This article is for inventors who want
to be actively involved in drafting patent applications on their inventions.
Most inventors want to make sure they're still a full partner on the team
when a patent attorney takes over and starts writing the application. Some
inventors go beyond that and want to write either or both of the following:
(i) a "provisional" patent application, as discussed below; and/or, (ii) the
first draft of a "utility" patent application.
Provisional patent applications are
discussed in a separate paper by this same author; that paper, and an
example of a provisional application, is also reprinted in these conference
proceedings. In general, a well-written provisional application should
contain the same organization and content as a utility application, as
discussed below. The two most important differences between provisional and
utility applications are (i) a provisional application has much more leeway
to include “informal” drawings, which don’t need to use “callout numbers” at
all; and (ii) a provisional application is not required to contain any
claims. The question of whether a provisional application should
contain claims is discussed below, after some basic rules of claim drafting
are explained.
Regardless of whether an inventor writes
a complete provisional application (or a complete first draft of a utility
application), or hands that task over to a patent attorney, any inventor can
benefit greatly if he/she knows what to expect from a patent attorney, how
the information should be organized, what the specific goals are, and how to
tell good work from not-so-good work. The goal of this article is to share
that information with inventors, so they can work smoothly, quickly, and
effectively with a patent attorney, regardless of how the roles of inventor
and attorney are adjusted and balanced, once they begin working together.
Over the course of my life, I’ve learned
that when someone tells me something which appears to be about me, I should
generally assume, “Half of what he’s saying is about me. But the other half
is about him, not me. Part of my job is to figure out which is which.”
In the same way, whenever you read a
patent, you should first ask who owns the patent, and who wrote it, because
that will say a lot about how it was written.
If a patent was written by patent
attorneys working for a big company facing ferocious competition, the most
likely goal of that patent is to cover and protect investments that have
already been made. There’s nothing wrong with that, but keep in mind, that’s
not the same problem that has to be faced by independent inventor who is
trying to persuade a company or team of investors to invest in the idea).
For better or worse, part of the goal of
nearly any patent obtained by a billion-dollar company facing tough
competition will be to make it hard for competitors to figure out what
actually happened in the company’s research labs; so, a patent like that
will not readily disclose or highlight where the really valuable and crucial
“nuggets” are, in that mass of verbiage. Various tactics are used by patent
attorneys in those situations. One tactic involves using peculiar, awkward,
self-selected terminology, either to raise questions about what was really
done or why, or to avoid admitting that some component is merely commonplace
and obvious (my favorite was a patent that created and used the term “liquid
motors”, to avoid admitting that they were just ordinary “pumps”). Another
common tactic (heavily used by pharmaceutical companies) involves mentioning
the chemical name of the best chemical compound that has been identified and
tested to date, but burying the name of the “lead compound” in a long list
of “candidate” compounds that are no longer of interest (I would challenge
anyone, including any patent attorney, to take the name or chemical
structure of any billion-dollar drug, and then go find the patent which
claims and protects that drug). Yet another example involves deliberately
making it impossible to tell which chemical compounds, in a long list of
compounds, were actually created and tested, and which ones were only
thought up, written on paper, and then named based on their drawn structures
without ever being actually synthesized.
As a result, quite a few patents bring
to mind a comment by a computer expert about “Microsoft Word”, the word
processing program: “It’s a curious and difficult combination of a word
processor, and an encryption program.” The simple fact that there is no
“Reveal Codes” option in MS Word (as provided by most other word processing
programs) makes it clear that Microsoft doesn’t want users to know
what is really going on inside their system. If that makes it harder for
someone to figure out why some hidden formatting code is messing up a
document, or how to fix the problem … well, that’s too bad. Microsoft has
figured out how to run its business, it knows what the competition is doing,
and it makes a lot of money.
In the same way, there is no “Reveal
Codes” option that can be used to help newcomers decipher patents that were
written for big companies. So, if you’re getting started in this type of
work, and if you haven’t yet had a lot of exposure to patents, the best way
to start learning how patents should be organized and written is by
analyzing patents that were written for independent inventors, or small
companies, rather than big companies.
If you’re trying to write a patent
application that will be used to obtain or justify new investments that have
not yet been made (as distinct from providing cover for investments that
have already been made), then your patent application should try to explain,
as clearly as possible, what is actually happening, and how and why your new
invention works.
That explanation should be written for
five very different classes of readers: (1) scientists, engineers, and other
technical specialists; (2) patent examiners, who have degrees in science or
engineering but who may not have any expertise in that specific field of
technology; (3) patent attorneys working for companies that might be
interested in licensing or buying the patent; (4) business managers, who
typically have accounting, finance, MBA, or similar degrees, and who will
make the final decisions on whether to spend company money on a new project;
and, (5) judges, who may be required to analyze and rule on a patent if it
is ever challenged in court.
Obviously, those five different groups
cover a lot of different areas, and it should be recognized that the last
two groups usually have had no training at all in science or technology,
except for a couple of freshman courses in science, way back in college, 20
or 30 years ago.
