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 accused technology did not use ATM technology but instead used IP technology. If the patents did not describe broadly “broadband systems” it is less likely that the claims would have been useful to cover Time Warner’s IP-based system.

The form of the phrasing is “[broad or general descriptor], such as [detailed or specific descriptors].” This form can allow claims to the broad element while also specifying specific details in the patent application. Multiple detailed elements can be listed. For example, “a wireless protocol, such as WiFi, CDMA, 3G, 4G, LTE…” or another example, “a fastener, such as a screw, bolt, nail, rivet, hook and loop fastener….”

By describing an invention feature broadly first and then providing detailed examples of the broad element in an exemplary way, the invention feature is described both broadly and in detail. Describing the invention feature broadly provides the opportunity for broad patent coverage. Providing detailed examples supports the broad description and provides a fall-back position if some portion of the broad subject matter is already in the prior art.

Case Citation: Sprint Communications Company LP v. Time Warner Cable, Inc., No. 2017-2247 (Fed. Cir. Nov. 30, 2018).

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 case in D Three Enterprises, LLC v. Sunmodo Corporation, Nos. 2017-1909, 2017-1910 (Fed. Cir. 2018).

Descriptions of Washers and Brackets

D Three Enterprises sued Rillito for infringing three patents directed to roof mount sealing assemblies that are used to mount items, such as solar panels, to roofs. The patents claimed priority through a chain of patent applications back to a provisional patent application filed in 2009.

Some of the asserted claims of the patents did not require a soft washer. There were various versions of roof mount assemblies shown in the provisional application, but  only one version was washerless. However, the description of the washerless version used a W pronged attachment bracket.

The relevant asserted claims were not limited to a W pronged attachment bracket but recited a more generic bracket. Therefore, because the asserted washerless claims were not limited to the W prong style attachment brackets, those claims were broader than the disclosure in the provisional patent application. As such, the claims did not meet the written description requirement as applied to the provisional application.

As the claims were broader, the court found that they were not entitled to the benefit of the provisional application filing date in 2009. Instead the claims were provided the later filing dates in 2013 and 2014 of the non-provisional applications that resulted in the patents.

But there was intervening prior art that invalidated the asserted claims if the claims did not have the benefit of the 2009 provisional filing date. The court found the asserted claims of the patents were invalid based on the prior art that arose between 2009 and 2013.

Alternative Descriptions

The outcome in this case might be different if the 2009 provisional provided that any of the embodiment shown herein may be provided with or without a washer. Further, the outcome might be different if the provisional stated that a generic bracket could be used with the washerless version of the invention.

Claims in a Provisional Application

D Three’s provisional application (61/150,301) did not include any claims. While the law does not require a provisional application to have claims, one or more claims reciting a washerless version with a generic bracket could have been included in the provisional. Such claims might have provided the written support for the later claims in the resulting patent and changed the result. Just because the USPTO does not require claims in a provisional, doesn’t prevent you from including them.

Application Content Matters

D Three’s provisional application showed a number of different embodiments (variations) of the invention. D Three’s provisional application was not a back-of-the-napkin submission. It had 12 pages of description and 21 pages of drawings. If an application with that much detail can run into problems, so too can applications with less.

It is important that a patent application describe an invention both broadly and in detail regarding the various embodiments (variations) of the invention. This is designed to provide a broad foundation for future patent claims and for a better chance at obtaining broad and valid patent protection.

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



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 a valid patent and having no chance. It is the content of the application that matters regardless of whether you have a official filing receipt. And the USPTO will probably not tell you that you have not adequately described your invention when filing a provisional application. Instead, there is a fair chance that you will not find that out until it is too late to fix.


For an example, let’s look at the case of New Railhead Mfg., LLC v. Vermeer Mfg. Co., 298 F. 3d 1290 (Fed. Cir. 2002). This is not a case of a back-of-the-napkin type provisional submission, but is it a case where the provisional application failed to adequately describe the invention claimed in the patent. As a result, New Railhead’s patent was invalid. Therefore, it is helpful in illustrating the potential problem with provisional patent applications.

New Railhead Manufacturing sued Vermeer Manufacturing Company for infringing US Patent 5,899,283 (the ‘283 patent) on a drill bit for horizontal drilling in rock. The application that became the ‘283 patent claimed priority to a provisional application.

