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Working with Patent Drawings to Create a Complete Disclosure

Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: Feb 9, 2013 @ 9:15 am
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When filing a patent application it is extremely important to make sure that the invention is as fully described as possible. Patent attorneys say this all the time, but what does it really mean? How do you “fully describe” an invention in a patent application?

The answer is that you always want to have as much information about the invention as possible. You want to very broadly and generally describe the invention, but you also need to have high specific discussion of the various nuances of each and every aspect of the invention. Frequently inventors will say to me, “but I don’t want to be highly specific because then it will be easy for someone to get around my invention.”  This is typically following with a very confident: “Therefore, I will only generally describe my invention without mentioning to many specifics.” That is a tragic mistake.

What happens if the patent examiner finds the broad, general description of your invention to be in the prior art? If you don’t have nuances described in your specification what will happen is you will get a rejection that is impossible to overcome. Those nuances are going to be how you distinguish your invention over the prior art, both the prior art you know about when you file but more importantly the prior art that you didn’t know about and couldn’t have known about because it hadn’t yet been published prior to your filing.

What this means is you want to have a general description of your invention, a very specific description of the complete version of your invention with all the nuances, and any number of versions of your invention in between. So you don’t want only general, you don’t want only specific. You want to “book end” your description with the general and the specific and then in between explain the various options, combinations and characteristics that make up numerous different versions of the invention.

Let’s talk in terms of an example. Below are two illustrations of a hamburger, courtesy of Autrige Dennis of ASCADEX Patent Illustration Services. I use Autrige for drawings and I have always found him his drawings to be very good. His prices excellent and his turn around time is exceptional. He is not an advertiser, just a friend. I have no reservations about recommending him.

The single most effective way to expand any disclosure is to include high quality drawings. In many patent applications there just are not enough drawings provided. Drawings are truly worth 1000 words, and they are quite cheap given the overall importance to your disclosure. A sheet of drawings typically ranges between $50 to $125, with slightly higher prices charged for design patents.

The first figure (see left) is what is referred to as an exploded view. The pieces and parts are dangling in space, but you can see how they will all fit together. This can be an excellent way to show how a device with numerous pieces and parts is assembled. Notice in this drawing the elements are labeled. When you file an application that is now how you file drawings. You would just have reference numbers, but for sake demonstration I asked Autrige to give me drawings with the labels attached. He also created formal drawings that could be filed in an application if you want to see what those would look like.

What you are looking at here is something that is similar to a Big Mac because it has two beef patties, which are identified by reference numeral 10. It isn’t quite a Big Mac through because there is no special sauce, and there are tomatoes 18 added.

Having a drawing like this makes it easy to describe the hamburger, but it also makes it easy to describe more than what is shown in the drawing. Allow me to illustrate. In a patent application you might describe this drawing as follows:

“Fig. 1 shows a particular version of a hamburger sandwich. In this particular embodiment the hamburger sandwich is shown with a top bun 4 having sesame seeds 2 and a bottom bun 20. Ketchup 22 and Mayo 14 are mixed together and spread on the inside surface of the bottom bun 20. Lettuce 12 is placed on top of the Ketchup/Mayo slurry. Cheese 8 is placed on the Lettuce 12 and Tomatoes 18 are placed on the Cheese 8.”

Let’s stop there for a second. Notice what we are doing is relying on the drawing to allow us to explain how this particular version of the invention that is being showed is put together. But notice how the way that I have described things so far is extremely mechanical. But what if I don’t want to limit the invention by requiring all of these components? Or what if I want to include Mustard or Special Sauce? Well, let’s not refer to it as “Ketchup” and “Mayo,” but instead a “first condiment” and a “second condiment.” Notice also how I switch up to make the order of things matter less. Attempt two goes as follows:

“Fig. 1 shows a particular version of a hamburger sandwich. In this particular embodiment the hamburger sandwich is shown with a top bun 4, which is shown here as having sesame seeds 2 and a bottom bun 20. The sesame seeds 2 on the top bun 4 are optional. Instead of the optional sesame seeds 2, the top bun may have poppy seeds thereon (not shown). In still a further version, the top bun 4 may have a mixture of sesame seeds 2 and poppy seeds, or even be plain.

“A first condiment 22 and a second condiment 14 are shown spread on the inside surface of the bottom bun 20. These first and second condiments are optional, and there is not an upper limitation on the number of condiments that can be employed, although only a first and a second condiment are specifically shown. However, at least one condiment must be used. Particularly suitable condiments may include ketchup, mustard, mayo, barbeque sauce, hot sauce and/or buffalo sauce. In some instances chocolate, peanut butter and/or fluff may be used as a condiment. In one particular version of the invention the first and second condiments are different (i.e., ketchup and mayo). In another particular version of the invention the first and second condiments are the same (i.e., double ketchup).

