Patent Drafting: Top 5 Critical Things to Remember

Drafting a patent application is not easy. A patent application needs to describe your invention completely, and if you really are entitled to a patent then at least some aspect of your invention is new and non-obvious, which means that heretofore it hasn’t existed. Describing something new that has not previously existed if more of a challenge than most people realize.

Many times inventors fail to adequately describe their inventions because the invention is obvious to them, and they think it will be equally obvious to others. The law, however, requires that a patent application explain the invention to someone who is not already familiar with the invention. One of the best way to do this is to explain it like a child explains things when doing a show and tell at school. Children explain everything in excruciating detail, 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 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 the application. Explain your invention with so much detail that you will bore the knowledgeable reader to death.

That is all fine and well, but how do you explain your invention? Here are five things to keep in mind that are critical in order to fully and completely describe your invention. Thoughtful consideration of these will help you better articulate what you have that is unique in a way that will satisfy legal requirements in the  United States.


How to Make and Use the Invention

In order for any patent application to be complete the invention must be enabled. This legal requirement is called the enablement requirement, and the purpose is to insure that every disclosure explains enough so that when the patent expires those skilled in the industry will be able to both make and use the invention. This is a part of the so-called patent bargain. In exchange for a patent, which gives an exclusive right to the owner, it is necessary to describe the invention with specificity so that when the patent expires the invention falls into the public domain and can be used by anyone.

Whenever you draft a patent application, whether it is a provisional patent application or a non-provisional patent application, it is critical look at what you have written to see whether someone who is unfamiliar with your invention would be able to appreciate how to make and use the invention after reading your disclosure. It is very important to explain the invention and its various features and nuances with as much detail as possible, paying particular attention to how components are connected, the various process steps one must follow, and/or any preparations that may be necessary prior to beginning.

Also remember that a patent application needs to explain to those skilled in the art how to make and use the invention in a way that does not lead to the need for what is called “undue experimentation.” This means you need to explain the invention so that it could be made and used without individuals having to go through a trial and error process to figure it out for themselves.


Best Mode and Anything that Works too!

Most believe that the America Invent Act (AIA) did away with the best mode requirement, but that is not entirely true. The best mode requirement remains a part of 35 U.S.C. 112(a), but if you do get a patent issued that fails to disclose the best mode the patent claims can no longer be invalidated. But just because an issued patent claim cannot be invalided for lack of best mode doesn’t mean that you don’t have to include the best mode. Legally you still need to include the best mode. Practically, you should almost always want to include the best mode anyway.

The best mode requirement means that inventors must disclose any preferences they have in a patent application. The purpose of the best mode requirement is to restrain inventors from applying for patents while at the same time concealing from the public preferred embodiments of their inventions they have in fact conceived. Furthermore, the application you file must disclose the invention in its full detail. If you leave something out of your application then it is not considered a part of your invention. Thus, it is not a good idea to leave things out, and particularly not a good idea to leave out something that you believe to be superior.

Nevertheless, it is very important for you to describe your invention not only in terms of what works best, but also in terms of what works at all. If your invention becomes a success there will be others who will seek to legally copy your invention, which means they will do what you leave uncovered. For this reason you really need to ask yourself not only what are the required parts of your invention, but if you were trying to copy your own invention without infringing what modifications would you make? This is a critical question because that is the question that copyists will ask themselves. You want to cover not only what you want to do, but also what the copyist would likely want to try to get around your patent.



Written Description

Dovetailing with what has already been said, it is very important that a patent application completely define your invention because the patent applicant has the obligation to explain the full nature of the invention. If something is left out of the patent application then it cannot be a part of any exclusive right that the Patent Office ultimately grants.

With this in mind it is helpful to always remember that merely saying that different versions of the invention can exist is one step, but without more you are not teaching what the difference can be. Patent applications must teach the invention.

The written description requirement states that you need to define your invention so that the reader will be able to appreciate exactly the boundaries of what you have invented. When you say that other, undefined and unexplained variations can be made you are not defining the boundaries in a bright line way. You are leaving it up to the reader to figure it out for themselves, which means you have created a fatal flaw.

When you prepare a patent application you want to explain as much as you can about the invention and all of its various aspects and features. This is critical because you need to make sure this first filing is complete. This is essential because while the format of what you file can be changed, information cannot be added while still keeping the benefit of the original filing date you obtained. In other words, whatever is included in the patent application you file, whether in the written description, drawings or claims, is considered to be the full extent of your invention. You cannot add detail without a new filing date. Given that the U.S. is a first to file system, holding back and waiting until later to include information you have now is a huge mistake.

