“Inventors are very good at describing how their inventions can be used and why their invention is superior from a usability standpoint to anything similar and available in the marketplace. The trouble is that describing how an invention can be used, while a prerequisite, will not distinguish a tangible invention from the prior art.”
From a conceptual standpoint, it would seem logical to assume that writing text to describe a particular invention ought to be easy for the inventor of that invention. Unfortunately, it isn’t that simple. While inventors are very good at inventing, they tend to be less good at many of the adjacent and necessary tasks along the road from invention to market success.
Indeed, while an inventor undoubtedly knows the invention better than anyone else, it can be enormously difficult for inventors to describe their own inventions. The inventor of a new and useful invention is always 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. And, sadly, when inventors forgo professional assistance, they all too often wind up focusing their entire description of their inventions on how their new device or gadget will be used at the expense of describing the parts and pieces that make up the invention. This is an enormous mistake, and one from which there is often no recovery.
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 similar and available in the marketplace. The trouble is that describing how an invention can be used, while a prerequisite, will not distinguish a tangible invention from the prior art.
What is relevant to patentability, and almost universally ignored by do-it-yourself inventors, is how the invention is different compared to the prior art on a structural, mechanical level. In other words, from an architectural, construction standpoint, what makes the invention unique? While it is important to explain how the invention will be used, uniqueness for most inventions will come from structure, connections, mechanics, wiring. In other words, the nitty-gritty workings; the tangible nuts and bolts of an invention.
Before moving forward, let’s recall (or perhaps learn for the first time) that the goal when describing an invention in a patent application is to describe the invention such that someone of skill in the technological area of the invention, or a “person of ordinary skill in the art (POSITA), would be able to both make and use the invention having read only the patent application. That is why it is best to proceed as if a patent application requires instruction manual-level of disclosure. This “make and use” requirement is called the enablement requirement. Without getting too much into the legal weeds, it is critically important to point out that the enablement requirement specifically requires the patent application to teach how to both make and use the invention. Thus, when the majority of the focus is placed only on how to use the invention, the patent application filed is almost certainly going to be defective. Sadly, a defective patent application that does not satisfy the enablement requirement at the time it is filed does not provide any value. Therefore, appropriate focus must be placed on how to make the invention, which requires description of each of the pieces and parts of the invention, as well as detailed instructions for how everything is assembled.
Structure, Not Function
Inventors should not despair. Disclosing and then describing the pieces and parts of the invention is not as impossible a task as it might initially seem. High-quality patent drawings are ordinarily quite inexpensive (about $30 to $50 per figure). Whatever one of skill in the art would understand by viewing the drawings will be disclosed. Of course, you should also include descriptions of each figure in the application.
Why is this so important? Because in order 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 it must be described 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 the described tangible invention.
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. But if you define your invention from a structural standpoint instead of a use only standpoint the infringer would be the manufacturer, distributer and seller. Being able to control the tangible invention and prevent it from reaching the marketplace is the point of a patent. That way you have a meaningful asset that can be licensed to those who want to manufacture, distribute and sell.
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.
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:
For more tutorial information please see Invention to Patent 101: Everything You Need to Know.
Image Source: Deposit Photos
Image ID: 82483190
is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. Gene is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.