From a conceptual standpoint it would seem logical to assume that writing text to describe an invention ought to be easy for the inventor of the invention. While that probably makes sense in theory, in reality it just doesn’t play out that way. It can be enormously difficult for inventors to describe their own inventions. This is true not because the inventor doesn’t know what they’ve invented, or even because the inventor is not in the best position to explain the invention. Indeed, the inventor of a new and useful invention is absolutely in the best position to describe the invention. The problem lies with the reality that most inventors simply don’t understand what needs to be described in order to satisfy the U.S. patentability requirements.
For example, most inventors can write volumes about why they came up with the invention, but why the invention was made isn’t particularly relevant to patentability.
Similarly, inventors are very good at describing how their inventions can be used and why their invention is superior from a usability standpoint to anything available in the marketplace or previously known. The trouble is describing how an invention can be used, while a prerequisite, will not distinguish a tangible invention from the prior art.
Before moving forward let’s recall that in order to satisfy the enablement requirement in a patent application it is necessary for the drafter of the patent application, whether a patent attorney, patent agent or the inventor themselves, to describe in great detail how the invention can be both made and used so that someone of relevant skill in the particular art or science will be able to understand how the invention is both made and used. This being the law, it is obviously necessary to explain how the invention will be used in order to fulfill the patentability requirements. Unfortunately, when inventors represent themselves they nearly universally focus overwhelming on the use and to the expense of actually describing structure.
It is necessary for an invention directed to a tangible invention —referred to in patent law interchangeably as either a machine, device or apparatus — to be distinguished from the prior art in terms of structure rather than in terms of function. This is true because an invention description that only focuses on the manner in which the machine or apparatus is intended to be used does not differentiate from the prior art if the prior art teaches all the structural limitations of described tangible invention.
For example, let’s say you invented an ordinary garden shovel. You attempt to distinguish your garden shovel from previously existing garden shovels by saying that your garden shovel is used not to dig, but instead as a stickball bat. By focusing on the different use you are saying nothing about the structure whatsoever. While you can obtain a patent on a new method for using a known product, even copious amounts of information about how to use your garden shovel will not translate into allowing you to claim your shovel.
If you focus your description only on use then at best you can obtain a patent on a new method for using a known product. The problem with those types of claims, however, is that in the hands of an individual new and nonobvious claims to a new method of a known product became difficult, if not impossible, to enforce. The thought process goes like this: Whom will you sue for infringement of your new method patent? In almost all cases, the infringer will be the user, not the manufacturer, distributer or seller of the shovel. But if you define your invention from a structural standpoint instead of a use only standpoint the infringer would not only be the user, but also the manufacturer, distributer and seller. Being able to control the tangible invention and not just the method of use is what you want to do because it allows you to stop infringement at the source.
Of course, method patents are not useless, and in fact can be quite valuable in the right hands. For example, if you were to invent a cheaper, faster, more efficient way to create a known product then you could sell that known product for less than what others could who are not using your method. These types of commercial methods can become quite valuable and must be distinguished from the typical method of use that an inventor describes.
Still further, in my experience the method of using an invention that is typically described by an inventor is one that frequently cannot be patented because the method often lack novelty or would be obvious. Returning to our example with the shovel, is it truly new and nonobvious to use a shovel as a stickball bat. Sure, it might not be ideal or even convenient, but substituting one known device for another similar device to accomplish the same task is considered obvious, at least after the Supreme Court’s 2007 decision in KSR v. Teleflex.
The moral of the story is this: When describing an invention you absolutely need to describe how the invention will be used, but to obtain the most valuable patent you need to describe the structural uniqueness of your invention.
So where do you go from here? One of the most effective (and economical) ways to disclose structure is to include multiple high quality patent drawings. For more information on patent drawings please see:
- Working with Patent Illustrations to Create a Complete Disclosure
- Patent Drawings: An Economical Way to Expand Disclosure
- Patent Drawings and Invention Illustrations, What do you Need?
For more tutorial information please see Invention to Patent 101: Everything You Need to Know. For more information specifically on patent application drafting please see:
- Can You Refile a Provisional Patent Application?