For this reason you want to make sure that you not only mention enough to distinguish the prior art you know about, but you need to add multiple levels of specifics and nuance, not only to expand your disclosure, but to make sure that at least one (or hopefully more) of your embodiments will wind up being patentable.  This is true because you can always expect a patent examiner to come up with prior art that you never thought existed. This is partly due to the fact that any examination will be years away, and some things that are secret at the moment might not wind up being secret as of the time of examination. This is particularly true because patent applications remain hidden from the public for at least 18 months.


Failure to Adequately Describe the Invention

One of the biggest mistakes inventors make is that they simply fall short of the specificity required. One specific problem I see is that many inventors write as if they assume the reader will be already familiar with the invention. It is always best to try and describe the invention so that any interested intelligent person can follow along. This is for several reasons. First, if any intelligent person can follow along then you certainly have described the invention so that someone with particular knowledge can understand, which satisfies the enablement requirement. Second, by writing so that an interested intelligent reader can understand you will provide more than a simple overview. By assuming no previous knowledge on the part of the reader you will describe your invention with greater detail.

Many inventors also think that it is most critical to get a very broad patent and they don’t want to include details. This is a huge mistake, and one that you may not be able to recover from.

When I interviewed Hall of Fame inventor Gary Michelson he told me this: “Why would I want a claim that is invalid? That doesn’t help me. I want the broadest valid claim.” Michelson is one of the most successful American inventors of all-time. He pioneered minimally invasive spinal surgery and ultimately sold his patent portfolio to Medtronic for $1.3 billion. If claims that are too broad aren’t useful for Michelson rest assured that they won’t be useful for you either. The message here is very important — describing your invention too broadly and without any specifics will result in patent claims that cannot be issued, or claims that if issued will be very easy to challenge. For this reason you must know what is in the prior art and make sure you accentuate the positive when describing your invention. Focus on what is unique. For more on this see Patent Drafting: What is the Patentable Feature.

In order for any patent application to be complete the invention must be described with great particularity. Where many inventors fall is in failing to describe the structure and mechanical connections. What is the structure of the components? What is the overall structure of the device? How are things connected? How do they interact? How are the pieces assembled? What are the alternatives for making, connection, interaction? What materials can be used? What optional features are present? What could be present? These and other descriptive questions need to be answered in order to particularly define the invention.


An Instruction Manual

You have at one time or another likely put something together. Several of my personal experiences relate to putting together a BBQ grill and a lawn mower. If you have ever had this experience you likely became quite frustrated, and likely also had a bunch of extra parts leftover, which doesn’t make you feel too secure when you are dealing with a rotating blade of a law mower or a BBQ grill connected to a propane tank! The last time I put together a BBQ grill there were multiple steps that were required, but which could only be performed after having undone one or more of the previous steps. Frustrating!

In some important ways your patent application should be akin to an instruction manual, but unlike the aforementioned BBQ grill, the reader of relevant skill in the area should be able to follow along. Having said this, there is an important caveat! A patent is not a blueprint. You do not need measurements or engineering drawings. In fact, including measurements and the detail often found in engineering drawings is a mistake because it will unnecessarily limit the invention to the narrow versions detailed. Patent drawings are more general and show the invention and its parts holistically.

Your goal is to make sure you describe the invention in a way that specifically describes your invention so that the reader will understand all the various permutations and that you are indeed in possession of all variations. In other words, you need to provide an instruction manual for making and using the invention, paying particular attention to describing modifications, specific embodiments and alternatives.

Also remember that drawings can be extremely helpful. I personally believe that most patent applications do not have nearly enough patent illustrations. You can normally get patent drawings for between $75 to $100 per page, sometimes more depending upon the level of detail required and number of figures you have on a single page. For the cost, patent drawings are the best way to expand a disclosure. Not only is everything shown in the drawing a part of your disclosed invention, but each drawings should be at least summarized in a patent application, which means the more drawings the more detail, and the more drawings the more written description you will have explaining the drawings. For more on use of drawings see Working with Patent Drawings to Create a Complete Disclosure and Patent Illustrations and Invention Drawings: What do you need?.


Additional Information

For more from our patent drafting series please also see:


Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Join the Discussion

25 comments so far.

