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You are here: Home / Lessons / Writing Tip #2: Be explicit. Don’t rely on inferences made in the patent application

Writing Tip #2: Be explicit. Don’t rely on inferences made in the patent application

April 11, 2018 by James Yang

Back to: Navigating the Patent System

https://www.uspto.gov/When drafting the patent application, be explicit about the mechanics of your invention. Do not assume anyone will infer the same information you believe is implied in the text. For example, if a mechanical pencil has a high degree of rigidity (e.g., it is made from a hard form of plastic versus a softer type of plastic), which helps with its mechanical operation, the rigidity needs to be expressed in mechanical terms in the patent application. Do not rely on the examiner to infer from a description of the pencil’s operation that the mechanical pencil requires a certain degree of rigidity—make it explicit.

Focusing on the point of novelty can help the patent drafter explicitly describe the various aspects of the invention. The drafter should focus on as many aspects of the point of novelty as possible and build the application around it. For example, if it is the mechanism that automatically progresses lead through a mechanical pencil makes the pencil novel, all aspects of that mechanism should be described in the Detailed Description. First, describe the basic operation of the mechanism. Second, include various parts of the mechanism that might help with, or improve, the functioning of the mechanism. If there are two or more such aspects that improve the function of the mechanism, such as (1) an index finger operated mechanical clicker and (2) a thumb operated mechanical clicker it may be prudent to indicate that the inventive product may be fabricated by incorporating aspect number one only, aspect number two only, or combinations thereof (see Chapter 10, “Written Description Requirement,” for more detail on describing features in a disjunctive manner).

Being explicit in the Detailed Description section is also important if patent protection is sought in foreign countries. Claims are often amended during examination of the patent application to avoid the prior art. In the United States, the USPTO has a more liberal approach in determining what can be inferred from the text of a patent application than foreign patent offices. However, for applications filed in foreign countries, the claim language needs to mimic the language in the specification to a greater degree than patent applications filed in the United States. In other words, the claim limitations that a patent applicant may want to include in a claim after its initial filing must essentially be found word-for-word within the Detailed Description of the patent application when prosecuting foreign patent application. Even though the U.S. takes a more liberal approach, the drafter should strive to make explicit aspects of the invention that the inventor wants to claim in light of possible foreign patent prosecution. This should be done in the event that the patent application is filed in foreign countries that have a strict approach to what information can be included in the amendments made to claims.

Previous Lesson
Writing Tip #1: How to write an application with the broadest possible protection (without breaking the bank) (Chapter 12)
Lesson 8 within section Utility and Design Patent Applications (Section 2).
Next Lesson
Writing Tip #3: Using the word “may” versus “is”
Lesson 10 within section Utility and Design Patent Applications (Section 2).

Table of Contents

  • Introduction
    • Disclaimer
    • What you will find in this course
    • How to use this course
  • To Patent or Not To Patent (Section 1)
    • Purpose of the patent system
    • Benefits to the patent owner
    • Overview of the Seven Core Concepts
  • Getting Started: Seven Core Patent Concepts
    • Core Concept 1: Defining the Invention (Chapter 1)
    • Core Concept 2: Ownership–Resolving Ownership Issues (Chapter 2)
    • Core Concept 3: Conducting a Novelty Search (Chapter 3)
    • Core Concept 4: Different Ways to Protect an Idea (Chapter 4)
    • Core Concept 5: Three Bars to Patentability and the First-Inventor-to-File Regime (Chapter 5)
    • Core Concept 6: Preserving Foreign Patent Protection (Chapter 6)
    • Core Concept 7: The Overall Patent Process and Costs (Chapter 7)
  • Utility and Design Patent Applications (Section 2)
    • How to use this section on patent applications
    • Deciding what application to file: Design or utility?
    • Design Applications (Chapter 8)
    • Cost Considerations for Provisional and Nonprovisional Utility Patent Applications (Chapter 9)
    • Overarching Principles of a Utility Patent Application (Chapter 10)
    • Parts of a Utility Patent Application (Chapter 11)
    • Claims section
    • Writing Tip #1: How to write an application with the broadest possible protection (without breaking the bank) (Chapter 12)
    • Writing Tip #2: Be explicit. Don’t rely on inferences made in the patent application
    • Writing Tip #3: Using the word “may” versus “is”
    • Writing Tip #4: Preferred embodiments and using the word “substantial”
    • Writing Tip #5: Do not use the word, “invention” 
    • Writing Tip #6: Suboptimal embodiments
    • Writing Tip #7: Ranges
    • Writing Tip #8: Software Inventions
  • Patent Examination FAQs (Section 3)
    • FAQ #1: Patent Process Timing
    • FAQs #2-3: Patent Costs
    • FAQ #4: Duty to search v. Duty to disclose
    • FAQ #5: Review of Formalities
    • FAQs #6-7: Secrecy
    • FAQs #8-9: Nonpublication request and foreign patent protection
    • FAQs #10-16: Restriction Requirement
    • FAQs #17-21: Responding to Office Action rejections
    • FAQs #22-29: Broadening patent protection
  • Appendices
    • Appendix A: Trademark
    • Appendix B: Sample Utility Patent  
    • Appendix C: Sample Design Patent
    • Appendix D: Sample Trademark Registration
    • Appendix E: Entity Size 
    • Appendix F: Patent Laws

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