Patent Drafting: Top 5 Critical Things to Remember
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: May 31, 2014 @ 9:00 am
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Drafting a patent application is not easy. A patent application needs to describe your invention completely, and if you really are entitled to a patent then at least some aspect of your invention is new and non-obvious, which means that heretofore it hasn’t existed. Describing something new that has not previously existed if more of a challenge than most people realize.
Many times inventors fail to adequately describe their inventions because the invention is obvious to them, and they think it will be equally obvious to others. The law, however, requires that a patent application explain the invention to someone who is not already familiar with the invention. One of the best way to do this is to explain it like a child explains things when doing a show and tell at school. Children explain everything in excruciating detail, no matter how obvious. Kids do this when they describe things because they have no idea what the person listening knows, and to them it is new and interesting so they explain everything with tremendous detail (whether you want to hear it or not). That is exactly what you need to do in the application. Explain your invention with so much detail that you will bore the knowledgeable reader to death.
That is all fine and well, but how do you explain your invention? Here are five things to keep in mind that are critical in order to fully and completely describe your invention. Thoughtful consideration of these will help you better articulate what you have that is unique in a way that will satisfy legal requirements in the United States.
How to Make and Use the Invention
In order for any patent application to be complete the invention must be enabled. This legal requirement is called the enablement requirement, and the purpose is to insure that every disclosure explains enough so that when the patent expires those skilled in the industry will be able to both make and use the invention. This is a part of the so-called patent bargain. In exchange for a patent, which gives an exclusive right to the owner, it is necessary to describe the invention with specificity so that when the patent expires the invention falls into the public domain and can be used by anyone.
Whenever you draft a patent application, whether it is a provisional patent application or a non-provisional patent application, it is critical look at what you have written to see whether someone who is unfamiliar with your invention would be able to appreciate how to make and use the invention after reading your disclosure. It is very important to explain the invention and its various features and nuances with as much detail as possible, paying particular attention to how components are connected, the various process steps one must follow, and/or any preparations that may be necessary prior to beginning.
Also remember that a patent application needs to explain to those skilled in the art how to make and use the invention in a way that does not lead to the need for what is called “undue experimentation.” This means you need to explain the invention so that it could be made and used without individuals having to go through a trial and error process to figure it out for themselves.
Best Mode and Anything that Works too!
Most believe that the America Invent Act (AIA) did away with the best mode requirement, but that is not entirely true. The best mode requirement remains a part of 35 U.S.C. 112(a), but if you do get a patent issued that fails to disclose the best mode the patent claims can no longer be invalidated. But just because an issued patent claim cannot be invalided for lack of best mode doesn’t mean that you don’t have to include the best mode. Legally you still need to include the best mode. Practically, you should almost always want to include the best mode anyway.
The best mode requirement means that inventors must disclose any preferences they have in a patent application. The purpose of the best mode requirement is to restrain inventors from applying for patents while at the same time concealing from the public preferred embodiments of their inventions they have in fact conceived. Furthermore, the application you file must disclose the invention in its full detail. If you leave something out of your application then it is not considered a part of your invention. Thus, it is not a good idea to leave things out, and particularly not a good idea to leave out something that you believe to be superior.
Nevertheless, it is very important for you to describe your invention not only in terms of what works best, but also in terms of what works at all. If your invention becomes a success there will be others who will seek to legally copy your invention, which means they will do what you leave uncovered. For this reason you really need to ask yourself not only what are the required parts of your invention, but if you were trying to copy your own invention without infringing what modifications would you make? This is a critical question because that is the question that copyists will ask themselves. You want to cover not only what you want to do, but also what the copyist would likely want to try to get around your patent.
Dovetailing with what has already been said, it is very important that a patent application completely define your invention because the patent applicant has the obligation to explain the full nature of the invention. If something is left out of the patent application then it cannot be a part of any exclusive right that the Patent Office ultimately grants.
With this in mind it is helpful to always remember that merely saying that different versions of the invention can exist is one step, but without more you are not teaching what the difference can be. Patent applications must teach the invention.
The written description requirement states that you need to define your invention so that the reader will be able to appreciate exactly the boundaries of what you have invented. When you say that other, undefined and unexplained variations can be made you are not defining the boundaries in a bright line way. You are leaving it up to the reader to figure it out for themselves, which means you have created a fatal flaw.
When you prepare a patent application you want to explain as much as you can about the invention and all of its various aspects and features. This is critical because you need to make sure this first filing is complete. This is essential because while the format of what you file can be changed, information cannot be added while still keeping the benefit of the original filing date you obtained. In other words, whatever is included in the patent application you file, whether in the written description, drawings or claims, is considered to be the full extent of your invention. You cannot add detail without a new filing date. Given that the U.S. is a first to file system, holding back and waiting until later to include information you have now is a huge mistake.
For this reason you want to make sure that you not only mention enough to distinguish the prior art you know about, but you need to add multiple levels of specifics and nuance, not only to expand your disclosure, but to make sure that at least one (or hopefully more) of your embodiments will wind up being patentable. This is true because you can always expect a patent examiner to come up with prior art that you never thought existed. This is partly due to the fact that any examination will be years away, and some things that are secret at the moment might not wind up being secret as of the time of examination. This is particularly true because patent applications remain hidden from the public for at least 18 months.