  • [Avatar for Anon]
    June 4, 2014 12:14 pm

    Should “but that is no reason to endeavor to be accurate.

    read instead

    “but that is no reason to endeavor to be inaccurate.”…?

    MaxDrei – I tire of your posts and your seemingly deliberate attempts to be pedantic. Your use of the 5% figure was wrong on several levels – from the pure economic reality, to the missing of the point of innovation and innovation market development costs and bottom line, the number you want to depend on to make a point is not there to support the point you want to make.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 3, 2014 10:56 pm


    You can say whatever you want, dismiss what I am saying which is clear to everyone except apparently for you, but the reality is you said something that was incorrect.

    As far as meaning being critical, all I can say is if you want to engage here meaning is critical. Careless comments that don’t convey meaning do not forward discussion, which really should be self evident. It is ashamed that I have to actually say these things to you. It is even more sad, or perhaps frustrating, that it needs to be said over and over again because you are playing dense.

    If you can’t communicate clearly then what is the point in commenting? Be as obtuse as you want on the ordinary articles, but incorrect statements that can easily be misinterpreted by a novice reader are not appropriate when the post is aimed at a novice audience. Why you can’t understand that is a real mystery.

    Comments are not legal advice or a contract, but that is no reason to endeavor to be accurate.


  • [Avatar for Benny]
    June 3, 2014 01:05 pm

    Gene, some of you seem to treat the comments as though they were a legal contract, or a patent application draft, where the words and meanings are critical, and not like a conversation. As long as we understand each other, there is little to be gained in discussing the phraseology – not in a forum, anyway. There is no need for a discussion over whether the rules for enablement are properly applied – I’m not in disagreement over that point, But USPTO examiners are human and sometimes make mistakes, and when they do the outcome is sometimes comical (as in the case I mentioned) and sometimes expensive.

  • [Avatar for MaxDrei]
    June 3, 2014 11:20 am

    Anon advises us that the KSR Decision:

    “..makes it almost necessary for scriveners to “hide the ball” – being more clear and direct actually hurts the client by mapping out an obviousness rejection.”

    Meanwhile, Readers, I’m advising you that outside the USA scriveners who hide the ball will do their clients out of a patent.

    Can that contradiction be reconciled? I think it can, but only by drafters who understand both cultures, First to File and First to Invent.

    As to the fact that the USA makes up less than 5% of the world’s population, American owners of patent rights make money today out of the US market and out of the market other than the USA. Should we ask Apple or MS, or J&J or Pfizer, or Covidien or Boston Sci or Medtronic, where they are currently filing, and where they expect to make good money, ten years from now? One might suppose that America wants the rest of the world to consume more, that the rest of the world will gradually catch up with the USA, and that this catching up will increase wealth also in the USA.

    Or would that assumption of mine be wrong?

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 3, 2014 11:11 am


    If you want to be purposely dense on this matter then please go right ahead. You know well what I am saying. Why you are choosing to play stupid is beyond me.

    This article is clearly intended for a novice audience. I know what you were trying to say, but what you said was incorrect. On articles that are aimed at a novice audience I don’t accept incorrect statements of law. I told you I was happy to have a discussion with you about whether patent examiners appropriately enforce the enablement requirement in all cases. Instead, your reply was for me to lighten up. Why would I lighten up? Your comment was misleading and incorrect. Instead of understanding my concern you get on your high horse. Well if you want to go to the engineering forums and not return that is up to you. I’m sure there are plenty of places on the Internet where you can say things that are incorrect and no one cares. Here, however, particularly on articles written about patent basics for a novice audience, incorrect statements of law that can only mislead are not appropriate.


  • [Avatar for Anon]
    June 3, 2014 11:04 am

    MaxDrei @ 16,

    Thanks – you are getting closer, although you still labor under some misconceptions.

    Mind you, some of what you post does fall into a “best practice” mode as opposed to a “what is required” mode. Notably, I always stress to my clients to take the most rigorous prior art search possible and to differentiate from the results of that search.

    However, – that is neither a requirement, not necessarily the “best” way for a client in every situation. Further, there was a study a few years back that showed that (at least in the US) such efforts were NOT reflected in actual examination by the USPTO. By this, I mean that examiners often pay little attention to the contents of an IDS, and will perform their own searches and often will use (and misuse) their own found art – and sometimes in a most frustrating and odd way, use art that simply would not appear in a prior art search by the client or the client’s counsel.

    Further, and for various reasons, taking an affirmative stand as to “the difference” between the client’s invention and the state of the art has become patent profanity.

