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Turn Your Idea into an Invention with a Good Description

Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
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Posted: Sep 1, 2013 @ 7:29 pm
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Previously 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 invention.  This article is a follow-up to that, focusing this time on what the law requires and why, concluding with suggestions to help in breaking through the idea and getting to something more tangible.  Reading these two articles in conjunction should give a more complete understanding of what is required and how to get from idea to patentable invention.

I start this tale observing a central reality: Inventors are creative people who observe a problem and envision a solution.  Practically anyone can be an inventor because the first step on the path to inventing is the generation of an idea.  Unfortunately, ideas cannot be patented and for many individuals the path to invention stops right there.  But it doesn’t have to stop there.  Frequently you just need some help collecting thoughts and a little push in the right direction.  In fact, many people are surprised by what is required to be an inventor and have an invention that is capable of being patented.

One thing that many individuals and professional inventors employed by corporations (i.e., “kept inventors”) have in common is that they frequently do not perceive what they have come up with as worth patenting.  So many have the idea that a patent is something that gets awarded to breakthrough innovations, when in fact it is far more common to have a patent awarded to an improvement on an existing product.  If you can improve upon something, there is already a market in existence for the underlying product and consumers will perceive your improvement as worth paying for then you very well may have a winning invention.  Certainly, you are much farther along the path to success with that trifecta.


While it can be quite useful to have some kind of a prototype, even a crude prototype that you create yourself, there is no requirement that a prototype exist before you file a patent application. This statement catches many by surprise and they think it has to be incorrect.  It is only a slight exaggeration.  The rules of the United States Patent and Trademark Office say that the only time you must produce a working prototype is if you are claiming a perpetual motion machine.  Our current understanding of science says that a perpetual motion machine cannot exist, and the USPTO has gotten sick and tired of inventors claiming they have invented a perpetual motion machine.  So as long as you are not going to claim a perpetual motion machine all you have to do is describe your invention in writing, through the use of text and illustrations, so that others can understand what you have and how to make and use it. See The Patent Law of Perpetual Motion. You may also find that proof on paper with 3D modelling is also enough to even license your invention (see What Drawings do you) But let’s stick with a patent discussion for now.

There are, in fact, four primary patentability requirements.  An invention must be patentable subject matter, it must be useful, it has to be novel (i.e., new) and it must be non-obvious.  If you satisfy these four substantive patentability requirements you are entitled to a patent on your invention so long as you adequately describe the invention.  The law that governs adequate description is found at 35 USC § 112.

In reality, it is probably better to think of the description requirement as the core to patentability.  If you can describe your idea with enough specificity you no longer have an idea, but rather have migrated past the idea-invention boundary, which means you have something that can be patented if it is unique. Thus, the real first task for an inventor is to describe what it is that they have created, which is easier said than done, but the more tangible you can make the description the more likekly you have crossed over the idea-invention boundary and have an invention, not merely an idea.

The Invent & Patent System is a system I created which you may find useful to help you collect your thoughts about your invention. It is a mentored way to create a patent disclosure and it leads the inventor step by step, coaching and coaxing along the way. This is a good way to collect thoughts and start to put meat on the bones of an invention, particularly if you are struggling to do so.

Principles of Describing an Invention

The crux of this so-called adequate description requirement is that once the first four patentability requirements are satisfied the applicant still must describe the invention with enough particularity such that those skilled in the relevant technology will be able to make, use and understand the invention that was made by the inventor. For the most part, and from a legal perspective, this requirement can be explained as consisting of three major parts. First is the enablement requirement, next is the best mode requirement and finally is the written description requirement. The purpose of this article is to give you a basic understanding of the legal concepts and principles at play. For more information specifically on how to draft a description please see:

About the Enablement Requirement

The enablement requirement requires the inventor to describe his or her invention in a manner that would allow others in the industry to make and use the invention. Enablement looks to place the invention generally in possession of the public.  In the words of the great Thomas Jefferson, we are only going to suffer the embarrassment of granting a patent and subjecting ourselves to exclusive rights if the public gets benefit.  The benefit is the information and ability to make and use your invention once the patent term has expired.