If you have an idea that deserves
protection and investment, the best way (the only way) to reach and
persuade all five groups is to be clear, methodical, and
straightforward. Avoid legalistic phrases such as, `the hereinbefore
mentioned component.' Plain, clear English is best, and before you even try
describe the invention in written words, give special care and attention to
the prior art, the drawings, and the Background section.
PRIOR ART
Prior art is a legal term that
refers to information that is publicly available (usually but not always in
printed form) on the date you file your application. It includes patents,
articles from journals and magazines, chapters from textbooks or
encyclopedias, etc. It also includes catalogs, sales brochures and
specifications, ads, technical and field literature such as instruction
manuals issued by a manufacturer, etc, so long as the publications are
reasonably available to interested people.
The relevant prior art includes
anything that (1) resembles your invention; (2) bears directly on your
invention in any way; (3) describes any major component of your invention,
even if it does not include other crucial components; or (4) describes how
other people tried to solve the same problem you're trying to solve. Bring
anything which might be relevant to the attention of the patent attorney. He
(or she) can help you decide what should be brought to the attention of a
patent examiner, and what can be omitted.
No matter what an inventor's level of
involvement will be in drafting a patent application, an inventor should be
the expert on what he has done, how the technology works in that field, and
what other people have done (and tried to do) in that line of technology.
Don’t rely on a patent attorney to do that kind of technical work; his job
is to take what you tell him, and convert it into legalese. It’s your job,
more than his, to know how the invention actually works, and what makes it
new and different.
With the explosion of information that
is freely available on the Internet, any inventor can and should do an
initial patent search, download the relevant patents in printable form,
and study those patents. Then, when it's time to talk with a patent
attorney, the initial search will already have been completed, at the lowest
possible cost, and the patent attorney can start building on a foundation,
rather than having to start at ground zero with an excited inventor who is
probably talking too quickly to follow completely.
Get three clean copies of the most
relevant prior art you can find. One copy is for your own "patent file".
Keep it separate from your other files, so you can find articles quickly,
without having to hunt for them. Typical billing rates for a good patent
attorney are over $200/hour, so don't keep one waiting on the phone for
fifteen minutes while you try to find a copy buried in some pile somewhere.
The second copy is for the attorney's files. The third copy will be
submitted with the application.
Patent searching is a complex task, but
an inventor who makes a diligent effort at it can often come up with one or
more items that will offer a good start. A great place to start is the free
U.S. patent database run by the Patent Office, available at
www.uspto.gov. To do free searching for
patent applications filed in other nations, go to
http://pctgazette.wipo.int
(you'll set up an account, but it's free), and to
http://ep.espacenet.com.
Once you get into any of those sites,
you may need to click various options that will lead you to a "Boolean"
search. This is simply a weird word that means, in essence, that you can
search by fields (such as by inventor's names, by assignee names in case a
certain patent is owned by a company you're interested in, and by key words
anywhere in title, abstract, or text). A Boolean search also lets you use
"connecting" words such as AND or OR to fine-tune the search. For example,
if you want to search for, say, any patents on heated ice skates, a Boolean
search would let you search for "ice" AND "skat" (which would find both
"skate" and "skating") AND ("heat" OR "warm").
Once you know
the patent numbers, patents from nearly any country can be downloaded from a
site called www.delphion.com (you'll need to create an account name
and number, but that’s free). The easiest way to work with these files is by
downloading them as “pdf” files; this refers to “portable document format”.
These files will print out a patent in exactly the same format as issued in
print by the Patent Office, with columns, drawings, etc. Pdf files can be
read and printed by software called the Adobe Acrobat Reader, available free
from www.adobe.com. US patents can be
downloaded for $3 each from Delphion. Since they’re public domain documents,
they can be printed or distributed without limitation.
If desired, text versions of US patents
(which can be loaded into a word processor, and then searched or otherwise
manipulated using the standard features of the word processing software) can
be downloaded for free from the official PTO database, at
www.uspto.gov.
If you obtain a relevant patent, it can
help you find more prior art. For example, the front page lists all items of
prior art (patents as well as other publications) that were considered while
that patent was being examined. Some databases also list any subsequent
patents that cited a certain patent as prior art.
If you have Internet access, it’s a good
idea to do your own search for articles in the scientific literature, for
two reasons. First, a professional patent searcher might miss a relevant
item during a manual search. They work with limited budgets and limited
times, so you can never be sure they've found everything. Second, many
professional patent searchers do not search any databases except patents.
Many of them don't use computerized databases, and they don't consult
sources such as Chemical Abstracts. If you're paying for a prior art search,
ask the searcher to list any and all databases that were searched.
Prior art is not limited to publications
printed in America, or in English. For example, if a footnote or some other
reference mentions a foreign article that might be relevant, try to obtain
an abstract that has been translated into English. Various databases
available on the Internet contain English abstracts of foreign articles, and
it’s often possible to obtain those, either free, or through a subscription
database that a company or patent law firm already has.
