Learning from common patent application mistakes by inventors

By Gene Quinn
July 22, 2017

The goal in a patent application is to provide a full, clear, and exact description of the invention in a way that particularly points out and distinctly identifies what the inventor believes he or she has invented and wants the patent to cover. Unfortunately, while articulating an invention many inventors fall victim to a host of common mistakes.

Saying that you need to describe your invention in full, clear and exact terms, which is what the law requires, is perfectly fine and useful unless you don’t know how to go about describing your invention in full, clear and exact terms. And that is the problem with patents and patent law, the words used are simple enough but the concepts the words describe defy simply understanding.

Perhaps the best way to try and understand what you need to do is to consider some of the common patent application mistakes that inventors make when attempting to describe their inventions. Appreciating these errors and why they are mistakes, or at least not as helpful as you might think, will go a long way to arming you with the information you need. For additional examples please also see Patent Drafting: Learning from common patent application mistakes .


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Assuming the Reader Knows is Dangerous

We all do it when we talk about things we are intimately familiar with, but when it is done in a patent application it is a huge mistake. You absolutely positively cannot assume any particular familiarity with your invention, after all what you have invented must to some extent be unique and innovative.

It is very dangerous to assume that the reader will fill in any ambiguous holes in the manner you desire. For this reason, when drafting a patent application it is imperative to try and be as specific, and explicit, as possible. Consider providing an example or two to help flesh out what it is you are describing – while not required examples can be particularly helpful in a patent application.

Before moving past this point, whenever I say that it is imperative to be specific in a patent application questions arise about whether that is really best. Many inventors will say they want to be as generic as possible and never want to say anything specifically so as to capture as much territory in the patent application as possible. That is fine, but if you do that you need to realize the likelihood of ever obtaining a patent is very low. Yes, you want to state things in a generic way, but you also need to follow up with specifics. Merely stating things generically and never getting to the specifics that will allow the reader to truly comprehend the complexity and nuance of your invention is an enormous mistake.

Also, be cautious about assuming any particular knowledge or understanding on the part of the reader. You are always best to assume you are writing for and describing your invention to an intelligent audience, but an audience with no particular expertise. This should make you choose your words carefully in order to convey the most precise meaning, which is what you should strive for in a patent application.

 

Describe the Invention to a Blind Person

Describing an invention can be difficult, particularly in a world where most people are used to describing things to others when they are sharing a common vantage point. Yes, you will include drawings in your application, hopefully many drawings, that will facilitate understanding, but you really need to strive to describe your invention in words that inform. One way you can work on this is to try and describe your invention in a way that would convey meaning 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.

 

Learn from Chef America

You need to choose your words carefully to make sure your words are exactly what you mean. In a famous (or infamous) decision from the United States Court of Appeals for the Federal Circuit the phrase “heat the dough to 450 degrees” was used in the patent. What should have been said was “heat the oven to 450 degrees.” Because what was said literally required the internal temperature of the dough to reach 450 degrees the patent owner had a useless patent. You need to know that what you say will be interpreted literally. So always make sure that you go back over what you have written to make sure that you have not made any silly mistakes that when read literally will get you into trouble.

 

Design Purpose NOT Enough

Perhaps one of the biggest mistakes inventors make relates to the articulation of the design purpose. Explaining the design purpose is helpful, but is not enough for a patent application. A patent application absolute must describe the structure of the device and describing how the device will be used, or why it will be used, is not a substitute for describing the structure of the device.

This may seem silly for most inventors because the structure of the invention is obvious to you once the parts are identified and some cursory information is provided. Remember, however, a patent application needs to explain your invention to someone who is not already intimately familiar with the invention. The best way to do this is to explain it like we used to do when you were a child doing show and tell at school. You explained everything, 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 all 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 a patent application. Explain your invention with so much detail that you will bore the knowledgeable reader to death. Explain your invention like you are a child doing show and tell.

 

 

More Information

For more information on patent drafting basics 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.

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