Patent It Yourself - PDF Archive

ChaPter 8 | How to DRAFT the SPECIFICATION and INITIAL DRAWINGS | 185
For example, with an electrical circuit, you generally
don’t have to include the technical values or identifications
of components. However, if the operation of the circuit is at
all unusual, or if any component values are critical, or if it
contains a possibly novel feature, write down their names or
identifications. With a chemical invention, write down the
source or full identification of how to make any unusual or
possibly novel components or reactions. With a mechanical
invention, if any unusual or possibly novel parts, assembly
steps, or materials are required, be sure you provide a full
description and reference as to where to obtain or how to
perform them.
EXAMPLE 1: Griselda invents a new photofinishing
process that requires the use of a special trademarked
developer, Hypoxx, made by the Briskin Co. of Merion,
Pennsylvania. If Griselda knows the composition of the
developer, she must indicate this in the specification,
but if not she can simply refer to the developer as
Hypoxx developer from the Briskin Co. of Merion,
Pennsylvania.
EXAMPLE 2: Tom invents a new plumbing fixture
that uses a special valve that also is positioned where
two parts pivot with respect to each other. No such
“pivoting valve” exists. In order to fulfill the PTO’s
disclosure requirement, Tom must design the pivoting
valve and describe and draw it in his patent application.
The reason why you will need the full details of any
special aspects of your invention is simple. Section 112 of
the patent laws (35 USC 112) mandates that the specification
provide a “full, clear, concise, and exact” description of the
invention such that anyone skilled in the art can make and
use it without too much effort. In addition, if any feature
is possibly novel, you may have to claim it specifically,
so you will want to provide adequate terminology in the
specification to support your claim language.
5. Advantages/Disadvantages
List all disadvantages of the relevant prior art that your
invention overcomes, referring to the checklist in Chapter
4 (Form 4-2) to make sure your listing is complete. Then
list all the advantages of your invention over the prior art,
and all of your invention’s general disadvantages. (Because
of the new court decisions (see Inventor’s Commandment
10), we have to be careful how we state these, as I’ll explain
later.)
Now that we have reviewed these vital preliminary steps,
let’s turn to writing the specification.
E. Flowchart
To get you oriented, I’ve provided, in Fig. 8A below, a selfexplanatory
flowchart of the entire application preparation
process. Steps A to P, V, and W are covered in Chapter 8,
Steps Q to U in Chapter 9, and Steps X to Z in Chapter 10.
F. Write Your Patent Specification to
Comply With the Full Disclosure Rules
In writing the specification of a patent application,
including a PPA, your goal is to disclose clearly everything
you can think of about your invention. In case of doubt as
to whether or not to include an item of information, put it
in. The statutory provision that mandates the inclusion of
all this information in your patent application is Section 112
of the patent laws, paragraph 1, which reads as follows:
“The specification shall contain a written description of the
invention, and of the manner and process of making and
using it, in such full, clear, concise and exact terms as to
enable any person skilled in the art to which it pertains, or
with which it is most nearly connected, to make and use
the same, and shall set forth the best mode contemplated
by the inventor of carrying out the invention.”
If you read this statute carefully, you will see that it
imposes three requirements on a patent specification: (1) it
must provide a written description of the invention, that is,
it must tell what it is, (2) it must fully, clearly, concisely, and
exactly teach one skilled in the art how to make and use
it, and (3) it must set forth the best mode of carrying out
the invention. The reason for these requirements is based
upon the “exchange theory” of patents. The government
grants you a patent (that is, a monopoly on your invention)
for a term of 17 to 19 years in exchange for your disclosing
to the public the full details of your invention (written
description, how to make and use it, and best mode). In
this way the public will get the full benefit of your creativity
after your patent expires. If you describe the parts of the
invention and how it operates, you will satisfy the first
two requirements (written description and how to make
and use).
However, under current court decisions, it’s dangerous
to disclose a “best mode” since a court may use this to limit
your invention to this mode or embodiment. I have never
seen any instance where an examiner or a court criticized
an application that disclosed several different embodiments
but did not anoint one as the best. So most practitioners
now recommend that, to prevent any court from limiting
your invention to one mode, you disclose all of the