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Legal Memorandum: Utility Patent for an Internet Business

Issue: Filing Requirements for a Utility Patent for an internet business.

Area of Law: Intellectual Property Law
Keywords: Utility patent for an internet business; Filing requirements
Jurisdiction: Federal
Cited Cases: None
Cited Statutes: 35 U.S.C. § 111, 112; 37 C.F.R. § 1.51, § 1.71(b); 37 U.S.C. § 1.96
Date: 06/01/2006

No federal statute or regulation specifically addressing utility patent applications for an Internet business have been located.  However, in general, every patent application must include three things:

(1)               a specification as prescribed by section 112;

(2)               a drawing as prescribed by section 113; and

(3)               an oath by the applicant.

35 U.S.C. § 111; 37 C.F.R. § 1.51.

Section 112 provides that the specification “shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and shall set forth the best mode contemplated by the inventor for carrying out his invention.”  35 U.S.C. § 112.  The PTO’s rules of practice in patent courts similarly requires that “[t]he specification must set forth the precise invention for which the patent is solicited, in such manner so as to distinguish it from other inventions and from what is old.  It must describe completely a specific embodiment of the process . . . invented, and must explain the mode of operation or principle whenever applicable.”  37 C.F.R. § 1.71(b). 

The closest analogy to a patent application regarding an Internet business relates to computer program listings. 

Descriptions of the operation and general content of computer program listings should appear in the description portion of the specification.  A computer program listing . . . is […]

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