac/utility/utilityguide.pdf.) should also be explained by a professional but are generally more colorful and approachable. Here are some of their do's ...
