• Describing an Invention Part 2
  • July 22, 2017 | Author: Gerald Prettyman
  • Law Firm: JGPC Business & Corporate Law - Pleasanton Office
  • Part 2 of a multi-part series

    “Part 1” of Describing An Invention covered the purpose of a patent application (limited monopoly in exchange for complete disclosure) and the Brief Description of the Invention. This “Part 2” of Describing An Invention discusses the Detailed Description of the Invention.

    As a basic requirement, the Detailed Description provides an enabling disclosure of the invention sufficiently adequate for an ordinary person skilled in the art to make and use the invention. So what does this legalese mean?

    The detailed description describes in-depth (hence, ‘detailed’) the science and engineering applicable to the invention, gives a list of all elements of the invention, how to make those elements, how to assemble the elements, and how to use the elements and the invention. Some people call these the “four corners” requirement.

    Then there is the requirement for a description of the ‘best mode’ of the invention.

    If considered as a manual, the detailed description would be a combination of a textbook, an engineering manual, an assembly manual, a user manual and maybe even a troubleshooting manual.

    Why all this?

    The answer lies in the role of the detailed description as the second most important description of an invention. The detailed description is second only because the patent office uses the claims to determine whether the invention qualifies for a patent, and the courts (jury and judge) use the claims to determine validity and infringement of the patent. Being second though, does not diminish the importance of the detailed description as the claims must also appear in the detailed description, and the detailed description often determines the meanings and scope of the claims.

    Here is a comparative example. A well-prepared patent application for a patent eligible invention has one to two pages in the brief description, two to five summary pages, three to five pages in the claims and five to fifteen pages in drawings. The detailed description? Twenty to sixty pages!

    The reason for so many pages is that while a picture is worth a thousand words, neither the patent office nor courts will infer words from the drawings. In essence, drawings in a utility patent application are practically worthless unless those thousand words per drawing appear in the detailed description. Below is an excerpt from a patent application for a Device to Assist Paraplegics with getting Dressed, U.S. Patents, US8990978 and US9084501.

    [0030] FIG. 1A, 1B and 1C show a “before’ actuation and ‘after’ actuation side view of an embodiment (100) of an apparatus to assist paraplegics with getting dressed.

    [0031] Shown in FIG. 1A (“before’ actuation) and in FIG. 1B (‘after’ actuation) are at least one armpit rest (105), at least one lateral support (110), at least one vertical support (115), a rotational support (120), a rotational support affixment (125), a pivot support (130), a vertical adjustment device (135) and an armpit rest thickness (140). Shown additionally in FIG. 1B are an armpit rest lobe (145), at least one approximately flat lateral side (150), an armpit rest edge (155) and an armpit rest lobe height (160).

    [0032] Embodiment (100) comprises at least one armpit rest (105) which has an armpit rest thickness (140), an armpit rest lobe (145), at least one approximately flat lateral side (150) and an armpit rest edge (155), and an armpit rest lobe height (160), with the armpit rest lobe height (160) being greater than the armpit rest thickness (140).

    [0033] Embodiment (100) also comprises at least one lateral support (110), a rotational support (120), a rotational support affixment (125). The at least one armpit rest (105) is securely attached to at least one lateral support (110), and which is securely attached to at least one vertical support (115). The rotational support (120) is securely attached to the at least one lateral support (110), with a portion of the rotational support (120) securely affixed to the rotational support affixment (125). Details of the rotational support (120) are shown in FIG. 2.

    [0034] The at least one armpit rest (105) provides a secure place for the user to rest an armpit on the armrest while tending to dressing.

    [0035] The at least one armpit rest (105) is typically a soft padding covered with a pliable yet durable material, with a strong support piece inside. The soft padding of the at least one armpit rest (105) may comprise open cell foam, closed foam or both.

    [0036] The at least one lateral support (110) secures the at least one armpit rest (105) relative to the user, to the rest of the apparatus and to the environment. Depending on structural needs, the at least one lateral support (110) may be made of metal, wood, a plastic, or a composite.

    [0040] The apparatus also comprises a rotational support (120). The rotational support (120) is capable of allowing the at least one armpit rest (105) to rotate radially (clockwise and counter-clockwise), and storing energy from the rotation.

    Now, compare the first claim.

    1) An apparatus to assist paraplegics with getting dressed comprising:

    at least one armpit rest having an armpit rest thickness, at least one approximately flat lateral side and an armpit rest edge, with

    an armpit rest lobe of the at least one armpit rest having an armpit rest lobe height, with the armpit rest lobe height greater than the armpit rest thickness, with

    at least one lateral support securely attached to the at least one armpit rest, with

    a rotational support securely affixed to the at least one lateral support and capable of allowing the at least one armpit rest to rotate radially from an approximately horizontal position to an approximately vertical position and to return the at least one armpit rest to the approximately horizontal position, and at least one vertical support securely affixed to the at least one lateral support.

    Note that due to length considers in this article, the excerpt does not cover the entire claim. The actual detailed description gives a list of all elements of the invention, how to make those elements, how to assemble the elements, and how to use the elements and the invention.

    If in fact, the detailed description does not support the claims, the patent office can and has refused a patent. For this reason, a patent attorney should prepare the detailed description.

    That said, inventors need to use caution and avoid extraneous details. For example, the patent office doesn’t need to know the inspiration for your invention. If you in fact, state the inspiration for your invention, the patent office is likely to reject structure of your invention as obvious to the inspiration for your invention.

    Similarly, the patent office doesn’t need to know your marketing ideas, costs or sales plans. Again, stating anything other than the required information aids the patent office in rejecting your invention as obvious to the business for your invention.

    Contrasting these cautions, however, is the need for the patent application to look for and include other ways of making and using the invention. Inventors tend to overlook that competitors may try to ‘workaround’ a patent. Nystrom v. TREX is a good example.

    US Patent 5474831 (filed in 1992) described a curved board for use in constructing a flooring surface, specifically for outdoor decks. The curved board caused water to run towards the gaps between the boards. The water then drained down through the gaps, providing an advantage over flat boards on which standing water caused rot. Another company later made curved boards of wood fibers and plastic. The contractor-inventor sued the company for patent infringement, but lost because the patent solely described making the boards from wood cut from logs, without reference to other materials. To some degree, describing other materials was not necessary and metal and plastic are not subject to rot, the inspiration for the invention. Though wood plastic composite materials were new to the market in 1992, had the inventor and his patent attorney included even a mention of other materials, a different initial outcome might have resulted. For anyone wishing to study the nuances of patent disclosure and patent litigation, Nystrom v. TREX presents multiple hearings, trials and rulings.

    As shown here, a patent application requires and needs a comprehensive detailed description. Part 3 of Describing An Invention will cover the Drawings.


    This article was originally published on JGPC.com.