The written description requirement under section 35 U.S.C. 112,play two significant roles.
- first, it is used to define what constitutes the original filling, which is then used to determine whether or not you are late during prosecution trying to sneak content into application that is not supported by the original disclosure. You are not allowed to add new matter into patent application, and what is new matter is determined based on whether it is present whether it is present at the time of filing. If it was present at the original disclosure at the time of filing it is not new matter, and the amendment can be entered.
- Secondly, the second aspect focuses on proving that the applicant is actually in possession of invention.
Articulate the Boundaries
It is very important that a patent application completely define the invention particularly as specifically required in statute. Merely saying that different versions can exit is a first step, but without more the written description does not teach what the difference could be. The written description requirement essentially requires applicants to define the invention so the person of skill in the art will be able to appreciate exactly the boundaries of what have been invented. There is nothing per se wrong with including catcall statement in a patent application. It is critical to take the next step beyond saying additional versions of the invention can exist and explain what those additional versions are, what variations exist, how they may be structured and used. Pay particular attention to disclosing alternative features and structures using permissive (not mandatory) language. Always describe everything with as much detail as possible, focusing on the tangible elements and characteristics wherever possible.
Explain as much as possible
When attempting to satisfy the written description requirement, and in order to file a solid omnibus specification that can be used as a foundation for patent family it is necessary to explain as much as possible. This is critical because the first filing should be complete and thorough description of the invention, including all the various alternatives and permutation can be envisioned. This is necessary because while the format of an application can be changed information cannot be added while the format of an application can be changed, information cannot be added while still keeping the benefit of original filing date. For this reason the specification should not only mention the minimum distinguishing features necessary to overcome prior art that is known but instead the specification should also discuss specifics not only to expand your disclosures but to make sure that at least one embodiment disclosed will be patentable.
Beware of Generic Description
General descriptions can be helpful, but a general description leaves open a lot of possibilities. As it have lot of possibilities it is both good and bad. Being generic is good to create broad-scope, but only confiding oneself to generic is bad because specifics are not described. While describing the generic may implicitly disclose the specific this could run afoul of written description requirement, which allows inventions to be particularly described so that the reader will understand the scope of what has been invented by the inventor. The written description requirement is to ensure that a patent is limited to what the inventor has specifically invented; stated in patent terms the written description requirement is used (in part) to ensure that the inventor is in possession of the invention. In order to demonstrate possession of an invention it is important to demonstrate possession of both generic and specific embodiment. So, there is no substitute for describing the specifics of use and structure. Only describing the generics and refusing to describe specifics associated with the invention is terrible mistake. While there are for this a generic description will be much easier to find prior art against while specific description provide nuance to distinguish an invention over the prior art.
Explain as much as possible
When attempting to satisfy the written description requirement, in order to file a solid, omnibus specification that can be used as foundation for the patent family, it is necessary to explain as much as possible. This is critical because the first filing must be complete and thorough description of the invention including all the various alternative and permutation can be envisioned. This is necessary because while the format of an application can be change information cannot be further added while still keeping the benefits of the original filling date. For this reason the specification should not only mention the minimum distinguishing features to overcome the prior art is known, but instead the specification should also discuss the specifics, not only to expand your disclosure, but also to make sure one of the embodiment disclosed will ultimately be patentable.