If an inventor is seriously interested
in doing as much prior art searching as possible before getting a patent
attorney involved, he/she should also find out what kinds of databases or
libraries are available in that field of science or technology. As just one
example, anyone who works professionally with biochemistry or medicine
should know about the National Library of Medicine (NLM), located in
Bethesda, Maryland, which is paid for by government funds. The NLM makes its
online database available to the public for free, at
www.ncbi.nlm.nih.gov/entry/query.fcgi. Start with a simple search, by
typing in (for example) an author name and a known or suspected title word,
in the small empty rectangle near the top of the screen. If that doesn't
work, look for more advanced searching options. You can also go hunting for
a Boolean search screen, and for medical subject terms that have been
assigned to articles by a team of technician-specialists at the NLM.
That’s just one example of an
extraordinarily powerful and useful free resource, in one field of research.
Various others are also available, and the easiest way to find them is by
either (i) calling a government agency that works in that field, and asking
for the phone number of someone who works with computer databases that are
run or used by that agency. In addition, call a couple of universities that
are large enough to have science and/or engineering libraries, and ask for a
reference specialist at that library. Such librarians are excellent sources
of guidance on where to look for information, and they often will do a
for-pay literature search, for a local inventor, at rates which are less
than the costs of a typical patent search.
The headings listed below are standard,
and are generally required by laws and rules adopted by the Patent Office.
Subheadings may be added at will. In the early stages, it's convenient to
start each section listed below on a new sheet of paper, in case you need to
add more information to it later.
The title should be short, usually about
10 words or less. It's a finding aid only, and does not restrict the
coverage of the patent. If you’re a big company, you can use an obscure
phrase that doesn’t disclose anything useful (such as “Chemical
Composition”). But, if you’re an independent inventor, this is your first
chance to make a good first impression, so choose a good, helpful,
descriptive title that can help you explain and sell your idea.
Government Support
Omit this heading unless government
funding was used. Otherwise, indicate which agency provided the funds. The
grant number is optional.
Field
of the Invention
This section is intended to help clerks
in the Patent Office figure out which examining group ("art unit") should
receive and examine the application.
In the first sentence, list a broad
field of technology (such as recycled materials, chemistry, pharmacology,
automotive, construction equipment, computers, electronics, surgery,
agriculture, etc.) Then add a second sentence which cites a more specific
field or goal, such as "More specifically, this invention relates to drugs
for treating XYZ syndrome" or "This invention relates to an improved machine
and method for doing XYZ."
Background of the Invention
This section should contain four
different types or “clusters” of information.
First: describe the overall
context of the invention. Although many patents provide very little
background information, this is a good chance to create a good first
impression. Draft a short essay describing that particular field of science
or technology, two to five pages long (double-spaced), so that an
intelligent person who has never studied that area of technology will be
thinking, "That's interesting; I never knew that," when he or she finishes
reading that section.
Second: explain each important
term, at any length necessary to convey a clear understanding of that term.
Point out distinctions, subtleties, and substitute terms, especially if a
certain word isn't used the same way by everyone. Avoid dictionary
definitions; those were written by grammarians who had to be brief, rather
than scientists or engineers who appreciate the complexities of science and
technology. Explain key terms not just as definitions, but in terms of how
each component relates to other components. And, in case you leave anything
out, give citations to a couple of standard textbooks or review articles
used by scientists or engineers who work in that specialty.
This set of paragraphs, establishing
context and terms, can also help set the stage, by describing broad
problems, such as industrial, technical, or social problems the invention
can help solve.
The third set of information,
after the context and terms have been set, will describe each of several
pieces of prior art. When citing patents, the best format is, “US patent
5,123,456 (Smith et al, 1988)” (the name and date can protect you, just in
case there is a typographical error in the number). A full citation to an
article published in a journal can be inserted into the text, or if numerous
references are cited, abbreviated citations (e.g., "Smith 1980") can be
used, if you also provide a list of complete citations at the end of the
text. Titles of articles are not mandatory, but usually are a good idea,
since most readers will wonder what they’re about if the title is kept
hidden.
For each piece of prior art, provide
three different pieces of information. The easiest and clearest way is to
draft three paragraphs. First, summarize the item of prior art. How
does it work, what does it do, and how is it used? Point out directly
relevant passages by page number (or by column and line numbers, in
patents).
Second, describe the limitations
of that item of prior art, in factual language. Don't say it's obsolete,
clumsy, or absurd; instead, point out its limitations in clear, factual
terms as a preface to describing why your invention is better. Comparative
terms such as `less expensive,' `more convenient,' and `relatively high' are
fine, if it's clear what they're being compared against. If the prior art
could not accomplish a desirable goal, describe that goal and say why it
could not be accomplished until now. If the prior art has shortcomings (for
example, prior machines had numerous moving parts, which made them expensive
to manufacture, difficult to operate, and prone to breaking or jamming),
describe those shortcomings. This sets the stage for the usefulness of the
invention.
And third, for each item of prior
art, point out why your invention is better.
These three paragraphs might be combined
or reorganized in the final application, but setting forth each paragraph
separately will help an inventor organize the information, and convey it
clearly and quickly to a patent attorney.
