One of the biggest problems that inventors face when setting out to define their invention is with describing what the law refers to as “alternative embodiments of the invention.” Most inventors are quite good at describing exactly what they have invented. The invention is your work and you know it best, so it is not surprising that most inventors can (with enough effort) explain the preferred version of the invention; what the law refers to as the “preferred embodiment.” Nevertheless, 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 say those alternatives are covered by your disclosure, which will prevent any issued patent from covering those undefined variations. This may not seem like a big deal, but history has shown that it is critical. If you are lucky enough to have invented something of great importance there will be a number of individuals and companies trying to capitalize on the opportunity you have created. If you dismiss variations or entirely different and unique embodiments then you are leaving those to the individuals and/or companies that would seek to capitalize on a product or process that is similar to your own, but not specifically covered by your patent claims. So what can you do?
Before you do finalize your provisional patent application, or if you are working with a patent attorney or patent agent — before you finalize what information you provide to them, you should go back through what you have written and ask yourself whether you are using any terms that may have a particular meaning. With each term ask yourself whether it has a commonly understood meaning by those who are skilled in this field? If the term does have a commonly understood meaning in the industry it is absolutely essential that you use it to mean what others in the industry think it means. Do not get creative. While the patent laws do say that a patentee can be his or her own lexicographer, it is important not to make too much of this latitude. If those in the industry understand a term to carry a certain meaning that is the meaning the courts will use when interpreting the scope of the patent disclosure, but why take a chance? When in doubt it is always the best practice to explain through illustration and description rather than to simply rely upon a meaning that may or may not be understood in the industry. The specification you create and ultimately file is the glossary for the invention and is intended to describe what you have in its full glory and to define any terms or concepts so everyone understands and there is no ambiguity.
It is also essential that you look over what you have written to make sure that the description is complete. In order for any patent application to be complete the invention must be enabled. This requirement, aptly named the enablement requirement, is geared toward ensuring that every disclosure places the subject matter of the invention into the possession of the public. This is what is commonly referred to as the quid pro quo of patent law. The government will grant a patent, together with exclusive rights for a limited time, provided, however, that the inventor explain in specific detail how to make and use the invention covered by the patent. The purpose of the requirement is so that when the patent expires the public has enough information to make and use the invention without having to go back to get more information from the inventor.
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.
The back bone, however, is made up of many smaller bones. For example, there are seven cervical vertebrae in the necks of all mammals, and these bones together make up a portion of the back bone. Therefore, a more complete description of the backbone would point out that the neck is a part of the backbone. An even more complete description might include saying cervical vertebrae 1 (i.e., C1, which is a part of the neck) is connected to cervical vertebrae 2 (i.e., C2) and so on. The point is that the more description you provide the better, but you absolutely must have at least the big picture overview of how everything fits together, and how to make and use the invention. Therefore, be sure that you have disclosed with as much detail as possible how all the pieces of your invention connect, work together, function and interrelate.
On excellent way to make sure you are including an appropriately detailed description that treats a variety of variations and alternative embodiments is to have many professional patent drawings. In fact, the single best way to enhance any disclosure is through quality patent drawings, and I am a big fan of including more rather than less. This is because whatever is shown in the drawings will be considered disclosed, and drawings are really worth 1,000 words and then some to tell a story.
The patent laws require the patent applicant to furnish at least one drawing of the invention whenever the nature of the case requires a drawing to understand the invention, which in my experience is almost always. The only real exception being when you are claiming a chemical compound. The drawings must show every feature of the invention specified in the claims. In order to capture the full benefit of a filing date, a patent application needs to completely cover the invention and all permutations as of the time the application is filed, and drawings can and will provide a safety net if you have enough and they are detailed. The United States Court of Appeals for the Federal Circuit has frequently consulted drawings in order to determine what one of skill in the art would have considered disclosed at the time the application was filed. If you accidentally leave something out of the written disclosure, the drawings you submit may save you in the long run, provided of course they are detailed enough to convey nuanced information about your invention, hence the preference for high quality professional illustrations rather than just amateur sketches. In many cases the Patent Office will accept those amateur sketches, but given the relatively low price of getting professional drawings ($50 to $100 a page) and given the far greater detail in a professional illustration, you are really doing yourself a disservice if you do not have professional illustrations at the time of filing.