    One reason (from among many reasons) has to do with the KSR decision, and the Court’s inapt handling of what constitutes prior art for obviousness. Traditionally, innovation springing from a cross-fertilization of different art fields was a welcome thing, still able to earn patent rights. The Court has sought to turn that spigot off, by inserting into the US version of PHOSITA extra power beyond an automaton. This extra power threatens to eviscerate any patent that is the product of a cognitive effort to improve the art, and makes it almost necessary for scriveners to “hide the ball” – being more clear and direct actually hurts the client by mapping out an obviousness rejection.

    As to your 5% – I hope you understand just how you erred with that logic. 5% does not even fly in a pure economics sense, much less a combined tactical business/technical/patent sense.

  • [Avatar for Anon]
    June 3, 2014 10:49 am


    There is nothing wrong with cynicism per se.

    Where the cynicism misfires is when you post from only a technical standpoint and miss what is obvious to those of us that understand both the technical and legal views. When you do that, you come across as just another smarmy and misunderstanding slashdot/techdirt type, drinking the koolaid that is consumed in mass quantities (not merely tolerated, but even appreciated – but for all the wrong reasons) on those engineering forums.

    Try to remember that most patent attorneys really do understand both the technical and the legal aspects. If you want to be cynical, then you really should understand the topic that you are being cynical about – and that does mean understanding the legal implication in addition to the technical ones. I often clash with you when you forget about those legal points, and often understand your cynicism when you come around and take note of those legal points.

  • [Avatar for Benny]
    June 3, 2014 08:30 am

    Gene at 14,
    All I am saying is that occasionally the USPTO slips up and lets a bad one through – one that doesn’t adhere to the rules. It is precisely because such patents are the exception to the rule that they are widely known.
    I wasn’t aware that a cynical attitude is unwelcome on the comments page. If that is the case, I’ll stick to the engineering forums, where such an approach is not merely tolerated, but even appreciated.

  • [Avatar for MaxDrei]
    June 3, 2014 04:05 am

    Afterthought to #16 above.

    I should have dded that in ROW it really does matter, that you draft as I urge. It can make a decisive difference to the outcome of the examination for non-obviousness, outside the USA.

    When you don’t get to issue, outside the USA, your Client will likely want to know why, and will then likely find out.

    He might then ask you to explain why your drafting was ill-adapted to get to issue, all over the world except for the USA.

    The USA has already fallen into line, with the rest of the world, on First to File. For me it is not inconceivable that, also on non-obviousness under FtF, the USA will trend towards the de facto ROW Standard over the next 20 years, that is to say, assessing what was or was not obvious to the PHOSITA, on a specific date, namely a date that is LATER than when the patent application was drafted.


  • [Avatar for MaxDrei]
    June 3, 2014 02:34 am

    Thanks for that comment Gene.

    That every human being is a consumer was my thought. If you don’t consume, you die.

    More than 95% of the world’s human beings ie consumers are not resident in the USA. That’s all I meant.

    Or do you suppose that the USA will continue to consume most of the world’s resources and the ROW very little? Isn’t China, for example, consuming more these days than it used to? Not as much, per capita, as the USA, granted, but there are an awful lot of people outside the USA who are starting to consume. Do you see that increased consumption as no more than a transient blip? If so, come and look at the flow of manufactured goods on ships departing the port of Hamburg, and where they are bound.

    As to “disclosure” all I meant was that it should disclose the Invention, the contribution to the art, the “Difference that makes a difference”. Judges expect the patent application to identify not only what Difference the Inventor brings but also what Difference (for example, in Performance Levels) that difference makes.

    I am indebted to Anon for the mention of “Patent Profanity”. From Finnegan:

    “Avoid Patent Profanity. Patent profanity refers to those words in the specification that call attention to a particular aspect or embodiment of the invention and thus unnecessarily limit the scope of the invention. Patent profanity should, therefore, be avoided when one prepares the patent specification. A failure to filter out those words almost always leads to undesired consequences in a future patent litigation.”

    The Rest of the World drafts according to a “Layers of the Onion” model, in which the core is the Best Mode and the layers are the intermediate generalisations between the concept of the independent claim and the embodiment shown in the detailed drawings. I like to think that cases can be drafted in ROW style without straying into Patet Profanity. But can they? I continue to wonder. What do you say?