This advice, about creating 3 different
paragraphs on each item of prior art, is a very good and very cost-saving
piece of advice. The problem is, most inventors think they can do it,
without actually doing it. They can--and almost always do--easily tell the
patent attorney everything they know, about each item of prior art. And to
the inventor, that approach works fine. The problem is, the patent attorney
probably won't actually start drafting the patent application until several
days or weeks later, and by then, several pieces of prior art are all
schlumped together in a pile or file, and when that day finally arrives, the
patent attorney will have to sort through them, try to remember what the
inventor said about each one, and either dictate or write a narrative
analysis that sorts everything out.
So, here is probably the single best
piece of advice in this entire article, for inventors who want to save time,
money, and aggravation when working with a patent attorney. For each and
every important piece of prior art, write down, using no more than 1 or
2 sheets of paper, an overview, using each of the three paragraphs listed
above (the brief summary; limitations of that piece of prior art; and why
the new invention is better). Then staple or paperclip that page, with your
3 paragraphs, onto that piece of prior art. Then give it to the patent
attorney.
If you'll do that, and actually do it
(instead of just thinking about what you'd say, if you did it,), you'll be
amazed at what a good patent attorney can do from that starting point, and
how quickly he or she can do it. It will help the patent attorney draft an
application better and faster, and then, a year or two later, after a Patent
Office Action arrives with an "obviousness" rejection, it will help the
patent attorney remember and figure out what happened, and why, a lot faster
(which will save you even more money). So don't just think about it--do it.
If you want to save money, write up all 3 paragraphs for each of the closest
items of prior art, and give those analyses to the patent attorney.
Finally, the fourth “cluster” of
information that needs to have its own separate group of paragraphs, in a
patent application, will be a list a set of goals and objectives for the
invention. For example, "One object of this invention is to create a simple,
inexpensive, and durable hyper-widget with fewer moving parts, and which can
bounce higher than any previous widget or hyper-widget. Another object of
this invention is to create a hyper-widget which can generate a more
concentrated vacuum, in a smaller space. Another object is to create a
hyper-widget which can be manufactured with fewer radioactive elements or
toxic chemicals, and which still tastes pleasant and has few if any noxious
odors, and which generates less waste during the manufacturing process."
Summary of the Invention
This should be a brief (one page or
less) overview for someone who doesn't know anything about the invention.
This section (often repeated verbatim as the Abstract) will be published by
a number of data services after the patent issues, and it will be read by
people who will decide whether to order a copy of the entire patent. After
describing the invention itself, add one or two sentences indicating how it
is used and/or why it is useful.
A lot of people will read the paragraph
above, and nod their head and say, "Yeah, yeah, I can do that," when they
really can't do it capably, because they've never actually tried it or
practiced that skill.
So, if you can, please take this
approach and attitude: “It is a noble challenge to try to summarize a
complex and important idea, in a single page of writing. And, as in so many
other things, the proof is in the performance. The test of my invention is
not whether I like it or feel proud of it, but whether I can persuade other
people to invest their money in it. And the test of my ability to describe
it is whether I can write a good summary, on a single sheet of paper.”
Any inventor is urged to accept that
challenge, and actually try to do it. One of my standard practices, when I
begin working with an inventor, is to tell him or her, "Give me a
three-to-five minute overview, with a summary of the whole invention. Don't
start me out by walking me down a street and pointing out one building after
another. Instead, show me a map of the place. Tell me where we're starting
out, and tell me where we'll be going. And then, once we start walking down
those streets, and seeing those buildings, I'll have some sense of how
everything fits together, and where it's heading."
To me, that's an entirely reasonable,
obvious, and logical request. And yet, at least half of all inventors will
respond to that request by waving their hand in the direction of a map, and
then ignoring it, and start me walking down some street I’ve never seen
before, while I have no idea where that street is going, or why I'm going in
that direction. I'll usually listen patiently for about 15 minutes, then
I'll gently interrupt the person and say, "Remember how I asked for a
3-minute summary, about 15 minutes ago? Well, I never got that overview, and
I still need it. This tour you're giving me is very interesting, but I don't
have any idea where it's leading, or how these pieces all fit together. So,
let's start over. Can you please give me about a 3-minute summary, and
overview, of what this invention is about, and what it does, and why it's
useful?"
Drawings (also called Figures)
Anyone who is interested in creating a
patent, but who has not seen any patent drawings, should simply download a
few mechanical patents, as pdf files, from Delphion, and see what they look
like. It can be difficult to get them done just right, and a patent
draftsman usually has to help put them in final “also called “formal” form;
however, it’s pretty easy to figure out how they’re approached, and what the
general goals are.
The two main goals of patents drawings
can be explained easily. First, they must help explain the invention. Any
pictures or graphics you can create, which will help a patent attorney or
business manager figure out what is happening and how this invention works,
are good, and should be shown to the patent attorney or included in a
provisional application.
