In July I wrote Describing Your Invention Completely in a Patent Application, which focused on the type of information you want to include to capture the full glory of your invention. This article is a follow-up to that, focusing this time on what the law requires and why, concluding with suggestions to help in breaking through the idea and getting to something more tangible. Reading these two articles in conjunction should give a more complete understanding of what is required and how to get from idea to patentable invention.
I start this tale observing a central reality: Inventors are creative people who observe a problem and envision a solution. Practically anyone can be an inventor because the first step on the path to inventing is the generation of an idea. Unfortunately, ideas cannot be patented and for many individuals the path to invention stops right there. But it doesn’t have to stop there. Frequently you just need some help collecting thoughts and a little push in the right direction. In fact, many people are surprised by what is required to be an inventor and have an invention that is capable of being patented.
One thing that many individuals and professional inventors employed by corporations (i.e., “kept inventors”) have in common is that they frequently do not perceive what they have come up with as worth patenting. So many have the idea that a patent is something that gets awarded to breakthrough innovations, when in fact it is far more common to have a patent awarded to an improvement on an existing product. If you can improve upon something , there is already a market in existence for the underlying product and consumers will perceive your improvement as worth paying for then you very well may have a winning invention. Certainly, you are much farther along the path to success with that trifecta.
While it can be quite useful to have some kind of a prototype, even a crude prototype that you create yourself, there is no requirement that a prototype exist before you file a patent application. This statement catches many by surprise and they think it has to be incorrect. It is only a slight exaggeration. The rules of the United States Patent and Trademark Office say that the only time you must produce a working prototype is if you are claiming a perpetual motion machine. Our current understanding of science says that a perpetual motion machine cannot exist, and the USPTO has gotten sick and tired of inventors claiming they have invented a perpetual motion machine. So as long as you are not going to claim a perpetual motion machine all you have to do is describe your invention in writing, through the use of text and illustrations, so that others can understand what you have and how to make and use it.
There are, in fact, four primary patentability requirements. An invention must be patentable subject matter, it must be useful, it has to be novel (i.e., new) and it must be non-obvious. If you satisfy these four substantive patentability requirements you are entitled to a patent on your invention so long as you adequately describe the invention. The law that governs adequate description is found at 35 USC § 112. In reality, it is probably better to think of the description requirement as the core to patentability. If you can describe your idea with enough specificity you no longer have an idea, but rather have migrated past the idea-invention boundary, which means you have something that can be patented if it is unique.
The crux of this so-called adequate description requirement is that once the first four patentability requirements are satisfied the applicant still must describe the invention with enough particularity such that those skilled in the relevant technology will be able to make, use and understand the invention that was made by the inventor. For the most part, and from a legal perspective, this requirement can be explained as consisting of three major parts. First is the enablement requirement, next is the best mode requirement and finally is the written description requirement.
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 place the invention generally in possession of the public. In the words of the great Thomas Jefferson, we are only going to suffer the embarrassment of granting a patent and subjecting ourselves to exclusive rights if the public gets benefit. The benefit is the information and ability to make and use your invention once the patent term has expired.
The purpose of the enablement requirement is to ensure that the invention is communicated to the interested public in a meaningful way. The information contained in the disclosure of an application must be sufficient to inform those skilled in the relevant technology field how to both make and use the claimed invention. Detailed procedures for making and using the invention may not be necessary if the description of the invention itself is sufficient to permit those skilled in relevant technology to make and use the invention.
In other words, you do not necessarily need to provide blue-prints or idiot-proof description. In fact, in many cases you don’t have to provide even the level of detail that would exist in an instruction manual. But there is a difference between what the law requires and what is considered best practice and wise. Indeed, you are always better off shooting for the maximal level of detail. The more you describe the broader your rights can be, and assuming that others will understand what you have disclosed is never wise. Even if you disclose everything you possibly can once the patent examiner starts working on your application you will likely wish you had explained a little more, or explained things in a slightly different way so as to more easily overcome prior art located. That reality means that striving for more rather than less disclosure is very wise.
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 known at the time of filing as the best way of carrying out the invention.
With the passage of the America Invents Act the best mode requirement has just been eradicated from U.S. patent law for all intents and purposes. Failure to disclose the best mode was always grounds for invalidating a patent claim in litigation. Claims that are issued can no longer be challenged after the fact for a failure to disclose the best mode, yet Congress choose to leave the best mode requirement in § 112. This is puzzling indeed given that the patent examiner is not ever in a position to evaluate whether the best mode has been disclosed because best mode is personal to the inventor — asking what did the inventor prefer, if anything.
The Patent Office seems to be taking the position that they will adhere to the best mode requirement when evaluating patent applications when it arises, so the best mode should still be disclosed. From a practical standpoint you really should be disclosing your preferences because if they are preferences that make the invention better you will want to claim them to obtain exclusive rights over them. If you don’t disclose them you cannot claim them. So best mode, although on the way out of U.S. patent law, should live on in spirit and practice.
