Smith & Hopen Application Checklist:

This checklist is to be completed and signed by the drafting attorney in all nonprovisional patent applications without exception and included in the file.  Staff will print this document and paper-clip it onto the top of the file.  No application may be paper or e-filed without a completed checklist.

Title

• The title is broad enough to embrace any conceivable presentation of invention, e.g., apparatus, composition, article of manufacture, and method claims, if appropriate.

• If the application is a CIP or divisional, the title reflects the newly claimed invention.

• The title is short, preferably seven-words or less if filing in PCT.  Cross-Reference to related disclosure.

• All related application are identified by Title, Filing Date, Application No. and Name of Inventor(s).

• Application Status (divisional, continuation or CIP) is stated.

Background of the Invention

• The Field of the Invention is no more than two sentences.

• The Description of the Prior Art is concise, is free of extraneous matter, and has a coherent theme.

• The Description of the Prior Art is understandable by a judge, jury, or non- expert examiner.

• The prior art is described dryly, factually, accurately, and conservatively, and refrains from characterizing it.

• The Description of the Prior Art discloses and discusses the closest prior art.

• The Description of the Prior Art is a logical lead-in to the Summary of the Invention and the Detailed Description of the Invention.

• The Description of the Prior Art does not describe the invention.

• Government rights, if any, are noted in the specification.

Summary of the Invention

• The first paragraph(s) of the Summary paraphrases broadest apparatus and method claims only.

• Subsequent paragraphs, if any, describe features covered in dependent claims or more narrow claims and clearly indicate that these features are embodiments of the broad invention, and/or describe advantages of the claimed invention.

• All claims are rewritten in the summary of the invention providing an antecedent basis.

Brief Description of Drawings

• Every drawing is concisely and accurately referenced in the brief description.

Detailed Description of the Invention

• The Detailed Description starts with the following, or similar form paragraph:

In the following detailed description of the preferred embodiments, reference is made to the accompanying drawings, which form a part hereof, and within which are shown by way of illustration specific embodiments by which the invention may be practiced. It is to be understood that other embodiments may be utilized and structural changes may be made without departing from the scope of the invention.

• If appropriate for understanding of the invention, the organization of the Detailed Description is laid out immediately after the form paragraph noted above.

• The Detailed Description is coherently and understandably organized.

• The Detailed Description starts with a generalized overview and proceeds downward through intermediate levels of detail to the greatest detail.

• The Detailed Description refers to each embodiment as “one,” “example,” “exemplary”, or “illustrative” embodiment of the invention.

• The Detailed Description discloses all known unexpected results or properties, and such results or properties are conservatively characterized.

• The Detailed Description discloses all known advantages, and such advantages are conservatively characterized.

• For software cases, copyright notices and disclaimers pursuant to MPEP are included.

• Prophetic examples are distinguished from actual examples.

• The specification enables each claimed invention.

• The best mode is disclosed for each claimed invention.

• The specification concludes with a recap of the major features and advantages of the inventions disclosed.

Drawings

• The drawings include copyright notices for software/data cases.

• The drawings show all apparatus claimed.

Claims

• Key definitional terms are defined in the specification.

• The Detailed Description aptly and broadly defines all of the above-noted key terms unless the meaning of a term is fully self-evident.

• Key terms are used consistently in the Detailed Description.

• The claims with the broadest concepts do not include unnecessary limitations.

• With respect to each of the broad claims, the Detailed Description discloses an alternate embodiment and/or a range of equivalents.

• Each group of each type of claim included in the case (i.e., method, machine, composition of matter, and apparatus (article of manufacture)), has an independent claim and claims dependent thereon.

• Some of the key dependent claims identified above are used to broaden their respective base claims using the doctrine of claim differentiation.

• No Jepson-style claims are included unless justified, and preamble material is unquestionably prior art.

• Dependent claims refer to important distinguishing features/essences, and not to obvious matters of design choice unless presented for the purpose of claim differentiation.

• At least one claim covers the commercial embodiment of the invention in the form in which it will be sold or used.

• One or more claims are written not for breadth but to establish a broad royalty base on an assembly or system level.

• Method claims include dependent claims making it clear that steps can be performed in an order different than that presented.

Abstract

• Does not exceed 150 words.

• Does not use “legal” words such as “said” or “thereof” etc.

Overall

• The application and drawings are free of typographical errors and passive voice

• The application is uniformly formatted.

• Tables in the specification have no merged cells that would generate errors on ePave.

• The version of the application is noted in ascending numbers (i.e., nonprovisional draft v100, nonprovisional draft v101, etc..).

• Combined Declaration and Power of Attorney is prepared and ready to be transmitted with first draft.

Prepared by: ____________________  Date: ___________

Reviewed by: ____________________ Date: ___________

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