Let’s say that a team of inventors have designed a new type of electronic gearshift system for passenger vehicles that resolves issues inherent in existing products. Obviously, their invention is not intended to operate in a vacuum, but rather, to be integrated with a wide variety of vehicle systems, replete with their own patents. They don’t really care about these other bits, beyond the minimum knowledge necessary to ensure that their invention plays nicely with other vehicle systems.
However, when it comes time to file a patent application, it’s critical to understand exactly what information must be disclosed in the application to show how the invention functions. If you find yourself in this position, the Law Office of Michael O’Brien can help. For more information, contact us today by calling (916) 760-8265, or by sending us a message using our contact form.
Returning to the discussion at hand, in this situation the key question to consider is:
In your patent application, how much detail is necessary to adequately describe the existing products that your invention will integrate with?
Speaking from experience, many inventors underestimate the importance of this question, and I’m often tasked with trying to remedy the issue after the application has been filed. Typically, inventors have an extremely strong understanding of the underlying concepts and details of their invention, but have little to no understanding of peripheral concerns.
In our example, the inventors understand how their gearshift works, but have minimal understanding of the nuances of vehicle transmissions, electrical systems, internal combustion engines, etc. Inventors in this situation often regard anything that isn’t part and parcel of their inventive process as being trivial, and assume that the patent examiner will think likewise. Not wanting to spend a lot of time researching these seemingly trivial elements which are well publicized and understood, in their application they identify these elements as being trivial, and then are unpleasantly surprised when the examiner rejects their application.
The solution in this case is for the inventor to identify a specific example of the system or parts that the invention integrates with, and cite these by reference.
During the process of developing and refining an invention, the inventors will typically use an existing product as a test bed for their invention. They will buy parts off the shelf, or in the case of our gearshift developers, will install their invention in a particular make and model of vehicle.
Thus, the inventors should carefully identify the particular components that their invention was integrated with—the transmission, the electronic controllers, etc.—and include copies of the technical publications for these components.
To give another example, I have a great deal of experience in drafting patent applications for machine control systems. The inventors in question have developed a new control mechanism, which is to be installed in popular industrial machines, which have specific microcontrollers which the new control system integrates with.
What I will do in these circumstances is to include a note a paragraph along the lines of: “There are a number of microcontrollers which are suitable for executing the processor instructions passed along by the machine control system. In particular, the microcontroller sold under the trademark ABC-X Controller® has been especially effective in experiments. A copy of the ABC-X Controller® technical publication is incorporated by reference, and is included in the image file wrapper.”
I have never had an issue—either with examiners or in court—with patent applications that have incorporated a description like the above. In cases where the examiner is confused about the larger context in which the invention operates, they can read the included technical publications and find the insight they need. This gives the examiner all the necessary information, while minimizing the amount of ink you need to spill in describing these peripheral systems.
For inventors unfamiliar with the patent application process, it’s highly advisable that you have an experienced patent attorney who understands what disclosures are necessary to show the functionality of your invention. The Law Office of Michael O’Brien can help. Contact us today by calling (916) 760-8265, or send us a brief email using our contact form, and we will get back to you as soon as possible.