The second goal applies only to drawings
that are submitted as part of a utility application. Any patent drawing that
will be printed in a utility patent must be cheap and easy to print, and it
must remain clear and legible even after it has been copied into fourth or
fifth generation photocopies. As a result of that second goal, more than 99%
of all patent drawings in utility applications are limited to
black-and-white line drawings, with large lettering and callout numbers.
This includes line drawings with callout numbers, but it nearly always
excludes photographs unless absolutely essential. Drawings can be graphs,
flowcharts that show the steps carried out in a multi-step process, and just
about anything else that can be converted into a plain black-and-white
graphical format that is easy to print and will remain legible in A
4th generation photocopy.
Small strip-charts and other
machine-generated printouts can be submitted as drawings, if they are
properly inked to convert them into clearly reproducible black-and-white
drawings.
“Stippling” (tiny black dots which
create a shade of gray) is prohibited, since it will not print or copy well,
but nearly any kind of cross-hatching is okay, so long as the cross-hatching
lines are bold and are not confused with the drawing lines. Any letters or
numbers must be at least 1/8 of an inch tall, so they will print well.
Tables containing data, and chemical
formulas and structures, are rarely submitted as drawings; instead, those
types of material are preferred as inserts in the text , even if they
require the 2-column format of a patent to be interrupted. This is because a
patent examiner can handle anything in the text, including tables or
chemical structures, while a separate review and approval, by the PTO’s
Office of the Draftsperson, for all drawings.
The PTO is very reluctant to print
photographs in patents, because of the printing expense. However, any good
photographs should be shown to the attorney, and they can be submitted to an
examiner, as exhibits which accompany a declaration or affidavit that will
not be printed as part of the patent.
Carefully consider the best way to show
your invention visually. Many patent attorneys and examiners look at the
drawings before the text, so drawings can create the first impression. For
that reason, they're worth extra effort. Study the drawings of several
patents in the same field as your invention. That will give you a sense of
how patent drawings are arranged and what their goal is.
When you're ready, draw up your own
rough drafts. Even if they aren't high quality, they'll help the draftsman.
Your only goals are to make them large, and clear. Try to make each drawing
(even drawings of sub-components) fill up at least two thirds of a sheet of
paper. Paper is cheap, and few things are more annoying than staring at a
tiny little squiggle, while listening to an inventor point out a dozen parts
that are invisible to anyone but him. Computer-generated drawings are often
helpful, and they can sometimes be used as the formal drawings.
Drawings in full-scale utility
applications patents normally use "call-out numbers" which are explained in
the text. Inventors should avoid those; don't even try to assign any
numbers. Instead, give the patent attorney two copies of your hand-drawn
versions. On one copy (the "plain vanilla" copy), don't put any words
or numbers at all; just draw the device, graph, or whatever, and leave
the drawing as open and clean as possible, so the patent attorney will be
able to use it in any way he chooses. On the second copy, add labels
(words or phrases) to identify each component, or to point out specific
things that deserve extra attention in the drawing. Put any labels out
around the edges of the paper, and use arrows to point out each labeled
component, line on a graph, etc. You will end up using those two drawings to
help the patent attorney figure out and assign any names that need to be
assigned to components that need to be named. Later, the patent attorney
will assign call-out numbers, after he develops a better sense of how the
final drawings should appear.
Drawings of prior art are rarely printed
in patents. However, such drawings can help people figure out how your
invention works, so if there are good prior art drawings, make copies and
include them with your first draft. Clearly label them as prior art (for
example, "This is the device described in patent 4,567,890 by Smith").
Drawings in Provisional Applications
As noted above, the requirements listed
above apply to drawings that will be printed by the Patent Office. And as
noted earlier, provisional patent applications are never even examined, let
alone printed, by the Patent Office.
This leads to a conclusion: there is
unlimited flexibility and leeway, in drawings, photographs, and other
graphical materials that are submitted with provisional applications. Have
you got some good color photographs, showing what you’ve done? Or some color
printouts from a Powerpoint presentation? Fine; you can include them with
your provisional application, but make sure they look impressive and
professional, and are of a caliber that can help sell your proposal to a
business manager.
And, you don’t need callout numbers in a
provisional application Instead, if you want to make your drawings as easy
as possible to decipher, feel free to put written-out names around the
margins, with arrows pointing to each named component. And feel free to add
a block-lettered legend at the top or bottom of the sheet, explaining what
that drawing shows.
It should also be recognized that, even
in utility applications, final (“formal”) drawings are not required to be
submitted with the initial application. One way to speed things up and save
money is by filing a utility application with “informal” drawings. These can
be drawn by an inventor or patent attorney, using simple tools
(straight-edges, curved templates, etc.), or they can be drawn by computer
graphics. If adequate versions can be generated, the expense of having
formal drawings done by a professional draftsman can be delayed until after
the application has been examined, and fully allowed. If a Notice of
Allowance is received, formal drawings can be created; and, if the
application isn't allowed, that expense can be avoided entirely. And, if an
inventor is in a hurry to get an application filed, informal drawings can be
used to eliminate a waiting period while a professional draftsman finishes
his work.
