If you have decided to move forward, with a patent application it is always necessary to file an application that completely and clearly describes the invention so that others would be able to understand the invention. For many particularly new inventors business executive and newbie patent attorneys or agents it is difficult to understand the so-called description requirement to patent ability. Those who fail in effort to describe the invention in so far as this adequate description requirement is concerned do so overwhelmingly because they do not have a full conceptualization of what it is that they have as protect able invention. There is always a nuances that can go a mile deep for any invention, no matter how simple it may seem to you as a inventor. It is critical to drill down the past the mile wide description of your invention for many reason, but from a practical standpoint lets remember that you will file your application anywhere from 12 months to 24 months before you likely to receive a first office action from patent examiner.
The crux of the adequate description requirement is the enablement requirement, which can be found in 35 U.S.C. ‘112(a), which states:
“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”
How do you know how far to go?
you really should strive to remove the doubt and question for reader’s mind. While a certain amount of experimentation is allowable, and patents do not need to contain blueprint level details,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 in this case a method then answer those questions. Perhaps there is a formula to determine dosage based on age, weight and height. If there is then disclose that formula.
The key to remember is that, the point of a patent application is to convey information. Drawing, charts, table and formula can frequently are very helpful, as are illustrative examples. Convey information with a variety of tools and mechanism. Words are but one way to convey information , and when you include drawing, tables and charts you will find it even easier to describe in words what is being disclosed. And obviously a patent application requires you to define the actual physics characteristics of the component of invention. When dealing with tangible invention patent application need to define the structure of overall invention but also the structure of the component . It is also impossible to describe everything so that the reader will be able to picture the invention in the mind. This may seem silly comment for some inventors and newbie patent attorney or agents because they frequently will think certain aspects of their invention are inherent in what they have already said.
Citing an Example
The best way to explain an invention to someone who is not already familiar with the invention is to explain it like so many of us used to do when we were kids doing a show and tell at school. A child doing a show and tell explains everything no matter how obvious or inherent. Kids do this when they describe things because they have no idea what person listening knows, and to them it is new and interesting so they can explain everything with tremendous details. That is how exactly it is should be done in a patent application.Explain the invention with so much details that you will bore the knowledgeable reader to death. That won’t make for entertaining reading, but it sure will make for a wonderful disclosure that will support a great many claims and can become the foundation of a patent portfolio if the invention ultimately becomes lucrative enough to warrant it.