- Ten Common Patent Claim Drafting Mistakes to Avoid
- It’s All in the Hardware: Overcoming 101 Rejections in Computer Networking Technology Classes
- Two Key Steps to Overcome Rejections Received on PCT Drawings
- Drafting Lessons from a 101 Loss in the Eastern District of Texas
- From Agent to Examiner and Back Again: Practical Lessons Learned from Inside the USPTO
- Understand Your Utility Patent Application Drawings
- Getting a Patent: The Devastating Consequences of Not Naming All Inventors
- Getting A Patent: Who Should be Named as An Inventor?
- Make Your Disclosures Meaningful: A Plea for Clarity in Patent Drafting
- Avoid the Patent Pit of Despair: Drafting Claims Away from TC 3600
- A Tale of Two Electric Vehicle Charging Stations: Drafting Lessons for the New Eligibility Reality
- Background Pitfalls When Drafting a Patent Application
- Eight Tips to Get Your Patent Approved at the EPO
- What to Know About Drafting Patent Claims
- Beyond the Slice and Dice: Turning Your Idea into an Invention
- Examining the Unforeseen Effects of the USPTO’s New Section 112 Guidelines
- Anatomy of a Valuable Patent: Building on the Structural Uniqueness of an Invention
- Software Patent Drafting Lessons from the Key Lighthouse Cases
- Patent Drafting Basics: Instruction Manual Detail is What You Seek
- How to Write a Patent Application
- Admissions as Prior Art in a Patent: What they are and why you need to avoid them
- Patent Drafting: The most valuable patent focuses on structural uniqueness of an invention
- Patent Drafting: Proving You’re in Possession of the Invention
- Patent Drafting: Understanding the Enablement Requirement
- Patent Drafting 101: Say What You Mean in a Patent Application
- Patent Drafting 101: Going a Mile Wide and Deep with Variations in a Patent Application
- Learning from common patent application mistakes by inventors
- Defining Computer Related Inventions in a post-Alice World
- Patent Application Drafting: Using the Specification for more than the ordinary plain meaning
- Patent Strategy: Advanced Patent Claim Drafting for Inventors
- Patent Drafting 101: The Basics of Describing Your Invention in a Patent Application
- Patent Drafting for Beginners: The anatomy of a patent claim
- Patent Drafting for Beginners: A prelude to patent claim drafting
- The Inventors’ Dilemma: Drafting your own patent application when you lack funds
- Patent Drafting: Describing What is Unique Without Puffing
- 5 things inventors and startups need to know about patents
- Drafting Patent Applications: Writing Method Claims
- An Introduction to Patent Claims
- Patent Drafting: Define terms when drafting patent applications, be your own lexicographer
- Patent Language Difficulties: Open Mouth, Insert Foot
- Patent Drafting: The Use of Relative Terminology Can Be Dangerous
- Patent Drafting: Distinctly identifying the invention in exact terms
- Patent Drafting: Understanding the Specification of the Invention
- Tricks & Tips to Describe an Invention in a Patent Application
- Invention to Patent 101 – Everything You Need to Know to Get Started
- Patent Drafting 101: Beware Background Pitfalls When Drafting a Patent Application
- Describing an Invention in a Patent Application
- The Key to Drafting an Excellent Patent – Alternatives
- The Cost of Obtaining a Patent in the US
Join the Discussion
7 comments so far.
Gene QuinnDecember 15, 2017 11:53 am
Provisional patent applications and design patents are not interchangeable. In fact, they are like oil and water. You cannot claim priority to a provisional application if you later want to file a design patent.
Design patents protect only the way something looks — the external ornamentation. A utility patent (which is what you are setting out to get when you first file a provisional patent application) protects functionality. In a design patent there is little or no description, only pictures. You can, however, file both and seek both types of patents if you have an invention that has a particular function you want to protect and it also has a unique visual presentation.
Here is some more information for you on design patents:
ErikDecember 15, 2017 02:56 am
Would this mentality and practice of focusing on the uniqueness of structure therefore allow an inventor to use a provisional patent application in place of a design patent?
I ask because I’ve been working on two inventions (following the steps at inventRight) and realized that my ideas are really new combinations of existing 3D artwork rather than utilities.
Would focussing on their uniqueness of structure allow me to file protection via a PPA then?