Brief
Description of the Drawings
This is a very important section, since
nearly any patent attorney or patent examiner will quickly go to the
drawings, and try to figure them out, before reading anything other than the
abstract or summary. Instead of using these “brief descriptions” (which will
be no more than 2 or 3 sentences, for each drawing, in sequence) to master
the entire invention, the attorney or examiner will look briefly at a
drawing, try to figure it out, and then read its brief description, to see
if he was right about what that drawing is about.
Typical brief descriptions might read:
Figure 1 is a plan view showing the
hyperwidget of this invention.
Figure 2 is a side elevational cutaway
view, along line 2-2 in Figure 1.
Figure 3 is a circuit diagram of a
control unit for the hyperwidget of this invention.
Figure 4 is an exploded view showing the
components of the hyperwidget.
Figure 5 is a chromatograph showing the
purification of the ABC substance by the hyperwidget.
Figures 6A and 6B are before-and-after
depictions, showing the untreated surface prior to treatment (FIG. 6A) and
the same surface after the treatment (FIG. 6B).
Detailed Description
This section (which used to be called,
“Description of the Preferred Embodiments”) contains a narrative explanation
of the invention. This section must contain a complete and detailed
narrative which describes the figures in detail, listing and explaining each
and every callout number used on any drawing. This is also the proper place
to describe any potential enhancements, such as additional or alternative
components, methods, etc. that might be incorporated into the invention at
some time in the future, even if they are not present currently.
If an invention involves chemistry or
biology, the examiner will want proof that the process or compound exists
and functions in the way the inventor claims. This usually requires a
separate section called "Examples" which will specify detailed recipes (such
as exactly what weights of what compounds were mixed together, how long they
were stirred or incubated, etc.) and experimental results, as described
below. The "Detailed Description" section should be a narrative overview of
those examples; without repeating the exact recipes, this narrative will
explain why those steps were taken, and what was happening during each step
of the process as a certain compound was being made or tested.
An inventor must reveal the "best mode
of carrying out the invention" that is known on the day the patent
application is filed. The inventor cannot hide the best version and keep it
as a trade secret while using an inferior version to obtain a patent. This
is a rigid requirement which is strictly enforced. If there is any hint that
an inventor was playing hide-and-seek games with the best mode requirement,
most courts will simply strike down the patent. So, be up-front and entirely
forthcoming with the best version you know about on the day the application
is filed.
However, there are two major rules that
clarify and adapt the best mode rule, and both should be known to any
inventor. First: improvements that are discovered after an application is
filed can be kept as trade secrets. Therefore, the way to win at the
best mode requirement is by filing an application promptly, then following
up the initial discovery with more research after the application is filed.
Second: even though the best mode must
be disclosed (which means, it must be mentioned somewhere in the
application), it does not need to be identified, highlighted, or emphasized
as the best mode. As an example, it is standard practice for drug companies
to place their “lead compounds” (the compounds that performed best in
initial tests, and which will be studied in more detail in subsequent tests)
somewhere the middle of a much longer list of compounds which did not
perform well and are no longer of any interest in any further tests or
trials. Their attitude is, “If my adversary and enemy that wants to steal
the fruits of my work and wants to know which compounds worked best, fine.
Let him do the work, and he’ll find out. I’ve already told him where to
look, and that’s all he’s entitled to get from me.”
There is another rule that also deserves
careful attention. Inventors and their attorneys must act with complete
candor and good faith in bringing all relevant information to the attention
of a patent examiner. Inventors must be very careful about how they treat
unsuccessful experiments, early prototypes that didn't succeed, etc. If they
try to conceal negative data, the patent can be invalidated after it is
issued. Bring all the data to the attention of the patent attorney, and
clearly point out the best mode, to the attorney. The attorney will help
decide on the best way to present the information.
In addition to pointing out the best
mode, the inventor should try to anticipate possible modifications to his
invention. Typical language: "In an alternate preferred embodiment of this
invention, the positions of the cardioblot and framistat can be reversed.
This would cause . . ."
It is also possible to use functional
language in describing and claiming an invention. For example, suppose that
in a machine, it is necessary to securely mount part A on part B, but it
doesn't matter how you do it. The two parts could be screwed together,
bolted, welded, nailed, glued, clamped, etc. Instead of specifying ways of
attaching those parts, you can simply refer to "means for attaching part A
to part B," and give one or two suitable examples, such as bolts or welding.
Similarly, it is often possible to use
functional language in the chemical or biological field, such as "any
pharmaceutically acceptable salt of this compound," or "at a dosage
sufficient to generate an immune response in an injected animal, using a
suitable carrier substance. Such carrier substances are well known to those
skilled in the art."
Examples
Most chemical and biological patents
must include a section called “Examples”. These must contain any hard data,
to assure a patent examiner that the molecules, mixture, cells, etc., have
been created and perform as claimed. Otherwise, people could get speculative
patents merely by synthesizing a compound, without having to prove its
utility. Such patents would discourage research rather than promote it.
