Throwing the proverbial kitchen sink into your patent application

Many inventors believe that disclosure limits the scope of their protection. They try to give vague, non-specific examples in an effort to not “box themselves in” and provide as broad protection as possible. Claims that are too narrow may lose their commercial value by not properly keeping competitors out of the market. However, broadly written claims generally have the opposite impact at the patent office, which seeks to grant protection for a set of specific claims that meet the statutory definiteness, anticipation and obviousness requirements.

In layman’s terms, the lack of specificity renders the patent too vague and imprecise to clearly articulate the boundaries of the claimed invention. The patent claims must have clearly understood meaning to all such that a person could determine if his intended product or process would violate the patent claims. We are looking for a “yes or no” litmus test when we read and interpret the claims.

For example, software patent claims are held indefinite under 35 U.S.C.  Section 112 where the patent specification fails to provide any algorithm for performing a recited function in the claim. There may be many ways to accomplish a function, and it is unclear what the scope of the inventor’s technology actually includes. The inventor must actually be in “possession” of the invention; that is, appreciate the scope of it and define its limits. Thus, patents theoretically cannot protect things not yet invented. The art of patent claim drafting is to articulate and define in a way that you can protect against obvious improvements or other versions. Section 112(1) states that:

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 his invention.

While source codes and flow charts are not required, they may be needed if the claims themselves are too broad or do not explaining how the result is achieved. In a specification that summarizes certain functions being performed, but gives no guidance as to how they are to be carried out with reference to a structure or algorithm, the applicant will not likely meet its burden under Sections 101 and 112 of the patent laws. The devil is in the detail – explaining even a mundane thing that you think is obvious – but still giving you as broad protection as possible. Also, inclusion of equations and tables may be problematic if any terms or functions are undefined. Explaining that a result is achieved is not enough if you fail to provide a step-by-step explanation of how to achieve that result.

There is a delicate balance between limiting the disclosure to broaden protection and providing enough information to meet Section 112 requirements such that the patent office will approve the claims set. A patent attorney knowledgeable in the subject matter should be able to develop a strategy and write the claims to achieve this goal.

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