So why do drawings help so much with the disclosure? In addition to the truth that a picture (or drawing) is worth a thousand words, in a patent application you are supposed to go through and explain in writing what each of the drawings shows. So if you have more drawings that is naturally going to lead to more textual description. If you actually do go through the drawings one by one and explain what they show you will invariably find yourself thinking of things that could be discussed but aren’t actually shown well in the drawing, perhaps because of the angle or perhaps because you want to talk about the materials that could be used for the pieces and parts. That is fine, just write it into the description. The drawings are there to facilitate understanding and if as you describe something in the drawing you think of other things just describe them in the text. For example, the drawing might show a do-hickey and instead of a do-hickey it could be a widget. So you just explain: “do-hickey 15, which could be made out of A, B or C, connects to whatchamacallit 10, which likewise can be made out of A, B or C. Although not pictured, the do-hickey 15 could instead be a widget.” I know this is a little skimpy, but it is intended to just be low level illustrative of the fact that you use the drawings and the associated reference numerals to direct the reader to the pieces and parts you are discussing. The point is you get more disclosure with more drawings and then if you actually do go through and describe the drawings like you are supposed to you will put more meat on the bones and almost certainly be inspired to think of variations or alternatives you wouldn’t have otherwise thought about.
At the end of the day you are trying to describe something that at least in part has heretofore never existed, after all that is what is required to have an invention. So you need to describe not only the specific invention you have but all the possible variations and options, because if you don’t describe those they are not a part of your invention and you are just inviting competitors to copy you without infringing your patent. One convention that might assist you as you set out to describe your invention is to think about how you would describe your invention 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, and when combined with good, quality drawings you really have something worthwhile.
For more information on patent application drafting please see:
Join the Discussion
19 comments so far.
Gene QuinnMarch 22, 2011 09:48 pm
Congress did not pass the law to allow for less onerous filings. Provisional patent applications came into being in 1995 and allow U.S. inventors not to be disadvantaged compared with foreign inventors. If the invention is conceived in the U.S. you must file first in the U.S. and obtain a foreign filing license before you can file anywhere else in the world. So foreign inventors were in a better position than U.S. inventors because they could file in their own countries up to a year before filing in the U.S. This foreign application would provide priority, but the patent term would not start to run until you filed a nonprovisional patent application. Those who conceived in the U.S. did not have the benefit of obtaining priority without also starting the patent term running by filing a nonprovisional patent application.
Dave KorpiMarch 22, 2011 08:05 pm
I got you guys on the drawings.. But if you read it carefully you will see it said “We all LOVE drawings but do not forget that many readers will want to file a provisional application and drawings here are not of critical import. ”
What I mean by “critical import” I mean to say they do not have to be “formal” and properly annotated. Of course you need drawings unless you only have method claims. Of course the drawings need to support the description and the enabling disclosure. To do this they need not be “formal”. The reason they do NOT have to be formal is to meet the spirit of why Congress passed the law to make the patent application process less onerous to allow folks to get an early filing date and file them by meeting the filing requirements.
Stan E. DeloMarch 22, 2011 07:23 pm
I believe step back makes an excellent point about the specification and the claims, and the possible lack of the latter, and how important that makes the spec and the drawings for a PPA. If you don’t have accurate drawings, they won’t be able to adequately support the spec, or maybe even vice-versa in my opinion.
Also I tend to think a PPA should have claims derived as part of writing the spec, even if they aren’t filed with the PPA for precautionary reasons, but that way you at least will have some idea of what you really have. Personally I wouldn’t try to write my own claims because I am too biased about my own invention, and I had a very experienced patent agent pull them out of the spec that we came up with together. I have also had several very talented practitioners in the past suggest writing the claims even if we didn’t file them, to make very certain that we didn’t miss anything in the preparation of my application, which is a fairly complex invention. That’s my personal opinion, and I’m sticking to it!
Gene QuinnMarch 22, 2011 04:22 pm
You write: “We all LOVE drawings but do not forget that many readers will want to file a provisional application and drawings here are not of critical import.”
That is 100% incomplete. Take a look at 35 USC 111(b), which says:
“(b) PROVISIONAL APPLICATION.-
(1) AUTHORIZATION.-A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include-
(A) a specification as prescribed by the first paragraph of section 112 of this title; and
(B) a drawing as prescribed by section 113 of this title.”
35 USC 113 says, in relevant part:
“The applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented.”
So drawings are 100% absolutely required in a provisional patent application in order for the provisional to be a useful priority document. If a drawing is “necessary” and a provisional does not include a drawing then the provisional patent application will not be able to be used as a priority document, which could then result in the inventor not being able to obtain any patent.
This is the problem with those who are not patent attorneys or patent agents offering legal advice.
