Tag Archives | written description

Describing Features of the Invention Both Broadly and in Detail

Drafting a patent application often involves  describing the invention both broadly and in detail. But how can something be described both broadly and specifically?A decision in a case between Sprint and Time Warner Cable illustrates one way.

In that case, Time Warner argued that the patents asserted by Sprint did not comply with the written description requirement. It argued that the claims were broader than what was described in the patent description. Time Warner argued that the patent description was limited to ATM networks. The appeals court disagreed.

The patent description at issue in the case included reference to “[b]roadband systems, such as Asynchronous Transfer Mode (ATM).” The court said that this wording “strongly suggests that the patents are not limited to ATM technology.”

In the Sprint case, Time Warner …

Continue Reading

Invention Not Described Adequately: A Provisional Patent Application Problem

USPatent_9068339_42It is not surprising that the content of a patent application is important. Sometimes the description of something as simple as a washer is important to obtaining a valid patent.

If the description of the invention in a patent application is comprehensive and multifaceted, you will have the option of pursuing and possibly obtaining broad and varied claims directed at protecting the invention. However, if the description of the invention is thin or narrow, it could be that you can’t get any valid claims–any protection–on your invention.

This is one of the problems with back-of-the napkin or otherwise thin provisional patent applications. Even when the application has more to it than a back-of-the napkin level of detail, an application can run into problems that result in no patent protection, as was the …

Continue Reading

The Problem with A Provisional Patent Application and How to Avoid It

USPatent5899283

 

The problem with a provisional application is that it enables applicants to file patent applications that do not adequately describe the invention.

The USPTO does not examine or look at the content of the provisional application. So as long as you send a properly completed provisional coversheet, a document that purports to describe your invention, and pay the filing fee, the USPTO will probably not object to it. Whether your application described the invention in great detail or whether it is a “back of the napkin” submission, the USPTO will probably treat it the same. You will receive an official filing receipt and think you are protected.

But the difference between an adequate description and a back-of-the-napkin description may be the the difference between having a chance to obtain …

Continue Reading

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 …

Continue Reading

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 …

Continue Reading

Powered by WordPress. Designed by Woo Themes