The purpose of the enablement requirement is to ensure that the invention is communicated to the interested public in a meaningful way. The information contained in the disclosure of an application must be sufficient to inform those skilled in the relevant technology field how to both make and use the claimed invention. Detailed procedures for making and using the invention may not be necessary if the description of the invention itself is sufficient to permit those skilled in relevant technology to make and use the invention.

In other words, you do not necessarily need to provide blue-prints or idiot-proof description. In fact, in many cases you don’t have to provide even the level of detail that would exist in an instruction manual.  But there is a difference between what the law requires and what is considered best practice and wise.  Indeed, you are always better off shooting for the maximal level of detail. The more you describe the broader your rights can be, and assuming that others will understand what you have disclosed is never wise. Even if you disclose everything you possibly can once the patent examiner starts working on your application you will likely wish you had explained a little more, or explained things in a slightly different way so as to more easily overcome prior art located. That reality means that striving for more rather than less disclosure is very wise.

The Best Mode Requirement

The best mode requirement requires the inventor to disclose his or her preferred way of carrying out the invention at the time the patent application is filed. There is no requirement that the inventors preferred embodiment be updated as the patent application works its way through the PTO. Best mode looks to whether specific instrumentalities and techniques have been developed by the inventor and known at the time of filing as the best way of carrying out the invention. Since the enactment of the America Invents Act on September 11, 2011, the lack of best mode cannot be used to invalidate patent claims once they are issued, disclosing the best mode is still technically required even if patent examiners really could never know what preferences an inventor actually had. Still, it is the best advice to always tell you patent attorney what preferences you have. Typically you will want to disclose the best mode so that it can be a part of one or more claims.

The Written Description Requirement

The written description requirement is also found in the first paragraph of 35 U.S.C. §112. The written description requirement is separate and distinct from the enablement requirement, although related in important ways. The written description requirement serves a teaching function, as a “quid pro quo” in which the public is given meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time.

Still confused as to what this means? If you are confused you are understanding well. To be sure, the definition of the written description requirement is quite elusive. For generations the written description requirement had been confined to making sure that what was originally filed in the patent application adequately defined the full parameters of the invention being claimed. Today, the written description requirement means much more, but the Federal Circuit has yet to be able to articulate the requirements in what I would call an easy to understand way. Some commentators have called the new written description requirement a super-enablement requirement. The Federal Circuit has dismissed this, but has yet to really offer a simple, understandable test of their own. Given this uncertainty and lack of judicial clarity the best thing to do to meet this requirement is to define your invention with as much specificity as possible.

Perhaps the key to understanding the difference between enablement and the written description requirement is that you can bootstrap knowledge of one of skill in the art into your application for enablement purposes, but no such bootstrapping is allowable under the written description requirement. When you are describing your invention we look to see if you are enabling one of skill in the art to understand how to make and use the invention.  You can describe things in terms that the relevant audience will understand.  For example, if you create an H.G. Wells time machine there are only a handful of people on the planet who will have any chance of understanding the invention.  So you can describe the physics involved leveraging the information they already possess on the subject.  No need to start with momentum, jump straight to quantum mechanics and beyond.



For written description, however, you cannot bootstrap knowledge of one of skill in the art into your patent application.  This is because at its core the function of the written description requirement is to tell the world what you have actually invented.  If you leave something out of your disclosure and someone else recognizes that you have left it out then your rights do not include what others perceive as missing.  The written description requirement is a so-called “4 corners” requirement.  Whatever you disclose within the 4 corners of the patent application is what you possess, nothing more.  Leave it out and it is not yours even if it seems clear you accidentally left something out.

The written description requirement is also what the patent law uses to make sure that you are not claiming more than what you really have invented.  Where does certainty end and speculation begin?  We want to give rights to those things that are useful, new and non-obvious, but if and only if they are certain.  Samuel Morse (of Morse code fame) sought a patent on every use of electromagnetism.  What he invented, however, was a revolutionary device that utilized electromagnetism to relay messages across very long distances.  So he received a patent on the specific implementation, not the theoretical.

