Drafting a patent application is a challenging and often harrowing process—one that often leads inventors to make mistakes. One of the most critical elements of a patent application, and one which I receive many questions about, is the patent specification.
In short, the patent specification is the section in which the inventor describes their invention in full. This includes a detailed description, original claims, and drawings. This might seem like a simple request, but current law and past legal precedents have put forth three requirements which a patent specification must satisfy. Failing to meet any one of these requirements may result in an application being denied.
If you need assistance with drafting your patent specification, or your patent application as a whole, the Law Office of Michael O’Brien can help. Contact us by calling (916) 760-8265, or sending us a message using our contact form.
But for those who would like a little more background information, let’s take a step back and examine the three requirements for patent specifications in detail.
#1: The Written Description Requirement
The written description requirement draws the boundaries of the inventor’s exclusive right under the patent. If the concept of patent boundaries is confusing, consider a core question in real estate: where does one piece of property end and another begin? Just as a deed outlines the boundary of a property with a map, in a patent, words are used to create boundaries.
When words are used in a consistent manner in the claims and detailed description, with the drawings further illustrating each component or processing step in the claim, then we have a literary map to determine where the bounds of the patent are drawn.
Things start to get tricky in a couple of situations:
- The inventor tries to make a term more specific than it is in the application as originally filed. For instance, the application mentions a “sandwich,” and then the inventor subsequently wants to specify a “peanut butter and jelly sandwich.”
- The inventor makes up a “nonce” word. This is quite pretty common—the inventor creates something never done before, and then needs to call it something. However, the name needs to be as descriptive as possible.
- The patent examiner has literally no idea what the state of the art is in the subject matter of the invention.
The common thread in all of these situations is that there is confusion about where those property lines are drawn, and that’s what creates a written description requirement problem.
Each one of these situations is handled somewhat differently. In the first case, the “re-definition” is permitted if it is the kind of re-definition that would be known to a person who works in the area of the invention. The second situation usually requires the made-up word to be removed from the claim. Sometimes the examiner suggests a better word, which can be used to replace the made-up word. The third situation is both very rare and very delicate. The inventor needs to politely (with external references) explain the state of the art, the improvement to the state of the art, and why the improvement is significant in the field of endeavor. Technically, the examiner is supposed to request background information from the inventor when this happens, but I have never seen that.
#2: The Enablement Requirement
To satisfy the enablement requirement, the patent specification must explain to a contextually appropriate PHOSITA, in sufficient detail, how to make and use your invention “without undue experimentation.” That is, your specification must provide sufficient guidance and expertise in the workings and usage of your invention.
In 1988, the U.S. Court of Appeals formulated what has become the standard benchmark for determining whether a specification has satisfied the enablement requirement. This standard, often referred to as “Wands factors” (after In re Wands, the judicial proceeding in which the factors were set forth), includes:
- The amount of experimentation it would take a PHOSITA to make and use the invention based upon the information supplied by the inventor
- The amount of guidance and direction provided
- The presence or lack of working examples
- The nature of the invention (What type of invention is it?)
- The state of the prior art (what is the amount of novelty the invention introduces? What is the gap between existing work and the invention?)
- The amount of skill typically possessed by PHOSITAs
- The predictability (or lack of predictability) of the art
- The breadth of the claims described in the specification
These factors are balanced against one another and considered as a whole. No one factor determines whether a specification meets the enablement requirement. An important question to ask when drafting your specification is, “Are all the starting materials or apparatuses necessary to make a copy of the invention readily available to the public?” If your invention requires a custom fabricated part or a new material to make or use it, then you need to be extremely detailed in your description of these elements. However, well-known and obvious equipment, such as nails and bolts, only need to be briefly mentioned.
Legal precedents have made it clear that it is not necessary to enable a PHOSITA to create and use a 100% perfect, ready for market product. Rather, it’s simply necessary to provide the technical details and information necessary to create a duplicate which embodies the relevant, patentable claims outlined in the specification.
#3: The Best Mode Requirement
In its essence, the best mode requirement compels an inventor to disclose the best possible known process for creating their invention. It may be that early on, you created a rough alpha version of your invention, but after years of tinkering, you have refined your process and now have a more efficient manufacturing process that produces a more effective version of your invention. Now you are ready to file a patent application.
Because of the best mode requirement, you are required to disclose your refined process in your patent application, rather than trying to patent your alpha version and keeping the improved version as a trade secret.
Determining compliance with the best mode requirement requires a two-prong examination. First, it must be determined whether the inventor had a best mode for practicing the invention at the time the application was filed. Secondly, if it is shown that the inventor had a best mode, then it must be determined whether that best mode was disclosed in the specification.
It should be noted that the best mode requirement has been largely defanged by the America Invents Act. Previously, patents could be invalidated if it was shown that the original application omitted a known best mode. This is no longer the case.
However, it is still advisable to disclose a best mode, as future legal precedents or laws may give new life to this requirement. In addition, failing to disclose the best mode may leave the door open to newcomers who happen upon a variation of the best mode, and successfully manage to patent it.
Obviously, there is a significant amount of overlap between these three requirements. But the shared goal is to ensure that inventors adequately describe the claims for which they wish to receive patent protection. For the inexperienced, it is very easy to fall short of this standard, through error or failing to appreciate what patent examiners and courts consider to be adequate detail.
If you would like assistance with your patent application, the Law Office of Michael O’Brien can help. For assistance, contact us by calling (916) 760-8265, or sending us a message using our contact form.