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Describing Your Invention Completely in a Patent Application

Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
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Posted: Jul 16, 2011 @ 12:02 pm
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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.

What is the structure of the components? What is the overall structure of the unit? How are things connected? How do they interact? How would they be made? How are the pieces assembled? What are the alternatives for making, connection, interaction? What materials can be used? What optional features are present? What could be present? These and other descriptive questions need to be answered in order to particularly define the invention.

Failure to consider the various combinations and alternatives that make up an invention is a fairly common mistake, but one that cannot be made without severe consequences.  If you do not fully describe the invention the patent application you file will will wind up be worth little.

Many times inventors believe the details and variations of their invention will be clear, and perhaps to some it would be clear. Even though the patent laws say you need only enable one who is skilled in the relevant field, it is always the best practice to try and provide a disclosure that would allow a reasonably educated person to understand what the invention is and how the invention can be made and used. This being the case, before you ever file a patent application, whether a provisional patent application or a nonprovisional patent application, take a critical look to see if someone who is unfamiliar with your invention would understand how to make and use the invention after reading your disclosure and reviewing any associated drawings. Also makes sure to describe the invention in a way that specifically describes your invention so that the reader will understand all the various permutations and that you are indeed in possession of all variations. In other words, you need to provide something of an instruction manual for making and using, paying particular attention to describing modifications, specific versions and alternatives.

It is also very important to explain with as much detail as possible, paying particular attention to unobvious or counter-intuitive steps, connections or limitations, paying particular attention to any preparations that may be necessary prior to beginning the making or using process. Perhaps you should try and describe your invention in words in a way that would convey meaning to someone who is blind. This is a tough task no doubt, but the goal of the written disclosure is to provide verbal description that is much like a step by step how to manual. If you are trying to describe your invention to someone who cannot see then you will invariably find creative and enlightening ways to verbally get your message across. This is the type of detail that should be in an application.

As you are describing your invention you want to be careful.  Many inventors will embark upon the onerous task of describing and then distinguishing the prior art.  This is not something that any patent attorney would do, although there are texts for inventors that suggest you do this very thing.  If you positively describe the prior art you will make admissions that will be difficult, if not impossible, to back away from later on.  You never say anything in a patent application or during prosecution that is not necessary.  If and when the patent examiner makes a rejection over certain prior art then you will need to distinguish that prior art from your invention.  You will, however, have the benefit of knowing what the rejection is and why the examiner finds it to be similar.  That will allow you to make crisp and direct distinguishing statements rather than making over-broad generalizations that might come back to haunt you.

Notwithstanding the cautionary note about prior art above, it is quite important for inventors to somehow articulate what the patentable feature and/or unique contribution the invention is making to the industry.  Why is it invention different and/or unique?  This should be explained in the text of an application because in order to obtain a patent an invention must be new (i.e., never before done) and it must not be obvious (i.e., not a trivial combination of things already known to exist in the prior art).  You don’t want to have the reader of your patent application left wondering why your invention is both new and why it is non-obvious.

First, what is unique about your invention?  What sets it apart from what is already available in the prior art?  Second, it is important to understand that in order to obtain a patent it is not enough that an invention be new and/or different when compared to the prior art, it must also be non-obvious, which means that one of skill in the art would not have thought to make the invention prior to seeing it described.  One of the common mistakes that many inventors make is that they spend a tremendous amount of time discussing common, everyday components, but fail to really focus in on those components, combinations or steps that really set the invention apart from the pack.

The recommendation here is that you specifically and explicitly mention that which sets your invention apart and will indeed make the invention patentable.  As with everything else in patent law, you do need to be careful.  I recommend that you stay away from saying things like “the only thing that makes the present invention unique is…”  Rather, consider saying something like “one of the things that makes the present invention unique is…”  The second alternative is only slightly different, but leaves the door open for you to argue later during prosecution there are other aspects that make the invention patentable.  The first alternative would likely be construed as an admission and could be very difficult, if not impossible, to get around.

Even if you never embark upon drafting your own patent application the better you can describe your invention the better the resulting patent application.  As the inventor you are the one who has the most information about the invention.  You know your invention best.  If you are going to hire a patent attorney to represent you the more you give them to work with the better the resulting patent application will be, which will undoubtedly make the patent ultimately obtained as strong and useful as possible.

Happy inventing!

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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 [...]

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