Failure to Adequately Describe the Invention
One of the biggest mistakes inventors make is that they simply fall short of the specificity required. One specific problem I see is that many inventors write as if they assume the reader will be already familiar with the invention. It is always best to try and describe the invention so that any interested intelligent person can follow along. This is for several reasons. First, if any intelligent person can follow along then you certainly have described the invention so that someone with particular knowledge can understand, which satisfies the enablement requirement. Second, by writing so that an interested intelligent reader can understand you will provide more than a simple overview. By assuming no previous knowledge on the part of the reader you will describe your invention with greater detail.
Many inventors also think that it is most critical to get a very broad patent and they don’t want to include details. This is a huge mistake, and one that you may not be able to recover from.
When I interviewed Hall of Fame inventor Gary Michelson he told me this: “Why would I want a claim that is invalid? That doesn’t help me. I want the broadest valid claim.” Michelson is one of the most successful American inventors of all-time. He pioneered minimally invasive spinal surgery and ultimately sold his patent portfolio to Medtronic for $1.3 billion. If claims that are too broad aren’t useful for Michelson rest assured that they won’t be useful for you either. The message here is very important — describing your invention too broadly and without any specifics will result in patent claims that cannot be issued, or claims that if issued will be very easy to challenge. For this reason you must know what is in the prior art and make sure you accentuate the positive when describing your invention. Focus on what is unique. For more on this see Patent Drafting: What is the Patentable Feature.
In order for any patent application to be complete the invention must be described with great particularity. Where many inventors fall is in failing to describe the structure and mechanical connections. What is the structure of the components? What is the overall structure of the device? How are things connected? How do they interact? 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.
An Instruction Manual
You have at one time or another likely put something together. Several of my personal experiences relate to putting together a BBQ grill and a lawn mower. If you have ever had this experience you likely became quite frustrated, and likely also had a bunch of extra parts leftover, which doesn’t make you feel too secure when you are dealing with a rotating blade of a law mower or a BBQ grill connected to a propane tank! The last time I put together a BBQ grill there were multiple steps that were required, but which could only be performed after having undone one or more of the previous steps. Frustrating!
In some important ways your patent application should be akin to an instruction manual, but unlike the aforementioned BBQ grill, the reader of relevant skill in the area should be able to follow along. Having said this, there is an important caveat! A patent is not a blueprint. You do not need measurements or engineering drawings. In fact, including measurements and the detail often found in engineering drawings is a mistake because it will unnecessarily limit the invention to the narrow versions detailed. Patent drawings are more general and show the invention and its parts holistically.
Your goal is to make sure you 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 an instruction manual for making and using the invention, paying particular attention to describing modifications, specific embodiments and alternatives.
Also remember that drawings can be extremely helpful. I personally believe that most patent applications do not have nearly enough patent illustrations. You can normally get patent drawings for between $75 to $100 per page, sometimes more depending upon the level of detail required and number of figures you have on a single page. For the cost, patent drawings are the best way to expand a disclosure. Not only is everything shown in the drawing a part of your disclosed invention, but each drawings should be at least summarized in a patent application, which means the more drawings the more detail, and the more drawings the more written description you will have explaining the drawings. For more on use of drawings see Working with Patent Drawings to Create a Complete Disclosure and Patent Illustrations and Invention Drawings: What do you need?.
For more from our patent drafting series please also see:
- The Importance of Keeping an Expansive View of the Invention Oct 18 2014
- Patent Drafting: Ambiguity and Assumptions are the Enemy Sep 27 2014
- Patent Drafting: Appropriately Disclosing Your Invention Aug 30 2014
- How to Describe an Invention in a Patent Application Aug 09 2014
- Patent Drawings 101: The Way to Better Patent Applications Aug 02 2014
- Understanding Patent Claims Jul 12 2014
- Patent Drafting: Top 5 Critical Things to Remember May 31 2014
- Patent Drafting: Not as Easy as You Think May 17 2014
- Completely Describe Your Invention in a Patent Application May 10 2014
- Software Patent Basics: What Level of Description is Required? Jan 25 2014
- Drafting Patent Applications: Writing Method Claims Oct 11 2013
- Turn Your Idea into an Invention with a Good Description Sep 01 2013
- Patent Drafting: What is the Patentable Feature? Aug 17 2013
- Patent Claim Drafting 101: The Basics May 25 2013
- A Guide to Patenting Software: Getting Started Feb 16 2013
- Does the term “Invention” in the Specification Limit the Claims? Feb 13 2013
- Working with Patent Drawings to Create a Complete Disclosure Feb 09 2013
- Patent Drafting: Describing What is Unique Without Puffing May 26 2012
- Patent Claim Drafting: Improvements and Jepson Claims Mar 29 2012
- Patent Drafting: Drilling Down on Variations in a Patent Application Jan 13 2012
- An Introduction to Patent Claims Dec 23 2011
- Patent Drafting Lessons: Learning from the Grappling Dummy Aug 20 2011
- Patenting Business Methods and Software in the U.S. Jul 18 2011
- Defining the Full Glory of Your Invention in a Patent Application Jun 04 2011
- Patent Drafting: Language Difficulties, Open Mouth Insert Foot May 03 2011
- The Key to Drafting an Excellent Patent – Alternatives Apr 01 2011
- Tricks & Tips for Describing An Invention in a Patent Application Mar 19 2011
- Patent Drafting: Defining Computer Implemented Processes Mar 14 2011
About the Author
Gene Quinn 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.