Patent It Yourself - PDF Archive

196 | Patent it YOURSELF
CAUTION
Avoid Negative, Restrictive, or Wishy-Washy
Statements That Could Be Used Against You Later. When
you write, be especially careful not to include anything that an
adversary could later use against you to invalidate or narrow
your patent. For example, never say that any novel part of
your invention is similar to something that is already known,
that the novelty of your invention is solely in a certain part,
that something “might” work, that something is always better
or necessary or critical, or that something is not done or
constructed in a certain way. If your patent is ever involved in
litigation, any adversary will use such statements against you in
court.
Avoid “Patent Profanity”
Here are some words and phrases that patent attorneys
avoid using, or use with caution, to avoid having a judge
limit your invention; one wag has called these words
“patent profanity.” They include: absolutely, always,
beneficial, crucial, critical, desirable, eliminate, essential,
every, hypothetical, important, invention, key, maximize,
minimize, means, must, necessarily, necessary, never,
obviously, only, peculiar, preferred, preferred embodiment,
present invention, require(s)(d), special, superior,
surprisingly, the invention, and very important.
Common Misconception: If you put any specific feature
of your invention, such as a preferred size, a preferred
material, a preferred shape, etc., in your specification, the
scope of your invention will be limited to this feature, so
any device that lacks this specific feature will not infringe.
Fact: The scope of an invention is determined almost
entirely by the claims and not by specifics that are included
in the specification. If you do recite any specific feature in
a claim, that claim will be limited to this specific feature,
but if the specific feature is stated in the specification, it
will help provide an adequate disclosure. The patent laws,
rules, court decisions, and practitioners actually require
and recommend that the specification include as many
specifics of the invention as possible, especially in critical
areas, so no one will ever be able to validly attack the
adequacy of the specification for failure to teach how to
make and use the invention. However when stating the
specifics of an invention in the specification, it’s important
to (1) state that these are what you presently contemplate
for this embodiment but that other values, dimensions,
etc., can be used, and (2) include as many variations as
you can envision. For example, “I presently contemplate
for this embodiment that the lever have a rectangular
cross section 2 mm by 4 mm and be 4 cm long and made
of austenitic steel. However it can have different cross
sections, such as oval, triangular, circular, etc., and different
sizes and materials, such as high-carbon steel, titanium,
polycarbonate, etc.” Never refer to “the invention”—only
to this embodiment. Also never state that any embodiment
is preferred; instead just list the embodiments as the first,
second, third, etc.
Now let’s get to the nitty-gritty of preparing the
specification portion of a patent application.
Make an Outline Before Starting
Prior to starting, in order to guide your path, you will
find it helpful first to make an outline, which should be
the same as the headings set out below. However, you may
want to make the Description and Operation headings
more specific and/or break them into several more specific
headings each, in accordance with your figures and specific
situation. I have provided a skeleton patent application in
Fig. 8F which you should copy into a word processor to get
you started.
2. The Parts of the Specification
There are also some commonsense rules governing the
best presentation of each of the separate parts of your
specification. I’ll briefly discuss each of these. Only the
sections with a “PPA” superscript are needed to file a
Provisional Patent Application. (See Chapter 3.)
a. Title PPA
Have your title reflect the essence of your invention without
being too long (about 500 characters maximum) or so
specific that it’s narrower than your invention’s full scope,
including all of its embodiments. For example, if your
invention is a foot pedal but the mechanism can be used as
a handhold, don’t call it “Foot Pedal”; call it “Hand or Foot
Pedal” or the like. On the other hand, don’t pick a title so
broad—such as “Electrical Apparatus”—as to be essentially
meaningless. A look at some recently issued patents in your
field should give you a good idea of how specific to make
your title.
b. Cross-Reference to Related Applications
In this section refer to any PPA that you’ve filed, to any
parent applications (see Chapter 14), or to any technically