One of the biggest problems that inventors face when setting out to define their invention is with describing what the law refers to as “alternative embodiments of the invention.” Most inventors are quite good at describing exactly what they have invented. The invention is your work and you know it best, so it is not surprising that most inventors can (with enough effort) explain the preferred version of the invention; what the law refers to as the “preferred embodiment.” Nevertheless, it is absolutely essential to think outside the box when describing your invention in any patent application. Stop and think about different ways that your invention can be made or used, even if you deem them to be inferior. Failure to disclose alternatives will almost certainly foreclose your ability to say those alternatives are covered by your disclosure, which will prevent any issued patent from covering those undefined variations.
Focusing only on the large picture and not describing nuances and alternatives may not seem like a big deal, but history has shown that it is critical. If you are lucky enough to have invented something of great importance there will be a number of individuals and companies trying to capitalize on the opportunity you have created. If you dismiss variations or entirely different and unique embodiments then you are leaving those to the individuals and/or companies that would seek to capitalize on a product or process that is similar to your own, but not specifically covered by your patent claims. So what can you do?
Many inventors will choose to start with a provisional patent application, which is a perfectly fine way to begin the journey toward patent protection. So let’s start there and assume that is how you will proceed initially.
Before you finalize your description in a provisional patent application, or if you are working with a patent attorney or patent agent — before you finalize what information you provide to them, you should go back through what you have written and ask yourself whether you are using any terms that may have a particular meaning. With each term ask yourself whether it has a commonly understood meaning by those who are skilled in this field? If the term does have a commonly understood meaning in the industry it is absolutely essential that you use it to mean what others in the industry think it means. Do not get creative. While the patent laws do say that a patentee can be his or her own lexicographer, it is important not to make too much of this latitude. If those in the industry understand a term to carry a certain meaning that is the meaning the courts will use when interpreting the scope of the patent disclosure, but why take a chance? When in doubt it is always the best practice to explain through illustration and description rather than to simply rely upon a meaning that may or may not be understood in the industry. The specification you create and ultimately file is the glossary for the invention and is intended to describe what you have in its full glory and to define any terms or concepts so everyone understands and there is no ambiguity.
It is also essential that you look over what you have written to make sure that the description is complete. In order for any patent application to be complete the invention must be enabled. This requirement, aptly named the enablement requirement, is geared toward ensuring that every disclosure places the subject matter of the invention into the possession of the public. This is what is commonly referred to as the quid pro quo of patent law. The government will grant a patent, together with exclusive rights for a limited time, provided, however, that the inventor explain in specific detail how to make and use the invention covered by the patent. The purpose of the requirement is so that when the patent expires the public has enough information to make and use the invention without having to go back to get more information from the inventor.
In order to satisfy this requirement you need to specifically and objectively define and describe how to make and use your invention. The enablement requires says that every embodiment needs to be described so that it can and will work. The quickest way to explain the concept of enablement is by way of example. The popular children’s song “Skeleton Bones” explains how all the bones in the body are connected. The leg bone is connected to the knee bone, which is connected to the thigh bone, which is in turn connected to the back bone, which is connected to the neck and so on. Notice that this is a very general overview of how the bones in the body are connected. This is a good first step.
The back bone, however, is made up of many smaller bones. For example, there are seven cervical vertebrae in the necks of all mammals, and these bones together make up a portion of the back bone. Therefore, a more complete description of the backbone would point out that the neck is a part of the backbone. An even more complete description might include saying cervical vertebrae 1 (i.e., C1, which is a part of the neck) is connected to cervical vertebrae 2 (i.e., C2) and so on. The point is that the more description you provide the better, but you absolutely must have at least the big picture overview of how everything fits together, and how to make and use the invention. Therefore, be sure that you have disclosed with as much detail as possible how all the pieces of your invention connect, work together, function and interrelate.
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One excellent way to make sure you are including an appropriately detailed description that treats a variety of variations and alternative embodiments is to have many professional patent drawings. In fact, the single best way to enhance any disclosure is through quality patent drawings, and I am a big fan of including more rather than less. This is because whatever is shown in the drawings will be considered disclosed, and drawings are really worth 1,000 words and then some to tell a story.
The patent laws require the patent applicant to furnish at least one drawing of the invention whenever the nature of the case requires a drawing to understand the invention, which in my experience is almost always. The only real exception being when you are claiming a chemical compound. The drawings must show every feature of the invention specified in the claims. In order to capture the full benefit of a filing date, a patent application needs to completely cover the invention and all permutations as of the time the application is filed, and drawings can and will provide a safety net if you have enough and they are detailed. The United States Court of Appeals for the Federal Circuit has frequently consulted drawings in order to determine what one of skill in the art would have considered disclosed at the time the application was filed. If you accidentally leave something out of the written disclosure, the drawings you submit may save you in the long run, provided of course they are detailed enough to convey nuanced information about your invention, hence the preference for high quality professional illustrations rather than just amateur sketches. In many cases the Patent Office will accept those amateur sketches, but given the relatively low price of getting professional drawings ($75 to $125 a page) and given the far greater detail in a professional illustration, you are really doing yourself a disservice if you do not have professional illustrations at the time of filing.
So why do drawings help so much with the disclosure? In addition to the truth that a picture (or drawing) is worth a thousand words, in a patent application you are supposed to go through and explain in writing what each of the drawings shows. So if you have more drawings that is naturally going to lead to more textual description. If you actually do go through the drawings one by one and explain what they show you will invariably find yourself thinking of things that could be discussed but aren’t actually shown well in the drawing, perhaps because of the angle or perhaps because you want to talk about the materials that could be used for the pieces and parts. That is fine, just write it into the description. The drawings are there to facilitate understanding and if as you describe something in the drawing you think of other things just describe them in the text. For example, the drawing might show a do-hickey and instead of a do-hickey it could be a widget. So you just explain: “do-hickey 15, which could be made out of A, B or C, connects to whatchamacallit 10, which likewise can be made out of A, B or C. Although not pictured, the do-hickey 15 could instead be a widget.” I know this is a little skimpy, but it is intended to just be low level illustrative of the fact that you use the drawings and the associated reference numerals to direct the reader to the pieces and parts you are discussing. The point is you get more disclosure with more drawings and then if you actually do go through and describe the drawings like you are supposed to you will put more meat on the bones and almost certainly be inspired to think of variations or alternatives you wouldn’t have otherwise thought about.
At the end of the day you are trying to describe something that at least in part has heretofore never existed, after all that is what is required to have an invention. So you need to describe not only the specific invention you have but all the possible variations and options, because if you don’t describe those they are not a part of your invention and you are just inviting competitors to copy you without infringing your patent. One convention that might assist you as you set out to describe your invention is to think about how you would describe your invention 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, and when combined with good, quality drawings you really have something worthwhile.
For more from our patent drafting series please also see: