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.
- What are the functions or features that consumers will identify as an advantage?
- 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).
- 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.
- 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).
- 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.
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