Describing Your Invention Completely in a Patent Application

By Gene Quinn
July 16, 2011

 

 

An updated version of this article was published on May 10, 2014, which can be found at:

http://www.ipwatchdog.com/2014/05/10/completely-describe-your-invention-in-a-patent-application/id=49497/

 

 

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. 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.

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Discuss this

There are currently 8 Comments comments.

  1. Paul F. Morgan July 17, 2011 1:21 pm

    Yes, and some of those advising universities, in particular, need to better understand why just slapping a provisonal application cover sheet on a reseach paper and filing it in the U.S PTO without any claims, or inadequate claims, is unlikely to provide a valid description of the invention, a valid filing date, or a foreign priority, for valuable and enforceable patent claims Especially since the Fed. Cir. has now made it clear that under 35 USC 112 just having an “enablement” of the invention in a patent application is not the same thing as having a “written description” of what IS the invention, and not just in the narrow scope of an enablement example.

  2. EG July 18, 2011 9:05 am

    Paul,

    Amen to what you say. Many who aren’t patent attorney or patent agents are clueless regarding the stringent requirements of 35 USC 112, first paragraph, which still apply to provisionals. The 2002 case of New Railhead Mfg v Vermeer made that abundantly clear.

  3. Joe July 19, 2011 8:50 am

    Unfortunately, I think there may be patent agents and attorneys who are relatively clueless on this requirement as well.

  4. Gene Quinn July 19, 2011 10:33 am

    Joe-

    I hear what you are saying. I wonder though whether it is cluelessness or whether this is a function of representing inventors without much money and doing next to nothing. I’m sure there are some that are indeed unfamiliar with the intricacies of the law, but I think a far greater problem are those who charge very little and then deliver very little.

    -Gene

  5. john July 25, 2011 3:48 am

    The idea of fully disclosing how the invention is realised is also paramount in importance if you are considering filing your US application with the EPO. The European Phase requires a greater detail of disclosure of the invention then is generally necessary at the USPTO.