Patent It Yourself - PDF Archive

204 | Patent it YOURSELF
description and an operational description in separate
sections. However, you’ll find that this mode of description
works generally for most inventions, and you should
try to adhere to it since it will force you to be complete
and comprehensive. Your operation section should not
introduce any part or use any reference numeral that was
not introduced in the description section. Again, always
keep your reader apprised as to which figure is under
discussion. At the end of or in the Operation section, stress
the advantages of your invention—for example, “Thus, since
the lever is bent in this embodiment it avoids the jamming
that some prior-art couplings experienced.” Just say what
your invention can do and not what it can’t do because this
will denigrate your invention and give your adversaries
ammunition to attack it.
l. Description and Operation of
Alternative Embodiments PPA
If your invention includes several embodiments and
ramifications, you should first fully describe the structure
of the most preferred or most basic embodiment. (However,
never call it a “preferred” or “main” embodiment.) Then,
describe its operation in a separate section immediately
following the structural description. In this way, your
reader or examiner will get a full understanding of one
embodiment of the invention, including its operation.
Then describe each additional important embodiment—
those embodiments that you feel have a good chance of
being commercially implemented. Describe these additional
embodiments in the same manner, but more briefly,
since you only need detail the differences over the first
embodiment. Thus, several sets of description/operation
sections will result. For example, “Fig. 1—Description of
Motor,” “Operation of Motor,” “Fig. 2—Description of Hand
Version,” “Operation of Hand Version.” You must include
a highly detailed description of each and every part of your
invention, together with a highly detailed description of the
operation of each part and its relation to the other parts.
I emphasize that you should describe, draw, and claim
specifically all reasonably important embodiments and
ramifications so that you’ll have more support for broader
claims (see Chapter 9). Also, if an infringer is making or
selling a ramification, you’ll be able to show the judge
that you specifically showed that ramification in your
application. Infringement is supposed to be determined
mainly by the wording of your claims. However, as a
practical matter, judges are psychologically influenced in
your favor if your specification and drawings show and
discuss the very embodiment that is being infringed.
If you are aware of less important embodiments and
ramifications, you can describe these in the Ramifications
section, discussed below, without drawing or claiming them
specifically.
Tip
Medical Devices and Drugs. If your invention is
a medical device or drug, you don’t need to supply proof of
efficacy if it’s obvious that it will work and be safe. For instance,
if your invention is a drug that is close or analogous to an
existing drug that is already recognized as safe and efficacious,
you don’t need further proof. But if your invention is a drug
that is substantially different from anything on the market,
and it’s not apparent that the drug will be safe and efficacious,
you must be prepared to prove those things. Applications for
patents on drugs often are referred to the FDA, which has its
own requirements, but in cases where the drug or device isn’t
radically different, declarations by experts regarding safety and
efficacy will usually be accepted by the PTO.
m. Conclusion, Ramifications, and Scope
After you finish your detailed description of the invention’s
operation, add a “Conclusion, Ramifications, and Scope”
section to sum things up and to remind the judge who sees
your patent that the claims control. Here’s an example:
“Thus the reader will see that at least one embodiment of
the can opener provides a more reliable, lightweight, yet
economical device that can be used by persons of almost
any age …. [Keep selling it!]
[Some inventors have provided arguments for
unobviousness here, but I advise against this. Just state
the advantages without discussing unobviousness.]
“While my above description contains many
specificities, these should not be construed as limitations
on the scope, but rather as an exemplification of one [or
several] embodiment(s) thereof. Many other variations
are possible. For example [then continue with brief
description of possible variations that aren’t important
enough to show as ramifications in the drawing].
“Accordingly, the scope should be determined not by
the embodiment(s) illustrated, but by the appended claims
and their legal equivalents.”
In the first paragraph quoted above, the advantages of
the invention are restated and summarized to hammer
home the great value of your invention. But don’t refer to
“the invention” here—just the embodiments—and avoid
absolute terms, for example, state that it is “more reliable”
rather than “completely or highly reliable.” In the “for
example” portion of the second quoted paragraph, include