While I am happy to have you comment on IPWatchdog.com, I am not going to allow you to promote your provisional patent course. The first rule of commenting on IPWatchdog.com is that you also cannot provide legally incorrect information, particularly on posts aimed at inventors. We can and do get into heated debates (and I love those) about interpretations of the law, but when one makes a clearly incorrect statement (as you have done) that is not something that I tolerate.
If you are telling individuals to file a patent application without a drawing you should also make sure you have plenty of assets or liability insurance.
step backMarch 22, 2011 01:13 pm
It appears form your web page: [EDITOR’S NOTE: URL deleted].
that you are neither a patent attorney nor a patent agent because otherwise
you would not be so cavalier about provisionals.
A provisional must comply with all aspects of 35 USC 112 except that the specification need not as a mandatory matter, conclude with claims. However, not including claims and not verifying that the same are fully supported by spec and drawings is foolishness in itself.
It will not surprise me if the Brave New FTF World (FTF= First To File) will feature coal powered buses whizzing by on our gravel roads, belching smoke and having FTF advertisements emblazoned on their sides saying something like: File first and File often, Ask questions after. Remember, First To File is first to win! (p.s. Drink Brando, It’s got electrolytes)
Dave KorpiMarch 21, 2011 07:44 pm
Drawings, drawings, drawings!
We all LOVE drawings but do not forget that many readers will want to file a provisional application and drawings here are not of critical import. THis is because Congress mandated the Provisional Patent Application beduce paperwork and be available to inventors without the use of an attorney.
So, for those of you with an inventive idea and scared by all ths hoopla around drawings.. Take heart.. A nice sketck clearly describing your inventive idea is good enough to file your provisional. Heck, it only costs $110 and you get your filing date when you file it. [EDITOR’S NOTE: advertisement deleted].
So, the lesson is get a provisional and be sure to describe every embodiement you can, even to the point of describing more than one inventive idea with the intent op preventing the examiner claiming you have “new matter”. I LOVE the provisional for that alone! It is an awesome PROACTIVE strategy in filing a non provisional !
Blind DogmaMarch 20, 2011 11:30 pm
To enjoin the conversation, Section 113 states (in pertinent part):
35 U.S.C. 113 Drawings.
The applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented. When the nature of such subject matter admits of illustration by a drawing and the applicant has not furnished such a drawing, the Director may require its submission within a time period of not less than two months from the sending of a notice thereof. (Emphasis added)
Note that the language indicates a double discretion – first whether the drawing admits to necessity, and then, whether the Director may require one.
This discretion is reflected in the MPEP section I quoted above.
As to the other issue, which shall be nameless on this thread, I guess now that it is nameless it has disappeared into the aether.
Ooops – I have just undone Michelson and Morley’s experiment by mentioning the aether, so now it must once again be a viable theory (according to the pristine logic of the non-skeptic Step.
For a better understanding please follow the soggy link provided by the lip-stained Step. Enjoy.
step backMarch 20, 2011 07:34 pm
Off topic comment by Step Back deleted.
Gene QuinnMarch 20, 2011 07:04 pm
Please! It is clear to anyone who can read that you did not provide any citations that actually said what you say they said. On the other hand overwhelming price with citation was provided to you. You also refused to address any of the facts I presented. So it is you who are in denial and it is you who is the skeptic.
Please try and keep things intellectually honest, and since this post has nothing to do with global warming, climate change and/or alternative energy let’s not go down that eat hole here and now.
Blind DogmaMarch 20, 2011 06:00 pm
You are still wrong about Global Warming. Your descent into pedanticism there speaks so loudly, that nothing else you say can be heard.
step backMarch 20, 2011 03:37 pm
I did not receive any shellacking from you re Global Warming. It’s more like you poured a keg of FUD-WOT Kool-Aid over the debate without ever providing any authoritative citations. Typical of you “skeptics”. And yes I do mean you “skeptics”.
Be that as it may, your anecdote about EFS I think is very informative for people who are not yet familiar with use of the EFS system.
The lesson learned is to double check before clicking the “file it” button.
Blnd DogmaMarch 20, 2011 01:28 pm
You seem a little bitter about the pounding I gave you concerning the Global Warming discussion. Your comment about “little fishy” is a bit petty – especially as you comment that you do not do the uploading, as your secretaries handle that.
Be that as it may, the only additional details that I have was that this was in the early days of the computer upload. I do not know if the upload and see function was there. Page count would not have helped, as instead of the actual drawings, each page merely had a small icon in the center of the page.
Also, not withstanding either of these points, the moral of the story is that method claims are treated as another exception. In my acquaintance’s case, he was able to preserve the initial filing date, notwithstanding the upload error (by the way, he did unsuccessfully petition for the later correctly submitted figures to have the earlier file date).
