From a conceptual standpoint it would seem logical to assume that writing text to describe an invention ought to be easy for the inventor of the invention. While that probably makes sense in theory, in reality it just doesn’t play out that way. It can be enormously difficult for inventors to describe their own inventions. This is true not because the inventor doesn’t know what they’ve 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.
Similarly, inventors are very good at describing how their inventions can be used and why their invention is superior from a usability standpoint to anything available in the marketplace or previously known. The trouble is describing how an invention can be used, while a prerequisite, will not distinguish a tangible invention from the prior art.
Before moving forward let’s recall that in order to satisfy the enablement requirement in a patent application it is necessary for the drafter of the patent application, whether a patent attorney, patent agent or the inventor themselves, to describe in great detail how the invention can be both made and used so that someone of relevant skill in the particular art or science will be able to understand how the invention is both made and used. This being the law, it is obviously necessary to explain how the invention will be used in order to fulfill the patentability requirements. Unfortunately, when inventors represent themselves they nearly universally focus overwhelming on the use and to the expense of actually describing structure.
It is necessary for an invention directed to a tangible invention —referred to in patent law interchangeably as either a machine, device or apparatus — to be distinguished from the prior art in terms of structure rather 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.
For example, let’s say you invented an ordinary garden shovel. You attempt to distinguish your garden shovel from previously existing garden shovels by saying that your garden shovel is used not to dig, but instead as a stickball bat. By focusing on the different use you are saying nothing about the structure whatsoever. While you can obtain a patent on a new method for using a known product, even copious amounts of information about how to use your garden shovel will not translate into allowing you to claim your shovel.
If you focus 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 individual new and nonobvious claims to a new method of a known product became difficult, if not impossible, to enforce. The thought process goes like this: 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.
Of course, method patents are not useless, and in fact can be quite valuable in the right hands. For example, if you were to invent a cheaper, faster, more efficient way to create a known product then you could sell that known product for less than what others could who are not using your method. These types of commercial methods can become quite valuable 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. Returning to our example with the shovel, is it truly new and nonobvious to use a shovel as a stickball bat. Sure, it might not be ideal or even convenient, but substituting one known device for another similar device to accomplish the same task is considered obvious, at least after the Supreme Court’s 2007 decision in KSR v. Teleflex.
The moral of the story is this: When describing 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.
So where do you go from here? One of the most effective (and economical) ways to disclose structure is to include multiple high quality patent drawings. For more information on patent drawings please see:
- Working with Patent Illustrations to Create a Complete Disclosure
- Patent Drawings: An Economical Way to Expand Disclosure
- Patent Drawings and Invention Illustrations, What do you Need?
For more tutorial information please see Invention to Patent 101: Everything You Need to Know. For more information specifically on patent application drafting please see:
- Two Key Steps to Overcome Rejections Received on PCT Drawings
- Drafting Lessons from a 101 Loss in the Eastern District of Texas
- From Agent to Examiner and Back Again: Practical Lessons Learned from Inside the USPTO
- Understand Your Utility Patent Application Drawings
- Getting a Patent: The Devastating Consequences of Not Naming All Inventors
- Getting A Patent: Who Should be Named as An Inventor?
- Make Your Disclosures Meaningful: A Plea for Clarity in Patent Drafting
- Avoid the Patent Pit of Despair: Drafting Claims Away from TC 3600
- A Tale of Two Electric Vehicle Charging Stations: Drafting Lessons for the New Eligibility Reality
- Background Pitfalls When Drafting a Patent Application
- Eight Tips to Get Your Patent Approved at the EPO
- What to Know About Drafting Patent Claims
- Beyond the Slice and Dice: Turning Your Idea into an Invention
- Examining the Unforeseen Effects of the USPTO’s New Section 112 Guidelines
- Anatomy of a Valuable Patent: Building on the Structural Uniqueness of an Invention
- Software Patent Drafting Lessons from the Key Lighthouse Cases
- Patent Drafting Basics: Instruction Manual Detail is What You Seek
- How to Write a Patent Application
- Admissions as Prior Art in a Patent: What they are and why you need to avoid them
- Patent Drafting: The most valuable patent focuses on structural uniqueness of an invention
- Patent Drafting: Proving You’re in Possession of the Invention
- Patent Drafting: Understanding the Enablement Requirement
- Patent Drafting 101: Say What You Mean in a Patent Application
- Patent Drafting 101: Going a Mile Wide and Deep with Variations in a Patent Application
- Learning from common patent application mistakes by inventors
- Defining Computer Related Inventions in a post-Alice World
- Patent Application Drafting: Using the Specification for more than the ordinary plain meaning
- Patent Strategy: Advanced Patent Claim Drafting for Inventors
- Patent Drafting 101: The Basics of Describing Your Invention in a Patent Application
- Patent Drafting for Beginners: The anatomy of a patent claim
- Patent Drafting for Beginners: A prelude to patent claim drafting
- The Inventors’ Dilemma: Drafting your own patent application when you lack funds
- Patent Drafting: Describing What is Unique Without Puffing
- 5 things inventors and startups need to know about patents
- Drafting Patent Applications: Writing Method Claims
- An Introduction to Patent Claims
- Patent Drafting: Define terms when drafting patent applications, be your own lexicographer
- Patent Language Difficulties: Open Mouth, Insert Foot
- Patent Drafting: The Use of Relative Terminology Can Be Dangerous
- Patent Drafting: Distinctly identifying the invention in exact terms
- Patent Drafting: Understanding the Specification of the Invention
- Tricks & Tips to Describe an Invention in a Patent Application
- Invention to Patent 101 – Everything You Need to Know to Get Started
- Patent Drafting 101: Beware Background Pitfalls When Drafting a Patent Application
- Describing an Invention in a Patent Application
- The Key to Drafting an Excellent Patent – Alternatives
- The Cost of Obtaining a Patent in the US
- Patent Drafting: Identifying the Patentable Feature
- Patent Drafting: Thinking outside the box leads to the best patent
- The Importance of Keeping an Expansive View of the Invention