One of the biggest problems that inventors face when setting out to describe an invention is with defining what the law refers to as “alternative embodiments of the invention,” or simply “alternative embodiments.” Whenever you read the word “embodiment” in a patent application or issued patent the drafter is merely talking about a particular version of the invention.
The trouble many inventors have is that they don’t understand why they would ever have more than a single version of their invention. They will sometime say: “Everyone would do it this way and include all the features, you’d be crazy not to!” The problem created by this mentality can be enormous. If you do not describe it then it is not a part of your invention. So, for example, if you describe an invention as always having elements A + B + C + D and then someone makes virtually the same thing but leaves D (or any of the other elements out) they couldn’t possibly be infringing. Why? Because the invention was too narrowly described.
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 what they view as the best version of the invention; what the law refers to as the “preferred embodiment.” Nevertheless, it is absolutely essential to think outside the box when you describe an invention in any patent application. You don’t want to just describe the best version of your invention, but rather you want to describe every version of the invention that can work at all, no matter how crudely. If it works at all it should be described in a patent application.
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Whenever I speak to inventors I always encourage them to stop and think about different ways that their 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. This 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 you can rest assured that there will be a number of individuals and companies trying to capitalize on the opportunity you have created. Economics 101 teaches that if you are making money there will be market entrants that seek to steal your business until the point is reached where no additional entrants to the market would make money.
The word “steal” above is so harsh. If you create something and another enters the marketplace to compete againt you I can assure you that it will feel like it is stealing. But in the business world the laws of economics are not bound by a moral code, and stealing is really the wrong word to use in many, if not most cases. It would be stealing, at least in my opinion, if they were to trample on your patent rights. But what if you don’t obtain a patent or your patent is so narrow, weak or defective because you didn’t appropriately define your invention? If those market entrants will not be infringing your patent then it really isn’t stealing, and it wouldn’t be considered any kind of business wrong or legally recognizable injury. Thus, to prevent what will certainly feel like stealing you need to take care to appropriately describe the invention you have and the variations of that invention to create a buffer around the invention, a moat of protection that surrounds your innovation. This will make it more difficult for competitors to encroach on your market and force them to compete with what are hopefully clearly inferior products or services.
The take away less here is simple — 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.
So what can you do?
In many instances, for a variety of reasons, inventors start the patent application process with a provisional patent application. See Benefits of a Provisional Patent and The Truth About Provisionals. Assuming that is how you will elect to proceed, before you finalize your 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 (i.e., written description) 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 enablement requirement you need to specifically and objectively define and describe how to make and use your invention. 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, but there is a lot more that can and should be written.
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.
On 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 or method, but even with a method you can and should (in my opinion) find something to illustrate.
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. You can file a provisional patent application without drawings, but that is a huge mistake in my opinion because drawings really are worth at least a thousand words. It is also possible to get a non-provisional patent application filing date without a drawing, but that doesn’t mean that drawings aren’t required. Unfortunately, because you cannot add disclosure after you file a non-provisional patent application you may be prevented from filing drawings after your non-provisional filing date, which could ultimately compromise the disclosure and force some expensive procedural maneuvers that essentially will result in starting over with a new patent application. Thus, the best advice has to be to always include drawings, lots of them, whenever you file a patent application.
Indeed, 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 $150 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. For more on this topic see Working with Patent Drawings to Create a Complete Disclosure.
At the end of the day you are trying to describe an invention, which is 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 an 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 information on patent application drafting please see:
- Patent Language Difficulties: Open Mouth, Insert Foot
- Patent Drafting: The Use of Relative Terminology Can Be Dangerous
- Patent Drafting: Learning from common patent application mistakes
- Patent Drafting: Distinctly identifying the invention in exact terms
- Patent Drafting: Understanding the Specification of the Invention
- Tricks & Tips to Describe an Invention in a Patent Application
- Patent Drafting 101: Beware Background Pitfalls When Drafting a Patent Application
- Patenting business methods and software still requires concrete and tangible descriptions
- Describing an Invention in a Patent Application
- Patent Drawings and Invention Illustrations, What do you Need?
- The Key to Drafting an Excellent Patent – Alternatives
- The Cost of Obtaining a Patent in the US
- Patent Drafting: Identifying the Patentable Feature
- Patent Drafting: Thinking outside the box leads to the best patent
- The Importance of Keeping an Expansive View of the Invention
- Patent Application Drafting: Ambiguity and Assumptions are the Enemy
- Patent Drafting: Appropriately Disclosing Your Invention
- How to Describe an Invention in a Patent Application
- Patent Drawings 101: The Way to Better Patent Applications
- Understanding Patent Claims
- Patent Drafting: Top 5 Critical Things to Remember
- Patent Drafting: Not as Easy as You Think
- Completely Describe Your Invention in a Patent Application
- Software Patent Basics: What Level of Description is Required?
- Drafting Patent Applications: Writing Method Claims
- Turn Your Idea into an Invention with a Good Description
- Patent Drafting: What is the Patentable Feature?
- Patent Claim Drafting 101: The Basics
- A Guide to Patenting Software: Getting Started
- Does the term “Invention” in the Specification Limit the Claims?
- Working with Patent Illustrations to Create a Complete Disclosure
- Patent Drafting: Describing What is Unique Without Puffing
- Patent Claim Drafting: Improvements and Jepson Claims
- Patent Drafting: Drilling Down on Variations in a Patent Application
- An Introduction to Patent Claims
- Patent Drafting Lessons: Learning from the Grappling Dummy
- Patenting Business Methods and Software in the U.S.
- Defining the Full Glory of Your Invention in a Patent Application
- Patent Drafting: Language Difficulties, Open Mouth Insert Foot
- The Key to Drafting an Excellent Patent – Alternatives
- Tricks & Tips for Describing An Invention in a Patent Application
- Patent Drafting: Defining Computer Implemented Processes