Conclusion

This article started off by saying that many times people don’t realize that they are already inventors, and stating the reality that all you have to do is describe what you have so others will appreciate it in its full glory.  While you hopefully have a better understanding of what that means from a legal standpoint, it still begs the question about how one can accomplish that in life and move past the idea to something the law will recognize as an invention.

Like anything in life that is new, whether it be returning to exercise after a lengthy hiatus or learning a new language, you have to walk before you can run.  Put one foot in front of the other.  Too often I see inventors who come up with the idea and want to cut through the middle steps and file a patent application.  If they skip the middle steps then they likely don’t have an invention, they can get frustrated and give up. Anyone can have an idea, but those who work to put meat on the bones and put flesh on the idea are the ones who can claim the mantle of “inventor.”

In addition to The Invent & Patent System, another good way to move forward is to sketch the invention. Quality patent drawings are worth a thousand words and much more.  The best part of drawings is that they are extremely cheap compared with the cost of creating a prototype.  In fact, a patent illustrator typically charges between $50 to $100 to prepare a page of patent drawings.  That can be the best investment you will ever make.  Similarly, working with someone who can create 3D renderings can be extremely helpful.  On the path to creating a 3D rendering CAD drawings will be created, which can then be used to create line drawings suitable for a patent application.  The 3D renderings can also be used for things like sell sheets provided to potential buyers and potential licensees.  While 3D renderings are more expensive than patent drawings, they are far cheaper than prototypes.

The moral of the story is that inventing is not rocket science; inventors are those with persistence and a plan. Spend time little by little working the idea, describing what you have in text, thinking about the various alternatives and then get some drawings.  This step by step approach to inventing will get you from idea to invention, putting you in possession of all the information you will need to file a patent application and attract customers and potential licensees.

For more information on drafting patent applications please see:

 

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


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.

 

 


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15 comments
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  1. US patent 6025810 is a (hopefully unusual) example which demonstrates that not all US patent examiners consider enablement to be a requirement. (Nor did the examiner find a prior art reference in an episode of Star-Trek…).
    I find it very helpful when inventors stuff their description with improvements which they do not consider worth a patent. It serves as valuable prior art when others try (and succeed) to patent the screamingly obvious.

  2. I have to wonder if Benny would find it very helpful if the inventor had claimed his rights fully, or if, as it appears, Benny is only happy because he sees value gained without reciprocal reward (that is, to put a sharper point on it: Benny is celebrating someone else’s innovation and is not celebrating any new innovation that would stem from coming from work-around efforts, and is not celebrating actually rewarding an inventor fully).

    Or is this non-appreciation screamingly obvious?

  3. Anon,
    You don’t get it. I work in the appliance industry, and most of the patent applications I read in this field are either simple improvements on a simple idea (such as a different shaped clip to hold a filter) or translations of existing ideas from other fields (a virtually identical clip is used on a lawnmower, they now put it in the dishwasher). Nothing that any competent engineer wouldn’t think up in 5 seconds. This has nothing to do with innovation and everything to do with stifling your competitors. A lot of these applications end up as granted patents becasue they seem to be judged merely on their novelty – and then only in comparison to published patent applications, when the prior art is actually on the shelf in Home Depot. The examiners notion of a PHOSITA is, apparently, the local village idiot and not a high school graduate.
    By the way, Anon, my name’s Benny. Whats yours?

  4. Benny-

    The problem you are describing is not one of enablement, but rather one of obviousness.

    How do you go from saying that examiners don’t consider enable a requirement to complaining about things that seem trivial to you?

    Also, how often since September 16, 2012, have you submitted a third party submission for the patent examiner to consider in the cases you deem ridiculous?

    -Gene

  5. Gene,
    I raised 2 independent topics. I mentioned US6025810 as a comic curiosity.
    As to your last question, the answer is , once. I don’t have time for all the silly applications. I wish I did. I find prior art searching a stimulating and interesting occupation.

