Patent Drafting: Thinking outside the box leads to the best patent

By Gene Quinn
January 3, 2015

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 argue that those alternatives are covered by your claims and disclosure, which will prevent any issued patent from covering that which has been left out. This may not seem like a big deal, but 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 and fail to claim alternative 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.

With this in mind, and for a variety or other legal reasons, when filing a patent application the description of the invention absolutely must be as complete as possible.  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. One trick to accomplish this task is to write a description of the invention that would inform someone who is blind. If you are trying to describe your invention to someone who cannot see then you will invariably find creative ways to verbally get your message across. This is the type of detail that should be in an application.

Along these lines, when describing an invention it is imperative that alternatives and options be fully explored and detailed. Indeed, one of the biggest problems that inventors face is describing alternative embodiments of their 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 and do explain the preferred embodiment of their invention quite well. But limiting yourself to the description of your invention that is what you prefer leaves a lot left behind that otherwise could have been captured with a patent, which means that the resulting patent will be far more narrow than it otherwise could have been.

When drafting a patent application I always suggest that inventors consider the following questions and work the answers into the disclosure. This will help you broaden your disclosure and provide better description and detail.

  1. What are the functions or features that consumers will identify as an advantage?
  1. Describe the single best and most complete way to make your invention. (By best I mean for you to describe the most complete formulation, including any and all options, preferences, bells and whistles).
  1. Describe how to make your invention in a way that leaves out all options, preferences, bells and whistles except for those that are absolutely necessary for the invention to work.
  1. Describe the single best and most complete way to use your invention. (By best I mean for you to describe the most complete formulation, including any and all options, preferences, bells and whistles).
  1. Describe how to use your invention in a way that leaves out all options, preferences, bells and whistles except for those that are absolutely necessary for the invention to work.

Before you do finalize and file a patent application you should always go back over the draft and ask yourself whether you are using any terms that may have a particular meaning. While the terms and jargon you employ may seem commonplace to you, you must ask yourself whether each term 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 the applicant for a patent 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 unless you specifically define the term. But even then you cannot define a term to mean something contrary to its understood meaning. Therefore, 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. It can also be helpful to define critical terms, but if you are going to define terms make sure you are not too narrowly defining the term.


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Finally, please remember that if you have prepared and filed a provisional patent application and you do elect to file a non-provisional application claiming the priority filing date of that earlier filed provisional patent application you absolutely must file the non-provisional application within 12 months of the filing date of the provisional. While many deadlines at the Patent Office can be extended if you pay an additional fee, this deadline cannot be extended under any circumstances. If you do wish to move forward with this application and file a non-provisional application you must do so within 12 months of your provisional filing date. A provisional application is an excellent way to start the patent process for individual inventors, entrepreneurs and small businesses, but the provisional application will not mature into any exclusive rights. To obtain exclusive rights you must file a non-provisional within 12 months of the filing date of the provisional. It is the non-provisional that will lead to exclusive rights. Provisional applications are tremendously useful, but please do understand the limitations.

For more information about patent drafting please see:

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 12 Comments comments.

  1. Paul Cole January 3, 2015 1:15 pm

    One of the things an inventor should do is to produce a write-up in the same detail as would be given for an a peer-reviewed paper for or an article in the relevant technical journal.

    If anyone is in doubt about the benefits of this, it is instructive to compare the disclosure of US 3487800 filed March 1968 for the Windsurfer with James E. Drake’s April 1969 lecture “Windsurfing, a new concept in sailing”. The text and drawings for the lecture can be found by entering the author name and title into the Google search engine. Apart from the many useful drawings which somehow did not find their way into the patent specification (and which were available or could easily have been drawn a year earlier) the reader is told what was the prototype mast height and sail area and why these were selected, how the board was constructed, what its weight was, what design features of the board are desirable, how control forces are derived (with useful drawings), what were the alternatives for board and sail design.

    If there is any comparison between genuine inventor effort and half-instructed attorney effort, comparison of the two documents should convince you which wins out. In truth, though both efforts are vital and the inventor and the attorney should regard themselves as members of a drafting team.

  2. Anon January 3, 2015 3:32 pm

    Paul,

    I will respectfully – but completely – disagree with you. A patent application is NOT a technical document and any advice that leads to confusion on the matter should be avoided.

  3. Benny January 4, 2015 7:25 am

    Anon,
    A patent is a limited grant of exclusivity in return for disclosure of the invention. Unfortunately, the inventor is not genuinely bound to his side of the contract, in that the disclosure can be poorly drafted, half-baked, and generally unintelligible to those who should benefit from it – and those beneficiaries, just to remind you, are scientists and engineers, not lawyers. Pauls’ example is one of many – I could provide plenty of others.