If examples are necessary, they should
contain enough detail and data to allow "someone with ordinary skill in the
art" to repeat the experiment and get successful results. "Ordinary skill"
refers to someone who can carefully follow written instructions, rather than
a creative whiz who can find some way to overcome any obstacle. The
instructions can be very complex and demanding, and the level of skill
required to follow it can be high; for example, in the field of
biotechnology, "ordinary skill" refers to people with PhD degrees, since
nearly any biotechnology company will have one or more PhD's. The key point
is that "ordinary skill" must not require a high degree of imagination, or
creativity in overcoming unforeseen obstacles. Instead, the invention must
be capable of being carried out without “undue experimentation.”
Whenever a reagent, piece of
equipment, or other item is mentioned, the supplier should be listed along
with the city where the supplier is located. Model numbers (for equipment or
hardware), product codes or trademarks, and purity classifications or other
specifications (for chemicals) should be specified the first time that item
is mentioned. If you use a trademark, describe what that item is in
technical terms, or by referring to some publication that describes it
(e.g., "This product is a granular polyacrylamide with an average molecular
weight of X daltons, an average particle diameter of Y microns, and a charge
density of Z coulombs per gram," or "This chip is described in the
Microprocessor Specification Handbook, published by the Magnarola Company,
of Piston, Michigan"). If you used a special cell or plasmid, indicate not
just where it is described, but where it is available to the public (if it's
not available, it might be necessary to deposit a culture with a public
depository). If you refer to a process that is described elsewhere, give a
citation to the article or book where it is described, and point out any
deviations from the published version. Even if the only deviation was
increasing the quantities used, describe what actually happened.
References
If citations were given in abbreviated
form (such as "Smith 1980") in the text, the full citations (including
titles of articles or chapters) should be listed here, in alphabetical
order. Example: Smith, W.C., et al, "A New Treatment for Payne Syndrome,"
Science 123: 83-87 (1980).
The claims of a patent define the
property of the inventor. Everything else is merely explanation, which is
necessary to support the claims. Anything which is described but not
properly and carefully claimed becomes freely available for public use.
Claim drafting is a highly specialized
skill, and inventors emphatically should not try to draft their own
patent claims. The tricks and traps of claim drafting are so tortuous and
complex that if an invention does turn out to be worth millions of dollars
(which in most cases will not be known for several years), and if the patent
is challenged by competitors who are absolutely determined to move in and
grab as much of that cash as they can get without being sent to jail,
pitting an unskilled novice who tried to draft his own patent claims,
against a skilled and seasoned patent attorney, would be like sending a
naïve, unarmed kid to fight a strongarm thug with a bad attitude, a long
arrest record, and a knife. It would not be pretty, and it would not be
respectful or polite.
Nevertheless, inventors should understand
some basic facts about patent claims, so they can tell whether their
attorney is working hard and fighting for their best interests, or taking an
easy way out and settling for claims that are too narrow to offer any real
value or protection against infringers.
There are two crucial rules in
interpreting, applying, and enforcing patent claims:
1. Each and every "limitation" in a
claim must be infringed, or else that claim is not infringed.
2. If any claim in a patent is
infringed, then that entire patent is infringed. The patent owner does not
need to show infringement of more than one claim.
The first rule acts is a major warning,
and threat, for inventors. In the broadest claims, do not include any
limitations that are not absolutely essential. Every limitation in any
independent claim should have a clear reason for being in that claim, and
the only two reasons for including a limitation in an independent claim are
(1) to define and describe the invention, or (2) to avoid prior art.
For example, suppose you invent a
machine with four essential parts (A through D), and an optional part E
which helps it work better. Your broadest claim (which will be an
independent claim that stands alone and does not refer to any other claim)
should specify only parts A through D. It will also need to specify the
relationship between those parts, and it must describe how the machine is
constructed and/or how it functions; you cannot claim a machine merely by
listing its parts.
After you have listed essential parts A
through D in an independent claim, part E should be specified in a
“dependent” claim, which will be written in a form such as, “The machine of
Claim 1, which also contains part E.”
Why is it done this way? Well, if your
broadest claim lists all five components (A through D), then competitors can
legally avoid that claim (they can make, use, and sell your invention,
without paying royalties) by merely getting rid of part E, or replacing it
with some other component.
After the patent attorney has drafted
the claims, study every word carefully. See if any words can be taken out
while still distinguishing your invention from the prior art. And, because
of rule 2, try to draft several independent claims from several different
angles, using different phrases. One of those claims might cover it in a way
that other claims missed.
While you're working with a patent
attorney, don't be afraid to question, challenge, and probe. It's your
child, and you're paying the bills. A good attorney won't get upset, any
more than you should get upset at him if he challenges you to back up your
assertions. In a good relationship, each side works hard while challenging
the other side to do the same. If an attorney cannot or will not clearly
explain why he did something, or why he used a certain phrase in a claim,
that's a danger sign.
Should
a Provisional Patent Application Contain Claims?
The comments
above, about claims and claim-drafting, lead back to a major question:
should a provisional patent application contain claims? This question arises
because the patent law says that provisional applications do not need to
have claims.
