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Describing Your Invention Completely in a Patent Application

Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: Jul 16, 2011 @ 12:02 pm
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An updated version of this article was published on May 10, 2014, which can be found at:

http://www.ipwatchdog.com/2014/05/10/completely-describe-your-invention-in-a-patent-application/id=49497/

 

 

 

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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News


About the Author

is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

 

8 comments
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  1. Yes, and some of those advising universities, in particular, need to better understand why just slapping a provisonal application cover sheet on a reseach paper and filing it in the U.S PTO without any claims, or inadequate claims, is unlikely to provide a valid description of the invention, a valid filing date, or a foreign priority, for valuable and enforceable patent claims Especially since the Fed. Cir. has now made it clear that under 35 USC 112 just having an “enablement” of the invention in a patent application is not the same thing as having a “written description” of what IS the invention, and not just in the narrow scope of an enablement example.

  2. Paul,

    Amen to what you say. Many who aren’t patent attorney or patent agents are clueless regarding the stringent requirements of 35 USC 112, first paragraph, which still apply to provisionals. The 2002 case of New Railhead Mfg v Vermeer made that abundantly clear.

  3. Unfortunately, I think there may be patent agents and attorneys who are relatively clueless on this requirement as well.

  4. Joe-

    I hear what you are saying. I wonder though whether it is cluelessness or whether this is a function of representing inventors without much money and doing next to nothing. I’m sure there are some that are indeed unfamiliar with the intricacies of the law, but I think a far greater problem are those who charge very little and then deliver very little.

    -Gene

  5. The idea of fully disclosing how the invention is realised is also paramount in importance if you are considering filing your US application with the EPO. The European Phase requires a greater detail of disclosure of the invention then is generally necessary at the USPTO.

  6. [...] In July I wrote Describing Your Invention Completely in a Patent Application, which focused on the type of information you want to include to capture the full glory of your [...]

  7. [...] “In order for any patent application to be complete the invention must be described with great particularity. Many times an inventor will generally describe the invention in a patent application but will not describe the invention with the level of detail required by the patentability requirements.  There needs to be time spent describing the structure of the components that make up the invention, as well as the mechanical and electrical connections necessary for the components of the invention to fit together and ultimately perform the specified function.” Describing Your Invention Completely in a Patent Application [...]

  8. [...] I wrote Describing Your Invention Completely in a Patent Application, which focused on the type of information you want to include to capture the full glory of your [...]