    I have seen patent applications which lucidly describe an invention – it’s not impossible. I have also seen applications in which it appears as though a deliberate attempt at obfuscation was made.

  4. Anon January 4, 2015 9:40 am

    Benny,

    I am sure that you do not understand what a patent application is meant to be.

  5. Benny January 4, 2015 9:52 am

    Anon,
    I think I understand what a patent (patent – not patent application) was originally meant to be, and what a patent is, and the difference between the two.
    Actually, I am curious as to how comprehensible a patent you prosecuted might be, but pointing me to a reference would destroy the anonymity of your Anon, so I’ll just have to guess.

  6. Paul Cole January 4, 2015 10:51 am

    @ Anon

    What you say is part of the truth, but not the whole truth. A patent specification is a legal document whose scope and validity is determined by its technical content. The more of the relevant information that gets from the inventor’s mind into the written specification the better the specification is likely to be. The most dangerous journey that any invention makes, as is often said, is from the inventor’s brain to his or her mouth, pen or keyboard.

    In daily practice there is a whole range of attorney input from substantially inventor authorship with only minor and necessary attorney editing to purely oral disclosure by the inventor with attorney questioning and the writing and possibly drawing task being left to the attorney. However, the more information the inventor provides the better the outcome is likely to be.

    Unfortunately, many inventors labour under the impression that patent attorneys are hired help, and that all that is needed is a bit of arm-waving and a patent can be obtained with broad and enforceable claims since the attorney, by definition, knows it all and does not need to be told anything more than a bare outline. As my Windsurfing example shows, the inventors in that case were much more prepared to go to trouble to tell their colleagues in the California yachting fraternity about their invention than they were prepared to instruct their patent attorney, with, at least so far as the UK courts were concerned, disastrous consequence for enforceability. If the inventor is not prepared to go to the same trouble in instructing the attorney as he or she is prepared to go to in impressing professional colleagues, it is strongly arguable that he or she should avoid the likely waste of professional fee expenditure by deciding not to enter the patent process.

    A good write-up in detail comparable to a journal or magazine article may need much editing but is an invaluable starting point. Professional pride and reticence makes us over-reluctant to request this invaluable help.

  7. Anon January 4, 2015 11:25 am

    Paul,

    You are not correct to say in reply that my post was not the whole truth.

    My post was a limited post, only pertaining to a single aspect. In that regard, I did not need to delve into any notion of “whole truth.”

    If every reply or post on a blog needed to delve into whole truths, the purpose of blogs would be eviscerated.

  8. Anon January 4, 2015 11:27 am

    The point of the matter, Paul, is that the per se notion of “more is better” is simply not true.

  9. Anon January 4, 2015 11:31 am

    (I should clarify my statement: more in the application on a per se basis is simply not true. There is a difference between more information in the application and more information shared between inventor and attorney writing the application, and that difference does carry a distinction worth noting)

  10. Anon January 4, 2015 11:36 am

    Benny @ 5,

    To be a bit cheeky, you are the type of engineer that I have dealt with several times that is a royal pain in the @ss. You think you understand patent law when in reality you only understand enough to be dangerous.

    From your history of comments, I will again note that you do not understand what a patent application (or a patent – that you attempt to distinguish only reinforces my point) is meant to be – regardless of what you think you understand.

    It is more dangerous a situation when you do not know that which you do not know.

  11. Paul F. Morgan January 4, 2015 1:08 pm

    Yes, there are important benefits in “when describing an invention it is imperative that alternatives and options [including brainstorming various possible commercial uses] be fully explored and detailed.” First, to help get generic claim coverage. Secondly to avoid the “surround patenting” that goes on in some foreign countries, where an earlier filing date application not yet published is NOT a 103 obviousness reference [as it is in the U.S.], merely a “novelty only” so that they can obtain patents on obvious applications of one’s original concept that are not disclosed in the application if they have found out about the original concept before a publication. Given the fact that the U.S. is becoming a smaller portion of the total world economy, more U.S. applications need to be written with foreign patent law differences in mind in case foreign-equivalent patent applications may be filed.

  12. BMK January 7, 2015 9:31 am

    There is a limited exception to the 12-month period for filing a non-provisional application after filing a provisional application. See 37 CFR 1.78(b); 78 FR 62368. Applicants may still claim the benefit of a provisional application’s filing date if the delay in filing the non-provisional within the 12-month period was unintentional.