Posts in Patent Drafting Basics

Patent Drafting: Understanding the Enablement Requirement

The enablement requirement is specifically aimed at ensuring the claimed invention is described with sufficient detail so the relevant person of skill in the art or technology area will understand both how to make and use what has been actually claimed in the patent… While there is no particularly concrete and useful definition for what specifically constitutes undue experimentation, the requirement generally mandates that the description explain the invention so that it could be made and used without individuals having to go through a trial and error process in order to figure it out for themselves. In other words, the invention must actually teach so the invention can be achieved.

Patent Drafting 101: Say What You Mean in a Patent Application

When drafting a patent application it is always the best policy to never assume anything. It is dangerous to assume that the reader will fill in any ambiguous holes in the manner you desire, and as here, if what you literally say is clear you run the very real possibility that an assumption on your part will wind up meaning something very different than you intended because you did not take the time to go the extra step to remove all doubt.

Patent Drafting 101: Going a Mile Wide and Deep with Variations in a Patent Application

You absolutely want to file a patent application with a description that is a mile wide — that part is good — but you also need to also drill down far more than one inch deep in order to teach the various nuances of at least the key aspects of the invention. And there are always nuances that can go a mile deep for any and every invention, no matter how simple it may seem to you as the inventor… How do you know how far you need to go? You really should strive to remove doubt and questions from the reader’s mind. While a certain amount of experimentation is allowable, and patents do not need to contain blueprint level detail, ask yourself whether a knowledgeable reader would know from what you’ve written enough to understand your invention without asking additional questions. If answers to additional questions would be necessary to fully comprehend the invention then answer those questions.

Learning from common patent application mistakes by inventors

The goal in a patent application is to provide a full, clear, and exact description of the invention in a way that particularly points out and distinctly identifies what the inventor believes he or she has invented and wants the patent to cover. Unfortunately, while articulating an invention many inventors fall victim to a host of common mistakes. Saying that…

Defining Computer Related Inventions in a post-Alice World

it is absolutely critical that computer related inventions describe the technology to the greatest extent possible, focusing on as much that is tangible as possible.

Patent Application Drafting: Using the Specification for more than the ordinary plain meaning

As a general rule the ordinary plain meaning of the term as would be understood by someone of skill in the relevant technology area or science will be used. That may or may not be bad, and it may or may not be what you intended… When I teach this topic the example I tend to use relates to “standard room temperature.” If you have invented a process that needs to be carried out at 68 degrees F you might say that the process can or should be carried out at standard room temperature, for example. In the U.S. standard room temperature is generally referred to as 20 degrees C, which is 68 degrees F. But in some parts of the world what qualifies as standard room temperature is a bit warmer, sometimes up to 25 degrees C. So this illustration is particularly useful for several reasons. When you say standard room temperature did you even know that it has an accepted meaning in the scientific community? Were you aware that the meaning could vary depending upon whether the person reading the disclosure is in the United States or some other part of the world? This is where defining what you mean could be particularly important.