  6. Benny,

    First, please drop the fallacy that is inherent in your comment “By the way, Anon, my name’s Benny. Whats yours?” It only shows that you are weak and feel the need to ‘attack’ on a non-relevant point.

    Second, your statement of “I don’t get it” is not supported here.

    Period.

    Try to structure your responses with a minimum of logic and understanding. You do not address a single item I bring up, and merely wish to substitute a strawman argument that you feel strongly about. By doing so, it is you that shows that it is “you [that] don’t get it.”

    Your second paragraph in post one above shows more than you may have cared to disclose. I am addressing your actual bias in my reply.

    Yes, it is a lawyerly thing to do, to be able to critically examine what you say, and develop the record in more pertinent detail. That skill actually started in my engineering days, in being able to critically review problems (and not just ‘throw out’ errors). That skill transferred well to my law career when I added the knowledge and understanding of patent law to my technical skills, knowledge and experience.

    I suggest that you take some time and effort to think through and present your views, instead of doing so in a knee-jerk fashion. If you want to be in any way persuasive, you will need to present your views with more care.

  7. Benny-

    If you don’t have time for silly applications then exactly what right do your clients have to complain about bad patents allegedly stiffling innovation given that there is a mechanism for you to take matters into your own hands? Moreover, it is free to submit references.

    Eventually the industry will wise up. Trademark owners review applications and file to challenge things that are too close. It will be difficult, if not impossible, to accept the complaints of those who don’t engage in the system in a responsible manner to prevent bad patents from issuing when they could have.

    -Gene

  8. The correct view of a patent specification is that it is just a peer-reviewed publication with attitude.

    So inventors should treat their patent attorneys with the same level of preparation and attention to detail that they would employ if they were writing up their ideas for publication in a journal or magazine aimed at those skilled in the art.

    That includes describing the work done, providing drawings or examples, including what is known about the earlier work of others, and considering how the invention might be turned into a practical product.

    My father used in the late 1950’s and early 1960’s to make and fly radio controlled model aircraft, and at that time I had a close interest in radio and electronics. It is astonishing how detailed and well-prepared plans for the models were, how well they were described, and the same goes for build-it-yourself radio projects and other electronic products that I was able to construct.

    If you look up the patent specification for the Windsurfer, it is striking how incomplete the description and drawings are. Very little detail, almost nothing about construction, no hull drawings or sections, no dimensions, little detail about the sail, and almost nothing about the materials the Windsurfer hull might be made of, how it might be constructed, and what its dimensions and weight might be. If the same disclosure had been given to the editor of a modelling magazine, he would have explained the need for proper plans and details with reference to other articles that he was publishing, and would have told the inventors to go away until they had done a proper job in describing the craft that they had designed and made.

    If inventors write up their ideas so that they are fit for peer review and might be published in a journal, and then go and see their attorney, they will be on their way to good patent protection. If they cannot bother to do that, then they would be better advised to stay away from the system altogether.

  9. Gene and Anon,
    We are not in a court of law here, I thought this blog was a place where inventors and patent attorneys could share their (differing) views on a friendly basis. If this is not the case, drop me a hint and I’ll shut up. Anon, (I was just curious as to why you won’t reveal your name) I will address you points now, since you asked me to.
    Most engineers don’t believe they have an exclusive “right” to each and every idea that pops into their heads almost every working day. The solution to a problem that occurs to one engineer would occur to any other faced with the same problem. I’m not talking about innovative inventions, which R&D labs work hard on – I’m referring to the “method of attaching a knurled flange bracket” type of patent application which is the outcome, sometimes, of little more than 5 minutes chit-chat at the water cooler. Let me make it clear – my company, and my companys’ competitors, file patent applications of this sort for the express purpose of boxing in the competition. Few of these applications are genuine innovations.
    Gene, we do take action when we see an application which could directly affect one of our products. Very often we see applications in the field which don’t affect us becasue we don’t manufacture similar products. We just hope the USPTO will do their job and throw it out. Sometimes they do, sometimes they don’t. These patents stifle competition, not innovation, Gene.

