Posts Tagged: "completely describing an invention"

If you are going to file a patent application you must have drawings to include in the application, but patent drawings are not the only type of “drawings” that an inventor should be considering. Patent drawings are wonderful for a patent application, but they don’t always do the invention justice if you are trying to capture the attention of a prospective licensee, or if you are trying to convince a buyer to place orders or sell the invention in their store. Patent drawings and other types of invention drawings, such as 3D renderings and photo realistic virtual prototypes serve different purposes.

The trick to drafting an excellent patent application is to describe anything that will work, no matter how crude, no matter how defective. You want to capture everything. This is because the only power of a patent is to prevent others from doing what is covered in the patent. If you are making money there will be others who want to do what you are doing. Your patent can prevent them from doing what you are doing, but a strong patent will also prevent would-be-competitors from doing anything that is close.

Whether you are an independent inventor, an fledgling entrepreneur or a seasoned inventor who is going out on your own for the first time, the best thing you can do for yourself is to become familiar with the concepts and procedure associated with protecting your inventions. Obtaining patents is not easy for the uninitiated, and without some familiarity you will…

Without a patent search you will invariably describe all aspects of the invention with equal importance, although we know from experience that there will always be certain features that deserve greater attention because they will contribute more to patentability. While it is helpful to identify any difference between an invention in the prior art, it is critical to spend the greatest amount of time discussing the features and variations that that will contribute to a patent being issued; that is where the patentable invention resides. This uniqueness will allow you to build a patent application that can lead not only to a patent, but a patent that meaningfully protects the core of what makes the invention unique compared with the prior art.

It is absolutely essential to think outside the box when describing your invention in any patent application. Stop and think about different ways that your invention can be made or used, even if you deem them to be inferior. Failure to disclose alternatives will almost certainly foreclose your ability to argue that those alternatives are covered by your claims and disclosure, which will prevent any issued patent from covering that which has been left out.

You want to capture everything you possibly can in a patent application. That means generally describing the invention, it also means specifically describing the invention and all the different versions (called “embodiments” in patent speak). The only power of a patent is to prevent others from doing what is covered in the patent. With your patent you want to prevent would-be-competitors from directly competing and from competing with substitutes, even substitutes that are inferior. Think of the patent as creating a wall around your invention. You do not have to use all of what you capture/define in your application, but having it will create the barrier to entry that can insulate you from copyists or those who want to get into your market and offer something as close as possible without actually infringing.

Explaining the function of the invention is helpful, but only explaining something in terms of function leaves many questions unanswered because it is not terribly descriptive. For example, assume you are unfamiliar with a couch. If I were to try and describe a couch by explaining that you sit on it to watch TV, would that bring to mind a couch? It might, but it might also bring to mind a chair (of various sorts), a recliner or perhaps a love seat. Maybe even a bar stool. Notice also that when describing the couch for sitting we are leaving out lying on the couch. If I were to describe the couch structurally, however, the reader would be able to understand that you could sit on it or lay on it. The description would also easily distinguish the couch from a bar stool or chair. Thus, describing function can be helpful to get the reader thinking in the right direction, but normally it does not bring the reader all the way to an unambiguous understanding.

It is also vitally critical for inventors to understand that the strength and breadth of your disclosure will be determined not only by the general descriptions, but by the specific descriptions that explain various embodiments.  Inventors frequently want to only describe things very generally, and that is a recipe for disaster. If you describe things so broadly it will be easy to find prior art for the invention disclosed, which means no patent may be able to be obtained. Resist the temptation to hold back on the specifics. If you don’t want to provide the specifics that is fine, but then you really shouldn’t be applying for a patent at all.

“In order to satisfy this requirement you need to specifically and objectively define and describe how to make and use your invention. The enablement requires says that every embodiment needs to be described so that it can and will work. The quickest way to explain the concept of enablement is by way of example. The popular children’s song “Skeleton Bones” explains how all the bones in the body are connected. The leg bone is connected to the knee bone, which is connected to the thigh bone, which is in turn connected to the back bone, which is connected to the neck and so on. Notice that this is a very general overview of how the bones in the body are connected. This is a good first step.”

To properly accomplish the goal of having the best disclosure possible you should also not think in terms of a single patent drawing or illustration, but rather in terms of however many patent drawings are necessary in order to demonstrate what you have invented. Most patent applications have at least several sheets of drawings, with each sheet routinely having multiple views of the invention. You may need to show various views (top, bottom, right, left, etc.), or you might show what is called an exploded view, where the elements are suspended in space and if you envision them collapsing inward the device would become whole. You may also want to break down the invention and show drawings of one or more of the component parts. In my experience most patent application do not have as many drawings as they could have, which is a mistake.

In order to obtain exclusive rights on an invention the law requires that the patent applicant particularly point out and distinctly claim the subject matter which the inventor regards as his or her invention. Any patent, or patent application, contains a variety of different sections that contain different information. Generally speaking, a patent is divided into a specification, drawings and patent claims. Only the patent claims define the exclusive right granted to the patent applicant; the rest of the patent is there to facilitate understanding of the claimed invention. Therefore, patent claims are in many respects the most important part of the patent application because it is the claims that define the invention for which the Patent Office has granted protection.

If you are considering moving forward on your own the first question you should ask is whether you should even be pursuing an invention. The cost of filing for and obtaining a patent is typically quite minor in comparison to the amount of money required to create, market and distribute the invention. So if you can only muster several hundred dollars and need to file your own application because that is all you have, what are the realistic chances that you will be able to move forward in the commercialization process? I understand it is prudent to proceed with care and not needlessly waste money, but a couple hundred dollars is not a realistic budget. Truthfully, you might as well go to Vegas and put it all down on black (or red) and let it ride. At least you have close to a 50% chance, which is a greater chance of success than having only a few hundred to spend on your invention.

Simply said, a patent application is only as good as what is included within the application, and general or vague descriptions do nothing more than guarantee that no patent will ever issue. Beyond that, how can you realistically do a patent search on a first level, vague articulation of an invention? At present there have been more than 8.7 million U.S. utility patents granted and over 700,000 design patents granted. I can guarantee that if you vaguely describe your invention it will be easy to find prior art that will be exactly what you have described. Of course, when you see it you will say: “that isn’t anything like my invention.” But if you say your invention is multi-purpose knife, for example, and that is all you say then any multi-purpose knife would be prior art that would prevent you from obtaining a patent.

The key to any software patent application is to describe the invention with enough technical detail, system specifics and process information so that a computer programmer could take the disclosure and code the software without having to make any independent, creative decisions. Essentially, you want your patent application to be a design document. This is critical because it is the design of the software — the architecture of the system, how the algorithms are strung together, the rules, calculations and manipulations — that are patentable. Software code is not patentable. You can and should get a copyright on the software code as written, but the invention does not reside in the code. The computer programmer is merely a translator that takes your invention and writes it into code that the computer can execute.

Method or process claims are relatively easy to write once you know what the core invention is and what is necessary to be included in the claim in order to overcome the prior art.  Like all claims, method or process claims must completely define the invention so that it works for the purpose you have identified AND it must be unique when compared with the prior art.  By unique I mean it must be new (i.e., not identical to the prior art, a 35 USC 102 issue) and it must be non-obvious (i.e., not a trivial or common sense variation of the prior art, a 35 USC 103 issue). Method or process claims will include active steps to achieve a certain result.  In method claims the transition is typically either “comprising” or “comprising the steps of.”  While legally there may be some distinction between these two different transitions, both are acceptable.