“Fig. 1 then illustrates Lettuce 12, Cheese 8, Tomatoes 18 and a first beef patty 10 be placed on top of the one or more condiments. These items may be placed on top of the one or more condiments in any order. The Lettuce 12 and Tomatoes 18 are optional. While two slices of Tomatoes 18 are shown, a single Tomato slice may be preferable.”

There are a couple things to notice about the second alternative description of Fig. 1. First, notice that I made at least one condiment required. There is no right or wrong answer here really, but it is essential that you identify something as mandatory only if it really is mandatory. How do you know if something is mandatory? If it needs to be there for the invention to work it is mandatory. If it needs to be there in order to make the invention different than the prior art then it is mandatory. In reality, few things are typically mandatory and most things should be identified as optional or permissible.

Second, notice how I describe things that are not shown in the drawing. Drawings are excellent because they give you a specific vehicle to describe, but as you are describing the drawing you will likely find that there are things that are not show in the drawing or which could be different. Do you need a separate drawing? Sometimes the answer will be yes, you should have a separate drawing. But do I need a separate drawing to say that the sesame seeds could be poppy seeds? No, probably not.

I am not going to suggest that this description of Fig. 1 is perfect, but hopefully you get the idea. So far we have only described one little part of Fig. 1 and we are already at 3 paragraphs. Can you imagine if we started to discuss the various types of Cheese 8 by listing Munster, Provolone, American, Swiss, etc. etc.? You could do the same with the Lettuce 12, and might even mention that as an alternative to Lettuce you might use Spinach (not shown). Alternatively you might use both Lettuce 12 and Spinach (not shown). Then there are all kinds of different Tomatoes as well. Of course the beef could be 73%, 80%, 88%, 90%, it could be black angus beef, certified, no-antibiotics, grass-fed, etc. etc.

The moral of the story here is that even for something simple like a hamburger you can go on page after page after page to include all kinds of additional information, variation and nuance. We haven’t even discussed how it could be cooked (i.e., fried, flame broiled over a gas grill, flame broiled over charcoal, etc. etc.) The burger could even be baked! Yes baked! You can include anything that will work, no matter how crude. If you don’t include it then it isn’t in your disclosure and it isn’t yours. So include absolutely everything you can think of. The more the better. You never know what you might need in order to convince an examiner that your invention is new and non-obvious.

Once you have milked Fig. 1 for all it is worth, then move on to Fig. 2 (which could be the drawing at the top of this article) and so on.

If there was something unique about the way you cook the burger you might want to include a drawing or even sequence of drawings that show the cooking and/or preparation. So now you hopefully are starting to understand what it is that your patent attorney or patent agent will do. Of course, you are the inventor and the more prepared you are to work with the patent attorney the easier and smoother the process will be.

Happy inventing!

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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles, Patent Drafting, Patents

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.

 

 

11 comments
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  1. An important article; especially for the independent inventor.

    Take it from me, when you’re writing your specification, spill your guts about your invention. Include everything you can think of. Everything. Variations. Options. Alternative embodiments. Details. Even if you think they’re silly; or that no one would ever use/want them. Review other patents and applications both in your invention’s technology field — and related to its field — for more ideas. Think. Research. Write. Think. Research. Write. And think, research, and write some more.

    And as you say Gene, Autrige’s great. Did some drawings for me last month.

    Quick, responsive, easy to work with, excellent work, very fair pricing.

  2. Your article uses the magic word: invention.
    2nd ¶, 112 states the spec ends with one or more claims claiming the subject matter that the inventor regards as the invention.
    If you put the “invention” any place other than the claims, you are asking for trouble.
    You can have lots of “disclosure”, you can have processes and manufactures and machines and compositions of matter in the spec and you can have many variations or embodiments of each, but you better not have inventions in the specification other than in the claims.
    That is why in the old days prosecutors were trained to write the claims first.

  3. John Roethel-

    Your comment is simply wrong.

    First, I will point out that you obviously didn’t read the article very carefully. You talk about the article using the word “invention” in the claims. There is no claim mentioned or provided in this article. The article is about the specification. So it makes it difficult to take your commentary seriously when it is obviously about something other than the subject at hand.

    Second, you say: “you better not have inventions in the specification other than in the claims.”

    That is 100% false. The specification can and frequently will and really should be broader than the claims. This happens in many instances throughout patent law and the fact that you seem unaware of that is a little disturbing. First, it happens when a restriction is given. Second it happens when the overall invention is a complicated system, for example, and the initial claim set focuses on an aspect of the disclosure.

    Finally, you say: “that is why in the old days prosecutors were trained to write the claims first.”

    We have this discussion here all the time and many, like you, feel there is only one way to write a patent application. That is your opinion and you are free to have your opinion. It is, of course, wrong. Based on your comments here and the erroneous comment that the specification cannot be broader than the claims it would seem that you are one of those who writes claims and then writes the disclosure to cover the claims and nothing more. That is how bargain basement providers can charge $1,500 for a nonprovisional patent application. It is also a recipe for abandoning an application after the first office action because there is nothing else to add to the claims from the specification. Any inventor that follows your advise is setting themselves up for disaster.

