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.
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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.
For more information on patent application drafting please see:
- Describing an Invention in a Patent Application
- Patent Drawings and Invention Illustrations, What do you Need?
- The Key to Drafting an Excellent Patent – Alternatives
- The Cost of Obtaining a Patent in the US
- Patent Drafting: Identifying the Patentable Feature
- Patent Drafting: Thinking outside the box leads to the best patent
- The Importance of Keeping an Expansive View of the Invention
- Patent Drafting: Ambiguity and Assumptions are the Enemy
- Patent Drafting: Appropriately Disclosing Your Invention
- How to Describe an Invention in a Patent Application
- Patent Drawings 101: The Way to Better Patent Applications
- Understanding Patent Claims
- Patent Drafting: Top 5 Critical Things to Remember
- Patent Drafting: Not as Easy as You Think
- Completely Describe Your Invention in a Patent Application
- Software Patent Basics: What Level of Description is Required?
- Drafting Patent Applications: Writing Method Claims
- Turn Your Idea into an Invention with a Good Description
- Patent Drafting: What is the Patentable Feature?
- Patent Claim Drafting 101: The Basics
- A Guide to Patenting Software: Getting Started
- Does the term “Invention” in the Specification Limit the Claims?
- Working with Patent Drawings to Create a Complete Disclosure
- Patent Drafting: Describing What is Unique Without Puffing
- Patent Claim Drafting: Improvements and Jepson Claims
- Patent Drafting: Drilling Down on Variations in a Patent Application
- An Introduction to Patent Claims
- Patent Drafting Lessons: Learning from the Grappling Dummy
- Patenting Business Methods and Software in the U.S.
- Defining the Full Glory of Your Invention in a Patent Application
- Patent Drafting: Language Difficulties, Open Mouth Insert Foot
- The Key to Drafting an Excellent Patent – Alternatives
- Tricks & Tips for Describing An Invention in a Patent Application
- Patent Drafting: Defining Computer Implemented Processes