The written description requirement requires an inventor to write down how to make and use (i.e., enablement requirement) the invention. The written description includes the text and the drawings. By doing so, after the patent expires, the patent can be used to teach the public how to implement the invention. Now the public can take advantage of your invention. The written description requirement prevents you from keeping your invention as a trade secret if you want to get a patent for it, at least.
How do you satisfy the written description requirement?
The written description requirement is satisfied by creating a patent specification. The patent specification is an instruction manual, a recipe, or a teaching aid. For a provisional application, you can actually submit the recipe or instruction manual. However, for a nonprovisional patent application, the information must be inserted into a specific format that includes various sections (e.g., background, brief summary, drawing description, detailed description, claims, and abstract). Sample Utility Patent Specification. But, the most important sections are the Detailed Description, the claims, and the drawings because of their interrelationship with each other.
Tips on writing the patent specification to satisfy the written description requirement
Tip #1: Strengthening Your Patent with Precise Descriptions and Examples
Focus on specificity: Describe each feature in detail and include at least one example for each key aspect, ensuring that each example aligns with the claim language to reinforce the inventor’s possession of the invention.
Tip #2: Using Implicit Structures to Strengthen Written Description Support in Patents
Focus on describing implied features explicitly: Reference both text and drawings to support each claim term, even if the structure seems apparent. This approach can reinforce written description support and address variations in standards across jurisdictions.
Tip #3:Broadening Written Description Support to Strengthen Patent Validity
Broaden the scope of the description: Include alternative embodiments and broad claims to convey full possession of the invention. Avoid disparaging prior art in the application text, as it may limit claim scope—use office action responses for such comments instead.
Tip #4: Avoiding Narrow Interpretations by Broadening Descriptions in Patent Applications
Use broad language and avoid limiting terms: Define key terms in the detailed description or dependent claims, including alternative examples to ensure flexible interpretations. Avoid terms like “invention” in descriptions to prevent limiting scope, opting for “claimed invention” to keep claims adaptable.
Tip #5: How to Satisfy the Written Description Requirement in Predictable vs. Unpredictable Fields
Here the guideline to determine how much detail you need to include for predictable and unpredictable fields. In unpredictable fields like biosciences, include specific data and examples to establish invention possession at the time of filing. In predictable fields, detail multiple variations and embodiments to strengthen claim support and meet the written description requirement.
Tip #6: Explicitly Stating Implied Features to Strengthen Written Description Support
State key combinations explicitly: In the patent description, outline combinations of elements or features clearly to ensure coverage of all possible configurations. This approach can prevent narrow claim interpretations and reduce the likelihood of invalidity arguments in litigation.
How are the detailed description, claims, and drawings interrelated with each other?
The detailed description section contains the written text on how to make and use the claimed invention. The detailed description also explains the meaning of the words used in the claims. The text also guides the reader through the drawings to help the reader understand the invention. The Detailed Description and the drawings together satisfy the written description requirement. The inventor needs to make sure that the explanation is sufficient to teach others to make and use (i.e., enablement requirement) the invention.
How are the written description and enablement requirements related to each other?
The written description requirement and the enablement requirement are found within 35 USC 112. In essence, it states that to secure a patent, the patent specification must include a written description that enables others to make and use the claimed invention. They work hand in hand with each other. Oftentimes, when the enablement requirement is satisfied, the written description is also satisfied.
Why is the written description requirement important?
The written description requirement is important because it limits you to what you can claim as your invention. Oftentimes, during prosecution, the claims are amended. But, these amendments cannot go beyond what the text and drawings can support. The text and drawings must show that the inventor had possession of what they are trying to claim. Otherwise, the amendments to the claims would be considered new matter. The examiner will reject the claim for including new matter.
Because of the potential for a new matter rejection, one of the goals of drafting a patent application is to include as much detail about the invention in the text and drawings (i.e., the written description).