I hear all the time from inventors who want to file a patent application that they don’t understand why I want to know about various alternatives and optional features that could be a part of their invention. After all, the invention they have created is one of a kind excellent and no one in their right mind would want to change it one bit! OK — you keep thinking that if you like, but it is that thinking that leads inventors to get unnecessarily narrow patents.
There is nothing inherently wrong with a narrow patent, as long as you know that is what you are getting, but if there is more that could be available to you why would you ever settle for a narrow patent? Why would you settle for a patent that might not be narrow but which is more narrow than could have been obtained? If narrow is all that is available and you accept that, fine. But in most cases when inventors represent themselves or settle for the extreme discount patents sold online by dubious patent mills there is far more available than obtained, and that is a tragedy.
There are a number of old litigation sayings that suggest you need to tell the jury something three times before they will believe you. Tell them what you are going to tell them, tell them and then remind them that you told them. There are advertising corollaries, and teaching techniques the rely on the same thing. So based on the belief that repetition with subtle differences can make a difference, what follows are three different ways to describe why it is critically important to describe variations to your invention with the fullest and most complete description possible.
The First Articulation: Describe Anything That Works
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.
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 patent application, but having it will create the barrier to entry that can insulate you from copyists. Having more rights will also potentially open up greater licensing possibilities.
The Second Articulation: How Will Others Try and Rip You Off?
It is absolutely essential to do everything you can not to unnecessarily limit yourself as you describe your invention. Always ask yourself how someone could essentially copy without literally copying, because if you are successful that is what they are going to try and do.
While it is certainly true that there are some businesses that don’t understand about patents, or don’t care, most businesses are not interested in getting involved in activities that are infringing. For those that are trying to stay clear of infringement, they will attempt to understand what you have done and then figure out how to copy what you are doing without infringing. Sometimes people will even look for patents to see what they can learn and then modify what is being done so it isn’t infringing. Then you wind up competing virtually against yourself with no recourse because you didn’t describe everything you could. Many companies that might think about licensing your invention will take a look at your patent to see if they even need the rights, or if they can simply do what they want and not worry because your patent is too narrow or otherwise not a real barrier.
The point here is that if someone were to make minor changes and not copy your invention exactly they would be “essentially copying” your invention, but not infringing your patent rights. So in your disclosure describe not only what you are doing and what you have specifically invented, but also disclose all those alternatives that you can think of. Spend some time trying to think in devious ways and try and engineer around your own invention and then describe everything in the patent application. This will provide the broadest protection, which will in turn provide the greatest and strongest.
The Third Articulation: Remember What the Patent Grant Gives You
By definition a patent gives you the right to prevent others from making, using, selling, offering for sale and importing into the U.S. It is absolutely critical to remember that the patent does not give you the right to do anything else! Failing to understand that the patent does not give you a right to actually do anything yourself is a huge mistake inventors make, and probably a big part of why they resist describing the full glory of what they have invented, or could have invented with only a modicum of creativity and imagination.
Because the patent does not define any positive right to do anything it does not need to be limited to the versions you are going to use, or to the versions that you think are superior. The patent is not like a business license that limits you to operate doing a certain thing at a certain time or place, but rather it gives you the ability to exclude others. You can only exclude others with respect to what you have ultimately claimed, and you cannot claim what you have not described. This means you want to make sure you cover what you want to do, but also cover other alternatives.
The claims are what define the exclusive right you obtain with your patent, but the claims are a subset of the disclosure. An inadequately narrow disclosure produces ridiculously narrow claims, it is just that simple. So when you do your patent application yourself or pay $1,000 to $1,500 for a complete nonprovisional patent application, what gets cut is the disclosure. There just isn’t enough time to do everything that could be done, so the applications get done cutting a lot of corners.
Hopefully the same lesson shines through in each of the above articulations of the rule. It is indeed true that the strength of any patent is based on the number of alternatives that are disclosed, and how specifically the alternatives are described. You want to describe everything you can, in broad general terms and in highly specific terms, and everything in between.
You want to disclose everything that will work, no matter how crudely. The idea is to not only disclose what you want to do, but disclose what others might want to do. This will give you a buffer zone and make it much more difficult for others to provide substitutes. Even if the substitutes would be inferior for some reason, you still want to make sure competitors cannot get close because many times an inferior product is a workable substitute for consumers. If you have any doubt just look at the knock-off marketplace and you will see that there is a big market for products that are known to be counterfeits and known to be inferior.
For goodness sake, please don’t limit yourself any more than you have to, and don’t make succeeding any more difficult than it needs to be.
For more information on patent application drafting please see:
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6 comments so far.
JasonJune 16, 2015 01:03 am
Thank you so much for the spectacular explanation!
Charles HoloubekJune 14, 2015 09:28 pm
Your question goes to the distinction between allowed claims and enforceable claims. The dependent claims can be though of as fall back positions, more narrow than the independent claims but usually more enforceable as they are usually more likely to withstand scrutiny of litigation. You may have a broad claimed allowed and issued, but if you try to enforce the claim, the defendant’s attorney will spend many hours scouring the art in many more languages to a much greater degree than your Patent Examiner had the time or resources to do. The broader your claim the more likely there exists art out there that anticipates your claim or renders it obvious – even if it did not appear during your prosecution. Even with a thorough prior art search, you never know what is out there in the whole world of printed materials, so it is best to hedge your rights with multiple layers of dependent claims, claiming different marketable aspects of your invention from different directions.
Thanks for blogs Gene!
JasonJune 11, 2015 01:40 pm
If I have a broad independent claim that pretty much covers everything that works and is somehow granted by the USPTO, what is the benefit of describing the details with dependent claims? Assuming anyone skilled in the art is able to reproduce the result just by looking at the independent claim.
For example, lets say I intend to patent a “steel chair”. At my first independent claim, I claim the invention of “chair” because I want it to be broad and it got granted (this is not uncommon, I saw a lot of patents claiming a ridiculously broad scope and still get granted). Is there still a need to put “steel chair”, “plastic chair”, ” wood chair” and all hundreds possible of chairs in the dependent claim? My understanding is the first independent claim already covers the whole thing therefore it isn’t necessary, but I came across your article saying it has to be as detailed as possible. Please enlighten me.
AnonMay 27, 2015 10:48 pm
Thanks Gene – I knew there was a rationale underpinning to the explosion
Gene QuinnMay 27, 2015 02:35 pm
It seems that some update caused all Tweets related to an article to ping back to the article and be automatically posted as comments. I’ve taken several steps to prevent that so what we don’t have a multiplicity of comments that just contain the content of the article title with a link back to the article.
Of course, this change happens when I’m trying to take a few days away from the computer, so I had to delete hundreds of comments.
AnonMay 25, 2015 04:45 pm
What is the key to drafting comments that will not be lost in the weeds of the onslaught of posts as above?
(of course, methinks it is better a question of drafting comment controls….)