Describing Your Invention in a Patent Application

When you file a patent application it is always necessary to file an application that completely and clearly describes the invention so that others would be able to understand the invention.  For new inventors it is sometimes difficult to understand the so-called description requirement to patentability.  It is not an overstatement to say that the description of your invention must be so complete that it could be copied by others who read your patent application and/or issued patent.  It is absolutely critical to understand that this complete and full description MUST be present as of the filing date of your application.  If you file an application that does not describe the invention to the required level the application is defective and it cannot be fixed.  The only way to fix an inadequate disclosure is to file a new application with an adequate disclosure, but that means you obtain no benefit from the earlier inadequate application.

I am frequently asked why someone would describe their inventin to the point where others could simply copy.  The simple reason is that the US patent laws require such a description.  The more complete answer is that such a description is required because in order for the government to grant a patent Congress has said that you must describe your invention so that others will be able to benefit from it, learn from it and advance it moving forward.  The only way to do this is by describing your invention with great care and detail.

The crux of the description requirement, which is embodied in 35 U.S.C. § 112, is the enablement requirement and the best mode requirement. Both the enablement and best mode requirements can be found in the first paragraph of ‘ 112, which states:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

The enablement requirement requires the inventor to describe his or her invention in a manner that would allow others in the industry to make and use the invention. “Enablement looks to placing the subject matter of the claims generally in the possession of the public.”

The best mode requirement requires the inventor to disclose his or her preferred way of carrying out the invention at the time the patent application is filed. There is no requirement that the inventors preferred embodiment be updated as the patent application works its way through the PTO. Best mode looks to whether specific instrumentalities and techniques have been developed by the inventor and are known to him at the time of filing as the best way of carrying out the invention.

Thus, the enablement requirement looks to the objective knowledge of one of ordinary skill in the art, while the subjective and factual best mode inquiry looks to the inventor’s state of the mind.  Together both work to require the inventor to describe the invention and all preferences with the greatest amount of detail that can be provided.  Simply said, if it is not described in your application then it is not considered a part of your invention insofar as the patent laws are required.