From a conceptual standpoint is would seem logical to assume that writing text to describe an invention ought to to be easy for the inventor of the invention. While that probably makes sense in theory and reality it just does not play out that way. This is true not because the inventor does not know what they have invented or even because the inventor is not in the best position to explain the invention. Indeed, the inventor of a new and useful invention is absolutely in the best position to describe the invention. The problem lies with the reality that most inventors simply don’t understand what needs to be described in order to satisfy the U.S. patentability requirements. For example, most inventors can write volumes about why they came up with the invention, but why the invention was made isn’t particularly relevant to patentability.
Satisfying the Enablement Requirement
In order to satisfy the enablement requirement in a patent application whether a patent attorney, patent agent or investor themselves to describe in great detail how the invention can be both made and used so that someone of relevant skill in particular art or science will be able to understand how the invention is made and used. This being the law, it is obviously necessary to explain how the invention will be used in order to fulfill patentability requirement.
It is necessary for the invention directed to tangible invention, referred to in patent law interchangeably as either a machine, device or apparatus, to be distinguished from prior art in terms of structure rahtehr than in terms of function. This is true because an invention description that only focuses on the manner in which the machine or apparatus is intended to be used does not differentiate from the prior art if the prior art teaches all the structural limitations of described tangible invention.
The Problem
If you focus on your description only on use then at best you can obtain a patent on a new method for using a known product. The problem with those types of claims, however, is that in the hands of an indivisual new and nonobvious claims to a new method of a known product become difficult if not impossible, to enforce. The thought process goes like, Whom will you sue for infringement of your new method patent? In almost all cases, the infringer will be the user, not the manufacturer, distributer or seller of the shovel. But if you define your invention from a structural standpoint instead of a use only standpoint the infringer would not only be the user, but also the manufacturer, distributer and seller. Being able to control the tangible invention and not just the method of use is what you want to do because it allows you to stop infringement at the source.
Conclusion
Method patent are not useless, and infact can be quite valuable in the rigt hands. For exmaple, if you were to invent a cheaper, faster, more effecient, way to create a known product for less than what others could who are not using your method. These types of commercial method can become quite valuable and must be distinguished from the typical and must be distinguished from the typical method of use that an inventor describes. Still further in my experience the method of using an invention that is typically described by an inventor is one that frequently cannot be patented because the method often lack novelty or would be obvious. The moral of the entire story is, when describing an an invention you absolutely need to describe how the invention will be used, but to obtain the most valuable patent you need to describe the structural uniqueness of your invention.