    -Gene

  4. I find your reply hostile. My point is that the “invention” is defined by the claims.
    You have misinterpreted my comments. And I object to your characterization of my opinion as wrong.
    Best wishes with your blog.

  5. John,

    You’re not the only one who finds Gene’s reply hostile. His rush to criticize you makes him look bad and calls into question his critical reading abilities.

    The point you actually made is well-taken: don’t use words like “invention” in the specification because they *may* be used by someone trying to import limitations from the spec into the claims.

    And you have my respect – you’ve been registered with the PTO longer than I’ve been alive. I doubt you’re one of the “bargain basement providers” that Gene is so eager to lambaste.

    -Michael

  6. John-

    So what do you mean when you say: “you better not have inventions in the specification other than in the claims.”

    What do you mean when you say: “If you put the “invention” any place other than the claims, you are asking for trouble.”

    There is nothing wrong with using the word “invention,” despite the many who protest. The cases that discuss what you seem to be trying to raise are cases where the term “invention” is used and only a particular subset of limitations is used. For example, when “the invention” is articulated as always having core components or never articulated as having anything other than core components.

    -Gene

  7. Michael-

    We can have this debate if you want, but if we are going to have this discussion on a post that is clearly intended to educate inventors then we have to have it in its full glory and not make any assumptions. Read what John wrote. Would what he wrote be comprehensible by a novice inventor? No. As a matter of fact, not only would the meaning not be comprehended the exact opposite meaning, indeed an incorrect meaning, is the most likely message received.

    Really, what do you suppose an inventor would think when reading: “you better not have inventions in the specification other than in the claims.” I understand what he was probably trying to say, but there were a lot of missing parts and overstatements that were incorrect, as I pointed out.

    With respect to your comment, is it is your contention that using the word “invention” in the specification will lead to limitations being read into the claims despite the law that says limitations are not read into the claims from the specification? Obviously not, because you say “may be used.” So let’s explore the law with respect to when “the invention” is may be used to limit and compare it with what I wrote to see if what I wrote is incorrect and I needed to be chastised for using the term “invention” in a patent application.

    The cases you are relying upon assert a proposition typically used out of context to mean far more than what they really say. The cases you are thinking of all have a very specific set of facts. It would be interesting for you to compare those facts with what I wrote and explain why it is that you think it is appropriate to criticize what I wrote.

    In the illustrative text to explain how an inventor can work with drawings I used the term “invention” that you and John seem to have such problems with twice. I wrote:

    “In one particular version of the invention the first and second condiments are different (i.e., ketchup and mayo). In another particular version of the invention the first and second condiments are the same (i.e., double ketchup).”

    Here you will notice that the term “invention” is not used to denote any specific or particular “invention.” The cases you and John are thinking of are quite clear. The specification repeatedly makes reference to a core set of limitations as “the invention.” In those applications “the invention” is never articulated as being anything other than the same core set of limitations.

    To the contrary, the exact opposite is done here, as evidenced by “in one particular version …” Elsewhere in what I wrote you will see “In this particular embodiment…” Thus, the cases that caution against the use of “the invention” are not relevant. So why bring them up if not to merely make me look bad?

    If you want to write applications that obfuscate the reality that there is an invention, whether with a singular embodiment or many embodiments, that is fine. Go for it. But there is nothing wrong with using the term invention in a patent application. If the law ever were to be “don’t use the word invention in a patent application” we really all ought to question what it is that we are doing and whether patent law as a whole has jumped the shark.

    -Gene

  8. I am going to write about this more in the coming days, but I just found this, which is a good summary:

    http://www.matthewspatentlaw.com/2011/04/%E2%80%9Cpresent-invention%E2%80%9D-statement-did-not-limit-claims/

    There is nothing inherently evil about talking about “the invention” in the specification.

    -Gene

  9. Michael:
    Thank you for your kind words. I agree with your interpretationn of the current state of the law regarding the use of the word “invention.” You explained it more articulately than I.

  10. [...] and now is an article I wrote and published on Saturday, February 9, 2013. The article is titled Working with Patent Drawings to Create a Complete Disclosure, and in the article I discuss the importance of fully describing an invention, including any and [...]

  11. Picking up on this discussion I wrote this article which was published earlier today:

    http://www.ipwatchdog.com/2013/02/13/does-the-term-invention-in-the-specification-limit-the-claims/id=35240/

    It explains that the law is quite clear. There is nothing wrong with using the word “invention” or “present invention” in the specification. Those terms do not limit claims. What limits claims is narrow disclosures that are poorly drafted and only articulate a single version of the invention. But that is, of course, limiting regardless of the use of the word “invention” or the phrase “present invention.”

    -Gene

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