Step, try not to miss the point in your haste to pick an argument.
Stan E. DeloMarch 20, 2011 12:31 pm
Thanks a lot for this very timely contribution to my education. I will be filing a missing parts NPA in the next few months, and it seems like my patent agent kinda dropped the ball with the figures in my PPA, as he basically just had the illustrator copy some pictures of my experimental prototype, before I could communicate directly with the illustrator. Several things were flat wrong and wouldn’t work as drawn, which I managed to get corrected, but being $600 into the figures at that point, I decided to file the PPA anyways. The spec is very thorough though, but it kinda galls me a bit that I will have to go back and re-do almost all of the drawings before I can feel good about the application. The illustrator is very experienced and good, but I was not able to talk to him before he did the initial drawings. Live and learn I guess….
step backMarch 20, 2011 05:32 am
I am not at all a fan of the current EFS system.
I find the story about, gee the EFS system ate my drawings, a little fishy.
My understanding is that the EFS upload process can be done in two steps (although I don’t personally handle this stuff at my firm, the secretaries do).
First you can upload the files without having them considered as being “filed” and the EFS system can then confirm how many pages/ sheets of drawings you have so uploaded but not yet filed.
Then you can download what the EFS system thinks it has as your uploaded but not yet filed documents so you can do a what-you-see-is what you uploaded test.
Then you can press a file-it-now button after you have verified with the what-you-see-is what you uploaded test. And you get a detailed receipt of what you uploaded and filed.
So there should be no surprise that something was not uploaded as it should have been.
Another problem with the the story about, gee the EFS ate my drawings is that the spec normally includes a section called Brief Listing of the Drawings. And the Oath refers to the spec as being that which the inventors regard as their invention. So if you file with missing drawings, you get a Notice of Incomplete filing and the only way to remedy that is to refile with the missing drawings (or optionally with a changed spec and a new oath). In both cases you don’t keep your earlier filing date. So I don’t see exactly how method claims save the day when an essential part of the filing is missing. Maybe BD can furnish more details about the anecdotal story?
blueMarch 20, 2011 02:26 am
I agree with the post. Sometimes drawings are critical for understanding the scope and the essential features of an invention. Not every idea can be described in words, sometimes ideas can only be properly disclosed through the use of drawings. I am not referring to abstract ideas only, but ideas that involves the use of concepts that could be construed differently from different perspectives.
Gene QuinnMarch 19, 2011 09:38 pm
Thanks for the MPEP cite. I’ll confess I didn’t know that one.
What worries me is this: “It has been USPTO practice to treat…” and then later in the section: “Other situations in which drawings are usually not considered necessary…” I wonder how much of this is to help applicants obtain a filing date when drawings are left off? The PTO is pretty liberal in its interpretation of what is required to award a filing date if there is any way they can award a filing date.
Another thing that would worry me is if the patent actually became valuable and litigated. I’m sure patent litigators would challenge the “USPTO practice” of finding that methods don’t need a drawing to satisfy 35 U.S.C. 113. Of course, it is VERY nice to know that if drawings are not provided there is a safety net provided by the USPTO.
On an aside, I am not at all a fan of the current EFS system. Things not properly uploading through the system seems to be an all too frequent occurrence. If eBay or Amazon’s system operated like the USPTO electronic filing system they would have gone out of business years ago.
Blind DogmaMarch 19, 2011 04:25 pm
I can only relay an anecdote from a colleague who had the fortune awhile back (when the Office was updating their upload system) to have an application with method and apparatus claims. The drawings did not upload correctly, and when the colleague was notified by the Office, he was saved by having method claims.
I will refer you to MPEP 601.01(f):
“It has been USPTO practice to treat an application that contains at least one process or method claim as an application for which a drawing is not necessary for an understanding of the invention under 35 U.S.C. 113 (first sentence). The same practice has been followed
in composition applications.”
Granted – this was an exceptional circumstance and I definitely do not advocate ever filing without drawings for many of the reasons you outline above.
Gene QuinnMarch 19, 2011 02:47 pm
Can you give an example of a patent covering a method that does not have any drawings? The new 112 guidelines talk about flow charts, and the rule is a drawing is necessary when it would assist. Methods are susceptible to depiction. I think you are incorrect. I would also say that it us a tremendous risk not to include a drawing since not including one when it is necessary would prevent you from obtaining a filing date.
Blind DogmaMarch 19, 2011 01:43 pm
Not to downplay drawings (I am not as I agree with Gene on their importance), but there is a second exception: applications with method claims.