Tag Archives | written description

Patent Drafting: The Written Description Requirement

US6906700_fig12Anascape sued Nintendo alleging that Nintendo’s game controller infringed U.S. Patent 6,906,700 (the ‘700 patent). Nintendo challenged the ‘700 patent asserting that it did not comply with the written description requirement of 35 USC 112.

The written description requirement provides the “that specification [of the patent/patent application] shall contain a written description of the invention, and of the manner and process of making and using it…”

The claims of the ‘700 patent were directed to a controller that received multiple inputs that were together operable in six degrees of freedom. But, the ‘700 patent was issued from a continuation application that claimed priority to a prior parent application (that became U.S. Patent 6,222,525 (the ’525 patent)). The ‘525 patent only disclosed a single input member (controller) capable of movement in six …

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How to Obtain Broad Patent Protection: Describe Alternate Versions of the Invention

US4743262_WrittenDescriptionClients often wonder why a patent application on a relatively simple invention is relatively long. The answer is that even the most simple inventions are not simple to describe properly in a patent application.

To write a strong patent application, the invention needs to be described to a level of detail that many clients would not have thought necessary.

Its not unusual that a client brings a 3 to 5 page provisional patent application that the client wrote themselves, and the non-provisional application I write is at least three to four times as long, or 15 to 20 pages or more.

This is why DIY patent applications are difficult to write well (but there are options and trade-offs when money is tight).

The details and length are necessary because that …

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