Inventors think that a broad patent (one that covers everything from A to Z) is one that describes the invention in generic terms without describing the particulars of the invention. Inventors will describe their inventions to me by describing the overall goals and the overall mechanisms that achieve those overall goals. Their goal is to influence my writing by describing their invention only in generic terms.
This is incorrect. A generic disclosure does not necessarily mean that the patent provides broad coverage. The proper way of determining the breadth of a patent is to focus on the claims. The claims are located at the back of the patent. The claims define the scope of patent protection, not the disclosure.
The disclosure provides support for the claim section. You should describe the invention in great detail and include alternative arrangements and different genus-species combinations. However, in the claim section, you should include only the necessary components of your invention. You should claim your invention broadly. If the claims are written broadly, then the patent if and when it does issue will be broad regardless of the particulars or details included in the patent application.
Now, you may ask why you should include the particulars of the invention if the claims only include generic terms. The reason is that the particulars are the backup arguments that you present to the examiner in case the examiner rejects your broader claims.
Let me explain. The examiner will examine your patent application about 1 to 3 years after submission to the patent office. During this time, you will experiment, go into the market, and know more about your invention (i.e., product or service).
If the examiner rejects the broad claims, then seeking protection for the narrower particulars of your invention may still be beneficial to you. By this time, your market research and knowledge will allow you to know which one of the particulars or details is worth protecting. If your patent counsel was savvy enough to discuss the importance of including particulars and backup arguments, you can add those particulars into the claims to argue around the cited prior art references.
In re Bimeda R & D Limited (Fed. Cir. July 25, 2013), the claims were directed to a drug formulation that excluded acriflavine, a specific type of antibiotic. Unfortunately for the inventors, the disclosure only contemplated a drug formulation that excluded antibiotics in general. The patent application did not include any mention of the specific type of antibiotic – acriflavine. The court held that the patent application did not support a claim directed to an acriflavine-free formulation. Hence, the claim to the acriflavine-free formulation was not allowable. Presumably, the prior art references cited a formulation that excluded antibiotics generically. Hence, the broad generic claim was not allowable. Alternatively, a “broad” claim to an antibiotic-free formulation would have been easy to design around. An infringer could include an antibiotic innocuous to the formulation to avoid infringement. On one hand, either the inventor could not get patent protection for the generic version or the generic version was too easy to design around. On the other hand, the species version (i.e., acriflavine free formulation) cannot be claimed because the species was not included in the original patent application. In this situation, the inventor was out of luck.
As such, when drafting a patent application, the best approach is to include the particulars of your invention into the specification. Draft the claims broadly. Include the particulars in the dependent claims. If you need to rely on the narrow particulars of the invention, then you can do so downstream when you have more market and business information.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected] Please feel free to forward this article to your friends. As an Orange County Patent Lawyer, I serve Orange County, Irvine, Los Angeles, San Diego, and surrounding cities.