I’d like to address that question,
because the answer leads back to an important piece of advice about
attitude, salesmanship, and persuading investors to actually invest
hard-earned cash in idea and a patent application.
Some patent attorneys take the position
that any provisional application should have claims at the end, to provide
additional evidence of what the inventor actually regarded as his/her
invention. However, the author of this article leans strongly in the
opposite approach, and takes the position that -- unless a particular reason
points strongly toward including claims, and unless a patent attorney is
involved in making that decision and drafting those claims -- then the
safest approach is to simply omit any claims, especially if an application
is being prepared by an independent inventor or small company.
Because of their very nature,
provisional applications should be written and filed quickly, without months
of delays for extensive, exhaustive efforts to make sure the prior art has
been thoroughly evaluated, the claims have been drafted carefully, etc. A
provisional application by an independent inventor or small company says, in
effect, “I was just getting started, and I knew I needed to hurry up and get
something filed, and I wasn’t sure, at that time, which direction or
directions this idea would end up taking. So, I was just trying to get the
patent process started. The patent law says that claims are not required, so
instead of spending time trying to draft claims at that very infant stage, I
decided to spend my time working on improving the idea.”
Just as importantly, putting a set of
claims in a provisional application creates a major risk of turning those
claims into a “sitting duck”, where opponents (i.e., lawyers who are getting
paid by the hour) can argue at great length (and expense) that the
provisional claims were invalid, overbroad, or whatever. And, your opponents
can argue strenuously that, if you didn’t adequately claim some particular
aspect of your invention, then you obviously failed to realize or anticipate
an important aspect or enhancement of your invention, which your opponent is
now trying to take away and claim as his own patented improvement.
Rephrased in the vernacular: don't try
to climb up on a horse, unless you're ready to ride it. Even if you think
you know what will probably happen, you can’t be sure what that horse will
do, after you're on it. If a car horn suddenly honks nearby, or a dog or
rabbit suddenly darts out of a nearby bush, that horse might bolts, and take
off running, and it won’t stop just because you ask it to.
In the same vein, unless you’re ready to
start fighting for whatever claims you put into a provisional application,
you’ll most likely be safer if you don’t have any claims in it at all, for
opponents and competitors to attack and criticize. Instead of proclaiming
that you're a skilled rider, before you're even up on that horse, approach
it with respect, caution, and humility. If it's a real horse, it'll be
bigger, heavier, and stronger than you.
In the same way, everything about the
tone, content, and attitude of a provisional patent application should
suggest, “I think this might be a good idea. I've been working on it a
while, and from what I've seen so far, no one else seems to be doing it.” No
one will try to rip your head off for making a statement like that. Indeed,
if you're “the little guy,” trying to do something worthwhile and help other
people, they'll probably start rooting for you.
By contrast, if you walk into the office
of a patent attorney (or an experienced business manager) and start saying,
“I've thought of a super-colossal idea, and it's going to make millions, and
it all belongs to me,” I can promise you – that manager or patent attorney
has heard that song before, too many times, from people who never ended up
doing what they said they could do. Instead of seeing respect and
admiration, you’ll see eyes glazing over, and a face that just can’t or
won’t understand what you’re trying to tell it.
So, this author’s advice is, don't start
out by making claims. Don't take the position that you think you've got the
right to decide, and claim, what you think belongs to you. Instead, roll up
your sleeves, start working on the problem, and try to convince any
onlookers or passers-by that you're more concerned with making a useful
contribution, than in how much money you're going to make.
CONCLUSION
Patents aren't really scientific
documents; they're legal and business documents, and the essence of both law
and business is conflict and competition. Patent examiners get paid to
challenge your application and find any flaws. And if your patent becomes
valuable, people who want to infringe or ignore it will try even harder to
find any flaws in it. It's best to find those flaws before an application is
filed, even if it means a bit of a struggle.
In the words of Frederick Douglass, "If
there is no struggle, there is no progress." And in the words of William
Shakespeare, "Life has given nothing to mankind without great struggle." The
goal is not to avoid conflict; the goal is to learn how to work with
conflict and competition, and learning how to turn them to your advantage.
The struggle to create something
important and valuable is the finest, most rewarding, and potentially most
enjoyable part of any career. But it can be difficult. The era is long dead
when an explorer could claim a huge tract of land merely by erecting a flag
somewhere. Today, if you want to be recognized as the creator of something,
you'll have to work for it.
Most inventors enjoy challenges, and
trying to get a good patent can be a real challenge, in every sense of the
word. I hope this article can help, and I hope you'll enjoy being an
inventor, as much as I enjoy working with inventors. They’re some of the
finest, most interesting and creative people who have ever lived, and it’s a
genuine privilege and a pleasure to be able to live the kind of life where I
get to work with inventors for a living.
Pat Kelly received an
Engineering Sciences degree from the University of Texas at Austin (1974),
and a Juris Doctor from Harvard Law School (1980). He has practiced patent
law since 1980, and specializes in biochemistry and medical technology. He
is also an inventor in his own right.
