Why Do I Need All These Details to Get a Patent?
Lately we have been working some inventors who are newer to the patent process, and they are often concerned about providing details about the embodiments of their inventions. Their concern is that when we ask for this information, it means we are narrowing the scope of their invention. However, that is not the case. We ask for this information to satisfy the Written Description and Enablement Requirements of the Patent Statute and so that, if necessary, we can restrict the scope of the claims during prosecution to distinguish the prior art. Providing sufficient detail about specific embodiments of a claimed invention is critical for improving your chances of getting a patent and protecting it from later being invalidated.
You Need to Satisfy the Written Description and Enablement Requirements
A patent is not merely a statement of your broad inventive concept. A patent is a limited monopoly given in exchange for teaching the world your invention. The teaching is part of the bargain. You cannot get a valid patent without it.
The Patent Statute has two related but distinct requirements that reflect this bargain: the “Written Description Requirement” and the “Enablement Requirement.” To satisfy the Written Description Requirement, you need to describe your invention in sufficient detail that a person of ordinary skill would conclude that you actually invented what you are claiming. The courts refer to this as demonstrating “possession” of the claimed invention.
What does this mean in practice? It means that you need to provide examples (called “embodiments”) of the invention and you need to provide the kind of details people in the field would expect to see if you had actually invented what you are claiming. Your “invention,” i.e., the novel and non-obvious aspects of what you have developed, might be very broad. However, patents are not awarded for simply coming up with a “wish” or an “idea”. They are awarded for inventions. The way that you show that you actually invented what you are claiming is to describe examples of it in detail.
To satisfy the Enablement Requirement you need to describe your invention in sufficient detail that someone of ordinary skill in the art could make and use it without “undue experimentation.” Although it sounds like the Written Description Requirement, it is different because you can have situations where persons of ordinary skill in the art could practice what you are claiming, yet the level of detail you provide is not sufficient to indicate that you – the named inventor – actually invented anything.
You Need to Distinguish the Prior Art Based on What is In the Application When It is Filed
When your patent application is being examined, the patent examiners often find prior art that you were unaware of when the application was filed. This does not necessarily mean you cannot get a patent, but it often means you will have to limit the scope of your patent, i.e., how broad it will be.
When we file a patent application, we draft claims based on the prior art we are aware of. However, if other prior art surfaces, it may turn out that the claims are too broad, meaning that they are not novel or are obvious in view of that prior art.
When that happens, you need to amend your claims. You need to add more details to them to make them narrow enough to distinguish the prior art. However, there is a key constraint on amending the claims: You can only amend them based on information that was in your patent application on the day it was filed. The information may have been in the specification and/or the drawings instead of the claims, but if you want to use it to amend the claims, it has to have been somewhere in the application when it was filed. You cannot come back and add details after filing. The original application is the “palette” from which you must choose the features you will use to distinguish the prior art. If you do not have enough detail, you may be unable to distinguish the prior art, and you may not get a patent at all.
Choosing the claim amendments is a critical exercise. You will often have several different features that you can use to distinguish the prior art. However, you want to choose those features that are the hardest for a competitor to avoid without compromising the commercial value of their product. Why? Because the way a competitor “avoids” or “designs around” a patent is to exclude something in the patent’s claims from its product. If the feature you add to distinguish the prior art is easy to live without, your competitor has an easy design around and can make a product that may take significant market share from you.
Patents are not blueprints. The level of detail required varies by type of invention, and it takes an experienced patent attorney to know what is required. However, as a general rule, you should describe all the embodiments that you have come up with at the time you file your application so that you will have maximum flexibility during prosecution and maximum enforceability during litigation.