• How to Properly Describe An Invention for Your Patent Application – Part 1 of a Multi-Part Series
  • May 29, 2017 | Author: Gerald Prettyman
  • Law Firm: JGPC Business & Corporate Law - Pleasanton Office
  • Writing and applying for a Patent is a trade-off. In return for the inventor having a monopoly for making, using, offer to sell and selling the invention, the patent application must describe the invention so that (1) the Patent Examiner will sufficiently understand the invention to determine whether the described invention qualifies for a patent, and (2) after expiration of the patent, the public knows how to make and use the invention. Patent applications require multiple well-written descriptions which not only complement each other, but do not conflict. Depending on the type of invention and type of patent application, there are five formats in which to describe an invention.

    The simplest format is a Brief Description of the Invention, which is an informal description of how to make and use the invention. Inventors often want to verbally describe the invention to the patent attorney, with the patent attorney playing the role of interviewer and transcriber. There are though, two problems with this approach. First, the question and answer process invariably raises questions and descriptions from the patent attorney which affect the invention conception, and under the rules, can make the patent attorney a co-inventor. For this reason, preparation by the inventor of at least a brief description of the invention is essential so only the inventor may claim being the inventor. The second problem for many inventors is that on average, each page of a patent application takes about an hour to prepare, so a question and answer session can raise costs quickly.

    There are no Format Requirements for a Provisional Patent Application

    The good news about a brief description of the invention is that there are no format requirements when used for a provisional patent application. For this reason, many patent attorneys, and all the online filing companies, have the inventor write a few paragraphs about the purpose and use of the invention, and add a sketch (a pencil darkened with a highlighter is acceptable) to aid explanation of the invention. If the inventor created a prototype, we can also include photographs. I also generally recommend my inventors create a parts list.

    A Patent Example

    A well-written example is outside the scope of this article, although the below brief sample for a Water Reclamation System shows the principle. Multiple people developed this invention during the past drought, but it is not patentable as all parts are shelf-stock, used as intended, and the engineering is well-known. A somewhat more complex version received US Patent 5345625 in 1994.

    The Water Reclamation System diverts water from the shower during the time that a person is waiting for the water to reach a comfortable temperature. The water may be diverted to an outdoor garden, yard, or to a holding tank for filling a nearby toilet.

    The Water Reclamation System includes a shower diversion attachment, to which is attached a shower diversion hose. In one version, the hose extends outside through a hole in a wall. In another version, the hose runs into a bucket, within which is a battery operated pump with an integrated float actuator (a bilge pump actually). From an outlet on the pump, a discharge hose carries diverted water to a toilet, onto which brackets affix the hose to the toilet. Inside the toilet, a second float actuator cuts power to the pump when the toilet is filled.

    A well-written description would provide additional details about the parts and function, such as materials, size and options and a drawing identifying the parts. A person might, for example, include a temperature-sensing valve that would cease diversion when the temperature was correct, or more importantly, when the bucket was full!

    Inventors and patent applicants will be interested in Part 2 of this series – Describing An Invention will discuss the Detailed Description of the Invention and the Drawings.


    This article was originally published on JGPC.com.