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 2, 2014 08:16 pm

    Max @ 5 and @7

    You say @7 — “As to the 95% figure, do you doubt that, ten years from now, of the world’s consumers less than 5% will be living within the USA.”

    There is little chance of that being the case. 35% (or more) of the world population comes from China and India. Most in India live in extraordinary poverty, and there is no change in site. China will have a real socio-economic crisis on its hand as more Chinese want to enter the middle-class and become consumers, but that is years and years away. The vast majority of those who live in Africa live in extreme poverty. There is absolutely no chance that your prediction will come true.

    @5 you ask about drafting. The purpose of this article was to teach those who are getting started what they need to focus on to make a disclosure. As with any writing an article cannot be a thesis, or volume of an encyclopedia. So you are right, I don’t here go into the kind of detail that you explain, although elsewhere in the patent drafting articles I do give examples of the extreme generic statement and compare it as it gets more specific.

    I am a fan of including as much in a disclosure as possible. Even with the best, most detailed disclosure years later you will wish you included more.

    As for whether the US is moving toward the level of specificity you mention, in some areas they certainly are. For example, in the software space many existing patents couldn’t be granted today because they are simply too generic and provide no technical details.

    I don’t know that we need the level of information you cite for ranges, but if that level of information exists then it absolutely should be included in the disclosure because that level of information gives much broader support for nuanced claims.


  • [Avatar for Gene Quinn]
    Gene Quinn
    June 2, 2014 08:06 pm


    I am not going to loosen the tie AT ALL! You said that the enablement requirement is not actually always necessary. That is flat wrong. This is an article aimed at those who are novices. I NEVER tolerate that sort of inaccurate statement on these articles.


  • [Avatar for Anon]
    June 2, 2014 04:59 pm


    There are plenty of classic examples of language generally acceptable at the time of drafting that later court cases have made to be “patent profanity.” Many of those are “thorough” and reduce wideness and concurrently reduce effectiveness.

    That you seem shocked at this is puzzling.

  • [Avatar for MaxDrei]
    June 2, 2014 03:42 pm

    anon: “being more thorough can reduce wideness”

    Interesting! (one might exclaim). Is there anybody out there willing to step up and second anon on that warning, that advice, that insight, that being thorough can prejudice the scope of protection one seeks to achieve for one’s client?


  • [Avatar for Anon]
    June 2, 2014 01:34 pm

    Of course it goes without saying that the choice of words will be undertaken thoughtfully. Such a statement from you is again meaningless – both to the larger practice of our craft and to the immediate conversation.

    The key is the traditional notions of trade-offs between thoroughness, wideness, and effectiveness. Understanding that being more thorough can reduce wideness (the notion of excessive picture claims being NOT-effective and essentially worthless, although of most clarity should not be lost on you).

  • [Avatar for MaxDrei]
    June 2, 2014 12:57 pm

    anon, despite all that, the fact and the present day reality remains, that you i) have a client, with ii) an Invention to protect, and iii) a request that you deploy all your professional skills, to write a patent application that will protect that Invention for the next 20 years, as thoroughly, widely and effectively as possible.

    So, what in your best professional judgement, are you going to write? Choose your words thoughtfully.

  • [Avatar for Anon]
    June 2, 2014 10:32 am

    Gene – duplicates posted, please post only one – thanks

    MaxDrei @ 7 – your counter is a perfect example of poorly applied statistics. Just because a gross number indicates that world market share might indicate the US has 5%, does not dictate how a territorial-based set of laws will be treated (and this is not even addressing the factual error in thinking that the US has dropped to – or will drop to – that low of a level. You also neglect relative factors of a dispersed GDP (nation to nation) and what it takes to reach a world distribution and market reach capability. Errors abound so deeply in your statement as to make it equivalent to meaningless noise.

    You seem not to understand two important items in your seeking to apply a world view:
    1) invention is still “local.”
    2) patent law is territorial.

    In regards to 1), patent law is not strictly – nor should it be – the domain of large international corporations and their inherent desire for a universal patent system and all of its accouterments. No doubt there will be users of the patent system that want a seemlessness between all of the patent laws of the world. And no doubt that such large corporations have more of the political savvy and financial, um, let’s be polite and call it “influence” to shape law to their favor, but the bottom line in patents is that a single advance – by anybody (including if not especially by) a small (and very local) concern can reshape the entire industry overnight. This capability is more in line with what innovation is about at its core.