GeneDecember 11, 2017 01:58 pm
i submit that describing what an invention does or “how an invention can be used” is a waste of time.
take the following claim elements, from an issued patent, for example:
at least one intermediate layer disposed about said core, said intermediate layer defining at least one aperture extending through said intermediate layer to the core; and
an outer cover layer disposed about said intermediate layer, said outer cover layer defining at least one aperture extending through said cover layer and aligned with the aperture of the intermediate layer.”
not only that, this claim has a nice short preamble.
i submit that entire patent applications should and can be written efficiently by not wasting words as to “what the invention does” or “how it’s used”, i.e., following the example set by the claim above. on the last day of drafting the patent application, the drafter can add one sentence, at the beginning, to say what the invention does and how it’s used, to provide context for the examiner.
alice would annoy no one who followed this advice. describing “what an invention does” and “how it’s used” is a slippery slope into the bad habit of functional descriptions and functional claims.
p.s. oh yeah, pat no 6,896,629
Paul JohnsonDecember 10, 2017 06:32 pm
Autrige, thank you for commenting. My comment was a little bit tongue-in-cheek. (Of course I wouldn’t include multiple low quality drawings.) However, the article did end a little suddenly. The article followed this form:
(1) To increase value, focus on structural uniqueness;
(2) To demonstrate structural uniqueness, include multiple high quality patent drawings.
The article basically ended there. I was hoping for a little bit more, like maybe advice on how the drawings actually accomplish that. Is there a specific way that they should be drawn to overcome potential obviousness objections? Also, how do you draft the patent application so that the drawing doesn’t overstate the invention’s point of novelty in such a way that it makes it easy for potential infringers to work around the patent?
Autrige DennisDecember 10, 2017 02:19 pm
Paul, Gene is not saying the problem can be solve with simply sending more drawings. He said “to obtain the most valuable patent you need to describe the structural uniqueness of your invention”…and then he stated that the most effective and economical “ways to disclose structure is to include multiple high quality patent drawings”. I am a patent illustrator and I like to help inventors see things from the attorney’s perspectives. A patent drawing in itself will not describe the “structural uniqueness” of your invention unless it is purposeful and that the structural uniqueness and that the usefulness is brought out by the drawing and a well thought out specification. To help inventors get the most from their patent drawings, I wrote a book The Secrets to Avoiding Strong Drawings & Weak Patent here https://www.ascaddex.com/ that has proven to be of great benefit to inventors. Many inventors do not understand the relationship between their invention, the patent drawing, the reference numbers and the specification. Patent Attorneys does and they are experience in using this to get you a strong patent application the first time.
This can also answer Invent Rights’ question. Great question. The patent drawing would not have less disclosure than the photo/screenshots. For one thing the screenshots and photos of the product will need to be black and white or grayish in the provisional which may obscure the detail of the product. Further, if the inventor don’t point out the features or structural uniqueness of the invention in the provisional by means of reference numbers that goes along with the specification, the point of the invention will be lost in the provisional and possibly the non-provisional. Attorneys don’t just send any photos or screenshots when filing a PPA for their clients. They send purposeful and well layout drawings with a fully drafted specification that goes along with the drawing, just like a non provisional. Many attorneys will file the application and immediately send the exact photos to me as filed to formalize into line drawings for the non-provisional down the line. The photos and screenshots they file is usually not clear, but its a provisional and there is a good explanation with it. Unless you are filing a chemical reaction with weird colors, patent illustrators can capture more details of a physical product in the black and white line drawing than a black and white photo. The product may need to be pull apart to show certain features in ways that cannot be shown by photos.
Invention RightsDecember 9, 2017 05:03 pm
Gene, I seem to recall that the drawing requirements are different for a provisional and a non-provisional application. I was wondering what would happen if an applicant submitted a provisional application with extensive photos and/or video screenshots of embodiments of the invention. Then they later incorporated by reference the provisional in their non-provisional application. The official application would only have black and white line drawings, which necessarily will have less disclosure than the photos/screenshots included in the provisional. Would such an approach be a permissible way to a more robust disclosure to more accurately capture the full scope of what the inventor possessed?
Paul JohnsonDecember 9, 2017 04:41 pm
Is that it? Just more drawings?