Patent It Yourself - PDF Archive

ChaPter 8 | How to DRAFT the SPECIFICATION and INITIAL DRAWINGS | 187
embodiments “fully, clearly, concisely, and exactly” without
stating which one is “best.”
However, you may identify the one you currently
favor in a nonlimiting manner, for example, “At present
I believe that this embodiment operates most efficiently,
but the other embodiments are also satisfactory.” If you
can’t decide which embodiment is the best, it’s okay to
list each embodiment and tell its relative advantages and
disadvantages. For example, in the delay device referred to
above, its use to close a box lid after a few minutes might
be your first embodiment, and the delayed “roly-poly man”
might be an alternative embodiment. In this case you
need merely state that the box is your presently preferred
practical application of the delay device, but the other
embodiment has other substantial applications.
Another reason for disclosing as much as you can about
your invention is, as stated, to block others from getting a
subsequent improvement patent on your invention. Suppose
you invent something and disclose only one embodiment
of it, or only one way to do it. If you get a patent that shows
only that one embodiment, someone may later see your
patent and think of another embodiment or another way to
do it that may be better than yours. This person will then be
able to file a new patent application on this “improvement
invention” and thereby, assuming a patent is issued, obtain
a monopoly on the improvement. If this occurs, you won’t
be able to make, use, or sell the improvement without a
license from the person who owns that patent. This is so
even though you have a patent on the basic invention.
As mentioned earlier, you must provide enough information
in your patent application to enable anyone working
in the field of your invention to be able to build and use it,
without undue effort. That is, anyone in the field must be
able to make a working version of your invention from the
information contained in your patent application. However,
to comply with this section, you ordinarily don’t have to
put in dimensions, materials, and values of components,
since the skilled artisan is expected to have a working
knowledge of these items. However, as described above,
dimensions, materials, or components that are critical
to the performance of your invention, or that are at all
unusual, must be included. If in doubt, include this specific
information.
Finally, having reviewed many patent applications
prepared by laypersons, I find that the most common error
in preparing the specification of a patent application is a
failure to include enough detail about the invention, or
enough ramifications. Thus, if you “sweat the details” like a
good professional does, you’ll seldom go wrong.
Common Misconception: A patent specification should not
include details of the invention since this will limit the
invention to such details.
Fact: The scope of the invention is determined mainly by
the claims; so including details in the specification will not
limit its scope.
“New Matter” May Not Be
Added After Filing
What happens if you don’t put enough information in
about your invention to enable “one skilled in the art”
to make and use it without undue effort? Either your
entire application can be rejected under Section 112
on the grounds of “incomplete disclosure,” or it may be
later invalidated if an infringer challenges it when you try
to enforce it. Also, if your patent application is rejected
because of incomplete disclosure, usually there is nothing
you can do since you aren’t allowed to add any “new
matter” (additional technical information) to a pending
application. (See Chapter 13, Inventor’s Commandment
26.) In other words, “You must get it right the first time.”
While many inventors object to and rail against the
“no-new- matter rule” (“Why can’t I add improvements
to my application?”), a moment’s thought will convince
you that the rule has a good purpose. Without the rule,
an applicant could continuously add improvements
and modifications, so that the filing date would be
meaningless.
NoTe
Software Note. If your invention includes a
microprocessor and an application program for it, either in
software or in firmware, you should either include a source
or object code listing of the program with your patent
application, or a detailed flowchart. The flowchart should
be detailed enough so that a programmer having no more
than ordinary skill would be able to use your chart to write
the program and debug it without undue effort or significant
creativity—even if the task would take several months.
NoTe
Biotechnology Note. If your invention requires a
microorganism or a fusion gene that is not widely available,
you must make a deposit of your “special” bug or plasmid in an