The written description requirement is also found in the first paragraph of 35 U.S.C. §112. The written description requirement is separate and distinct from the enablement requirement, although related in important ways. The written description requirement serves a teaching function, as a “quid pro quo” in which the public is given meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time.
Still confused as to what this means? If you are confused you are understanding well. To be sure, the definition of the written description requirement is quite elusive. For generations the written description requirement had been confined to making sure that what was originally filed in the patent application adequately defined the full parameters of the invention being claimed. Today, the written description requirement means much more, but the Federal Circuit has yet to be able to articulate the requirements in what I would call an easy to understand way. Some commentators have called the new written description requirement a super-enablement requirement. The Federal Circuit has dismissed this, but has yet to really offer a simple, understandable test of their own. Given this uncertainty and lack of judicial clarity the best thing to do to meet this requirement is to define your invention with as much specificity as possible.
Perhaps the key to understanding the difference between enablement and the written description requirement is that you can bootstrap knowledge of one of skill in the art into your application for enablement purposes, but no such bootstrapping is allowable under the written description requirement. When you are describing your invention we look to see if you are enabling one of skill in the art to understand how to make and use the invention. You can describe things in terms that the relevant audience will understand. For example, if you create an H.G. Wells time machine there are only a handful of people on the planet who will have any chance of understanding the invention. So you can describe the physics involved leveraging the information they already possess on the subject. No need to start with momentum, jump straight to quantum mechanics and beyond.
For written description, however, you cannot bootstrap knowledge of one of skill in the art into your patent application. This is because at its core the function of the written description requirement is to tell the world what you have actually invented. If you leave something out of your disclosure and someone else recognizes that you have left it out then your rights do not include what others perceive as missing. The written description requirement is a so-called “4 corners” requirement. Whatever you disclose within the 4 corners of the patent application is what you possess, nothing more. Leave it out and it is not yours even if it seems clear you accidentally left something out.
The written description requirement is also what the patent law uses to make sure that you are not claiming more than what you really have invented. Where does certainty end and speculation begin? We want to give rights to those things that are useful, new and non-obvious, but if and only if they are certain. Samuel Morse (of Morse code fame) sought a patent on every use of electromagnetism. What he invented, however, was a revolutionary device that utilized electromagnetism to relay messages across very long distances. So he received a patent on the specific implementation, not the theoretical.
This article started off by saying that many times people don’t realize that they are already inventors, and stating the reality that all you have to do is describe what you have so others will appreciate it in its full glory. While you hopefully have a better understanding of what that means from a legal standpoint, it still begs the question about how one can accomplish that in life and move past the idea to something the law will recognize as an invention.
Like anything in life that is new, whether it be returning to exercise after a lengthy hiatus or learning a new language, you have to walk before you can run. Put one foot in front of the other. Too often I see inventors who come up with the idea and want to cut through the middle steps and file a patent application. If they skip the middle steps then they likely don’t have an invention, they can get frustrated and give up. Anyone can have an idea, but those who work to put meat on the bones and put flesh on the idea are the ones who can claim the mantle of “inventor.”
It is easy to tell you to collect your thoughts and just describe the invention, but from my experience that just doesn’t work. Inventors are creative, intelligent people, but describing something they have in their head isn’t necessarily one of the most typical talents in the inventor toolbox. I recognized this first when working with law students. I was trying to teach them how to write a patent application and it wasn’t going very well. So I decided to tell them to answer a discrete set of questions and then we would figure out where to put them into a patent application template and build from there. It worked remarkably well. I figured if it would work well with students it had to work with inventors, and it has been wildly successful there as well.
The Invent & Patent System that I created recognizes that the inventor is in possession of the best information about the invention and just needs some help to articulate the invention in a way that provides the critical information while minimizing what the law would view as superfluous. It is a mentored way to create a patent disclosure that leads the inventor step by step, coaching and coaxing along the way. It walks inventors through a series of questions about their invention, provides suggested answer templates to force inventors to provide the information necessary and gives illustrative sample answers. This is a good way to collect thoughts and start t put meat on the bones of an invention.
Another good way to move forward is to sketch the invention. In the patent drawings are worth a thousand words and much more. The best part of drawings is that they are extremely cheap compared with the cost of creating a prototype. In fact, a patent illustrator typically charges between $50 to $100 to prepare a page of patent drawings. That can be the best investment you will ever make. Similarly, working with someone who can create 3D renderings can be extremely helpful. On the path to creating a 3D rendering CAD drawings will be created, which can then be used to create line drawings suitable for a patent application. The 3D renderings can also be used for things like sell sheets provided to potential buyers and potential licensees. While 3D renderings are more expensive than patent drawings, they are far cheaper than prototypes.
The moral of the story is that inventing is not rocket science; inventors are those with persistence and a plan. Spend time little by little working the idea, describing what you have in text, thinking about the various alternatives and then get some drawings. This step by step approach to inventing will get you from idea to invention, putting you in possession of all the information you will need to file a patent application and attract customers and potential licensees.