  10. Benny (aka Battar)…

    We are expressing different views on a friendly basis, but that doesn’t mean I won’t call you out when you are incorrect or being hypocritical. It is flat out hypocritical to complain about bad patents stiffling innovation when you do nothing to prevent the preventable. So based on your actions, and the actions of so many like you, bad patents can’t be very much of a problem at all given that no one does anything to stop them.

    You say: “The solution to a problem that occurs to one engineer would occur to any other faced with the same problem.”

    That is flat out false and you either know it or should know it. Not really sure how to engage in a friendly debate if you are going to cling to a completely fallacious premise like that. So let me just demand you prove the statement.

    You say: “These patents stifle competition, not innovation…”

    And exactly what is the problem with that? After all, stifling competition is the EXACT point of a patent system. It is absolutely fundamental and why investors demand patents before investing. Without a competitive advantage why spend hundreds of thousands of dollars to bring even a simple gadget to market? Why spend the millions, or billions, necessary for complex innovations without a competitive advantage? It seems your beef is with a patent system altogether, which isn’t particularly surprising given your comments.

    -Gene

  11. Paul-

    You say: “inventors should treat their patent attorneys with the same level of preparation and attention to detail that they would employ if they were writing up their ideas for publication in a journal…”

    BRILLIANT! I love it. I agree completely!

    I hope all is well.

    -Gene

  12. Benny, you are drawing my ire with your insistence on posting without thinking.

    We are not in a court of law here… why you won’t reveal your name

    Care should be taken regardless of a court of law setting or not. Even in engineering. Here, this is not merely engineering that we are discussing but a very particular section of law heavily populated by former engineers (like myself) and others with technical knowledge and expertise AS WELL AS legal training.

    I have in the past explained and defended the use of pseudonyms. It is a time honored tradition, and your implication was that somehow this lessoned the validity of my post.
    Such does not.

    The other implication was that somehow your post is more valuable since you are willing to put your name to it.
    Again, such does not.

    Most engineers don’t believe they have an exclusive “right” to each and every idea that pops into their heads almost every working day. ” and

    Let me make it clear – my company, and my companys’ competitors, file patent applications of this sort for the express purpose of boxing in the competition.

    What a typical engineer believes? It seriously seems that you have no clue that this is a legal forum, or for that matter that a patent is a legal right. As an engineer I am horrified for your lack of appreciation of what basic ground rules are in play and that you seem oblivious to these basics.

    Further, are you aware of what the oath is that you take when you file these patents you profess here not to be actual inventions? It is difficult to take you seriously if you have so little care of the ethics and integrity involved with the process as you indicate.

    These patents stifle competition, not innovation

    Once again Benny, you mistake the ability to copy with innovation. You are not innovating if you are merely doing the obvious – whether or not someone has a patent on what you are calling obvious.Innovation is not copying the obvious, and thus innovation cannot be stifled – even by patents on what you would call obvious.

    I asked you to stop and think about your replies and what you are attempting to accomplish. If this is the fruit of your thinking, I see what type of engineer you are – and I would fire you on the spot. Sorry, Benny, but your carelessness and lack of thinking makes for a poor engineer, let alone an innovating engineer.

  13. A great article on the description needed to properly make an application. I would probably have put in a little section on definiteness, as you want to ensure that your description you provide will be sufficient for you to be able ultimately claim definite boundaries even when amending. But overall quite good.

  14. “A lot of these applications end up as granted patents becasue they seem to be judged merely on their novelty – and then only in comparison to published patent applications, when the prior art is actually on the shelf in Home Depot.”

    The PTO does have real issues with getting good “real life” prior art, such as products that have been on sale for a few years. It is a shame but I don’t see any real way of rectifying the situation other than hiring someone on to create a database of products for each little field. While that would be quite a project and add quite a lot to the overall knowledge of the world should such a thing publish, it would be quite an undertaking and I don’t know if the PTO is the one for that job.

  15. I have a great invention help me