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 .
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.
For more tutorial information please see Invention to Patent 101: Everything You Need to Know. For more information specifically on patent application drafting please see:
- Distinguishing Colloquial Obviousness and Legal Obviousness
- AI Patents Make a Comeback at USPTO, Finance Patents Are Still Struggling
- Japan Patent Office Case Examples on Artificial Intelligence Offer Guidance for Other Offices on Treating AI Inventions
- Anatomy of a Valuable Patent: Building on the Structural Uniqueness of an Invention
- Winning Strategies for Getting Past the Five Types of Patent Examiner
- Software Patent Drafting Lessons from the Key Lighthouse Cases
- Patent Drafting Basics: Instruction Manual Detail is What You Seek
- How to Write a Patent Application
- Admissions as Prior Art in a Patent: What they are and why you need to avoid them
- Patent Drafting: The most valuable patent focuses on structural uniqueness of an invention
- Patent Drafting: Proving You’re in Possession of the Invention
- Patent Drafting: Understanding the Enablement Requirement
- Patent Drafting 101: Say What You Mean in a Patent Application
- Patent Drafting 101: Going a Mile Wide and Deep with Variations in a Patent Application
- Learning from common patent application mistakes by inventors
- Defining Computer Related Inventions in a post-Alice World
- Patent Application Drafting: Using the Specification for more than the ordinary plain meaning
- Patent Strategy: Advanced Patent Claim Drafting for Inventors
- Patent Drafting 101: The Basics of Describing Your Invention in a Patent Application
- Patent Drafting for Beginners: The anatomy of a patent claim
- Patent Drafting for Beginners: A prelude to patent claim drafting
- The Inventors’ Dilemma: Drafting your own patent application when you lack funds
- Patent Drafting: Describing What is Unique Without Puffing
- 5 things inventors and startups need to know about patents
- Drafting Patent Applications: Writing Method Claims
- An Introduction to Patent Claims
- Patent Drafting: Define terms when drafting patent applications, be your own lexicographer
- Patent Language Difficulties: Open Mouth, Insert Foot
- Patent Drafting: The Use of Relative Terminology Can Be Dangerous
- 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
- Invention to Patent 101 – Everything You Need to Know to Get Started
- Patent Drafting 101: Beware Background Pitfalls When Drafting a Patent Application
- Describing an Invention in a Patent Application
- 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
- How to Describe an Invention in a Patent Application
- Patent Drawings 101: The Way to Better Patent Applications
- Patent Drafting: Top 5 Critical Things to Remember
- Patent Drafting: Not as Easy as You Think
- Completely Describe Your Invention in a Patent Application
- Drafting Patent Applications: Writing Method Claims
- Turn Your Idea into an Invention with a Good Description
- Patent Drafting: What is the Patentable Feature?
- Writing Software Patent Applications