Posts Tagged: "specification"

There are some that will tell you that the use of the term “invention” or “present invention” in the specification will limit the claims. This misguided belief suggests that merely using the word “invention” or the phrase “present invention” in the specification creates a problem for the claims. I have heard this numerous times over the years. Every time I hear this it is like fingers on a chalkboard.

What you are looking at here is something that is similar to a Big Mac because it has two beef patties, which are identified by reference numeral 10. It isn’t quite a Big Mac through because there is no special sauce, and there are tomatoes 18 added. Having a drawing like this makes it easy to describe the hamburger, but it also makes it easy to describe more than what is shown in the drawing. Allow me to illustrate. In a patent application you might describe this drawing as follows…

Although a patent application is not a sales pitch per se, most inventors will find it quite helpful to list as many descriptive objectives of the invention as is possible. As a general rule you should, however, stay away from laudatory language and puffery (e.g. “the best gadget known to man” or “the perfect solution” or “using this tool is unquestionably the choice any professional would make”). When you puff the tendency is to skimp on the descriptive details, which are essential to an appropriate patent application. Further, is anyone really likely to take your word for it being “the best”? That is why infomercials demonstrate the functional capabilities of an invention. In a patent application you need to describe the functionality and leave the selling to the salespeople later.

One of the challenges that a drafter faces when trying to satisfy the enablement requirement is with respect to describing things that can and will vary depending on the circumstances. What you want to do is follow up by explaining the various permutations to help the reader more readily understand what facts, choices or circumstances will have impact.

Why are we talking about this in a claims primer? There is a difference between adding what we call “new matter” and adding patent claims. New matter, which is prohibited, is defined by first viewing whatever is present at the time of the original filing of the patent application. In determining the breadth of what is covered by that initial patent filing you rely not only on the description contained in the specification and any drawings filed but also on the originally filed claims. Thus, new matter is defined in the negative. If it wasn’t there in the specification, drawings or originally filed claims then it is new matter. If it was present somewhere in what you filed it is not new matter.

What I refer to as “experimental language” either explicitly or implicitly suggests that further experimentation is or will be necessary in order to: (1) realize or perfect the invention; or (2) realize or perfect an intermediate or component. Resist the temptation to have your patent application read like a diary of thoughts and/or personal observations regarding future research and goals. This type of language is usually not found in a patent application because it suggests that your invention is not yet completed, which could be used as an admission that the invention is not enabled and/or that you have not satisfied the written description requirement.

The trick with drafting a 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.