    In regards to 2), while progress appears to be being made towards a universal set of laws, it would be a grave mistake to merely assume that such is an inevitability. Patent law remains a law of individual, separate and distinct sovereigns, each with its own agendas. Until we have a one-world government, there will remain critical differences in foundational aspects that cannot be ignored. Do you see a one world government within the next twenty years?

  • [Avatar for Benny]
    June 2, 2014 01:46 am

    loosen your tie a little. Anon’s comment at 3 sums up my point exactly.

  • [Avatar for MaxDrei]
    June 2, 2014 01:01 am

    Dear anon, I’m only putting the point that those who draft patents are not clairvoyant but nevertheless are expected to take into account what the courts will be extecting, ten or more years into the future. That’s a heavy rersponsibility.

    As to the 95% figure, do you doubt that, ten years from now, of the world’s consumers less than 5% will be living within the USA.

    Sure you have doubts whether my drafting tips have any merit. Good so! That’s quite OK.

  • [Avatar for Anon]
    June 1, 2014 10:22 pm

    MaxDrei, – is this excessive hyperbole: “ (where 95% of your potential post-issue market is located).

    As to drafting tips based on foreign law…

    I have my doubts, thanks.

    (that is not to say that if the plan includes foreign filings, that such items are to be ignored)

  • [Avatar for MaxDrei]
    June 1, 2014 05:46 pm

    Gene, the Rest of the World is First to File, so that your first filing at the USPTO is likely going to decide not only whether you get an enforceable patent in the USA but also everywhere else in the world (where 95% of your potential post-issue market is located).

    That being the case, should those drafters in the USA who aim to protect their clients’ inventions make an attempt to understand something about drafting in the way that the Rest of the First to File World drafts? You will gather that I’m thinking specifically about the inventiveness standard in the patent statutes of the Rest of the World.

    The Rest of the World explores patentability by toggling between technical feature combinations (ie individual claims) and the technical effects those feature combinations deliver, that is to say, just those technical effects announced in the specification to be delivered by the claimed feature combination.

    As Paul Cole reminds us in his book on drafting: claim the novelty and describe the non-obviousness.

    Simple Illustration: alloy claims.

    To write 4-10 wt %, preferably 5-9, more preferably 6-8. most preferably 7 wt % is not going to impress. Obviously mid-range is going to be preferred, isn’t it? Why else claim a range?

    But tell your reader that, say, 5-9 enhances the yield strength. 6-8 holds that strength but adds more corrosion resistance, and you might have some chance of fending off obbviousness attacks on those narrower ranges.

    Is this advice in your piece on drafting skills? I didn’t spot it. My hunch is that, ten years from now, this sort of drafting will be needed also in the USA. And what you draft tomorrow will be judged in the US Courts perhaps 10, 15 or even 20 years from tomorrow, no?

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 1, 2014 01:40 pm


    There are no exceptions to the requirement that an invention be enabled into order to be patented.

    If you want to have a discussion about whether patent examiners properly enforce the enablement requirement we can have such a discussion, but please notice that this article dealing with patent basics is aimed at a novice audience. It is completely inaccurate and wholly inappropriate to say or suggest that the enablement requirement need not be satisfied.

    If the enablement requirement is not satisfied a patent will not issue. If for some reason a patent examiner ignores the enablement requirement and issues a patent that should never have been issued it will be worthless. The claims would be invalid.


  • [Avatar for Anon]
    June 1, 2014 01:23 pm

    That said, the example you cite is pretty funny, but in all likelihood inconsequential.

  • [Avatar for Anon]
    June 1, 2014 10:42 am


    Be careful in what you consider “enough” to be enabled (granted, I am making this comment more on your past tendencies to rely too much on a technical footing as opposed to the necessary equal footing in both technical and legal spheres).

    One possibly unforeseen consequence of the Judicial ratcheting up of the power to deny patents for obviousness reasons – making PHOSITA stronger and more knowledgeable – is that that same action ALSO makes what needs to be shared, what is needed for enablement, to be a much lower bar. Patent Applications have never needed to be engineering documents removing all need for experimentation – only “undue” experimentation.

    ANYTHING – in any related art – no longer is needed for enablement if PHOSITA already has that item in their grasp. When PHOSITA is empowered, what qualifies as “undue” experimentation is necessarily also ratcheted up.

    This is a nuance that is often missed.

  • [Avatar for Benny]
    June 1, 2014 02:54 am

    “In order for any patent application to be complete the invention must be enabled….” Take a look, for example, at US6025810, and you will note that there may be exceptions to the rule.