Posts Tagged: "completely describing an invention"

Patent Drafting: Understanding the Specification of the Invention

This so-called adequate description requirement pertains to the level of description that must be included in the ”specification,” which is most typically defined as that part of the patent application that is not a drawing figure and is not a claim. This is the most common definition for the term “specification” because if and when you need to amend an application there are three separate sections for an amendment, one for amendments to the specification, another for amendments to the claims, and a third for amendments to the drawings. When you get to the point of the process where you will need to amend the application (which goes beyond the scope of this article) you will amend anything that is not a claim and not a drawing under amendments to the specification.

Tricks & Tips to Describe an Invention in a Patent Application

One excellent way to make sure you are including an appropriately detailed description that treats a variety of variations and alternatives is to have many professional patent drawings. You should then describe what each drawing shows. The quickest way to explain what you want to do 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, but there is a lot more that can and should be written.

Patent Drafting 101: Beware Background Pitfalls When Drafting a Patent Application

Pitfalls to be on the lookout for when you are preparing the Background of the Invention. First and foremost it is critical to remember that your patent application is about your invention, not the prior art. You will only discuss in vague, cursory terms the prior art and only to the extent that it can be useful and not harmful. You must always remember the problems inventors face when they lock themselves into a particular articulation of structural features and when they trivialize their own invention by making it seem obvious.

Patenting business methods and software still requires concrete and tangible descriptions

The key to obtaining a software patent is to thoroughly describe the system and processes from a technological level. As to Judge Chen explained in DDR Holdings, in order for software patent claims to be patent eligible they must not “merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet.” To be patent eligible claims to software must be “rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” Of course, this patent eligible example of software patent claims is extremely relevant for business methods because a naked business method is no longer patent eligible. To have a realistic chance of being patented business methods must be tied to a particular compute technology in a meaningful and substantial way. Said another way, the business method really needs to be performed by and through a concrete and tangible system, where the system and processes are painstakingly described.

Describing an Invention in a Patent Application

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 required by U.S. patent laws 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 filing of the earlier inadequate patent application.