Here is a copy of Railhead’s provisional patent application. What you’ll notice is that it is missing some sections you would normally see in a non-provisional application, such as the brief description of the drawings, the summary of the invention, and claims. Also, if you compare the provisional application to the issued ‘283 patent, you’ll notice that the drawings of the provisional are not labeled with numbers to the extent that they are in the patent.

So the provisional lacked some of the sections and formalities that you would find in a non provisional and that you see in the issued ‘283 patent. But regardless of formalities, the question to consider is whether the provisional disclosed the invention claimed in the ‘283 patent.

Claim 1 of the ‘283 patent provides “the unitary bit body being angled with respect to the sonde housing.” The problem was the provisional application did not expressly describe the bit body as being angled with respect to the sonde housing. The court concluded this even though the provisional provided a “high included angle offsets for directional steering,” and enhanced performance that results from “multiplying the fracturing effect through leverage on the main drilling points.”

The court said “The passing references to a ‘high angle of attack’ and ‘high included angle offsets’ in the provisional, divorced from any discussion whatsoever of the bit-housing combination, do not convey to one of ordinary skill that [the inventor] was in possession of the bit-housing angle that is a limitation of the invention claimed in the ‘283 patent.”

Written Description Requirement

Railhead argued that one of ordinary skill would readily understand the angled bit body with respect to the sonde housing based on the totality of the provisional application. But this argument didn’t fly.

This is were a lot of inventors and engineers get tripped up. The court said, “It is not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure [but] whether the application necessarily discloses that particular device.” The written description requirement is stricter than what one skilled in the art would know. Therefore inventors and engineers may tend to leave out details that one skilled in the art would know, where it would be better to error on the side of caution and include those details.

When a patent attorney drafts an application the attorney often notices what appear to be gaps. When those gaps are brought to the attention of the inventor, it is not uncommon for the inventor to view the purported gap as something one skilled in the art would know. Nevertheless, to avoid a problem with the written description requirement, those gaps are often filled.

As If The Provisional Had Never Been Filed

Railhead admitted that it sold the patented drill bit more than one year before the filing date of the non-provisional application. The sale of a product more than one year before the filing of an application is prior art to that application. Therefore Railhead needed the benefit of the provisional application to avoid the patent being invalid over its own sale of the product. When Railhead could not rely on the provisional application filing date, the patent was found invalid. The end result was as if Railhead had never filed a provisional application at all.


The problem with a provisional application is that it enables applicants to file patent applications that do not adequately describe the invention. But, that problem can be solved by drafting a provisional application with substantially the same level of detail as you would draft a non-provisional application. When doing so there is nothing wrong with filing a provisional and it can protect the invention in the same manner as a non-provisional patent application. The bottom line is that the content of the application matters. And whether its a provisional or a non-provisional, the content of the application must adequately describe the invention.

Bearing or Avoiding Risks

One problem that individuals, startups, and small businesses face is they need to publicize the invention to obtain feedback to know whether it will be a commercial success. But patent law encourages you to file a patent application before you make your invention public. Do you spend money on having a patent application filed before you have commercial feedback on your invention? The answer with the safest patent position is yes. But the business ideal is to know the commercial prospects before investing substantial sums in the invention and its protection.

The provisional patent application is intended to address that problem by reducing the cost and reducing certain formalities required to file a provisional patent application. Therefore you can get something on file before going public. However, the patent application must still adequately describe the invention. And those cost and formality reducing features of the provisional application increase the risks that the provisional will not support claims in a later non-provisional application, as explained above.

There may be situations where the client has to decide how safe it/he/she wants to be from a patent prospective. There might be scenarios were lack of time or lack of money results in the client deciding to take on more risk. Maybe you didn’t think of filing a patent application until just prior to a public showing, a launch, or sales presentation to a customer. Maybe you don’t have the funds to pay a patent attorney to prepare a full patent application at the present time. Maybe you do not sufficiently know whether this invention commercially justifies the expense of preparing a full patent application.

In business, each owner and decision maker must decide what risks they are going to avoid and which they are willing to bear at any particular time. An attorney prepared patent application is ideal. And if you can’t or don’t want to hire an attorney to draft a full patent application at earliest time, then you are probably going to end up taking some risks.

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 degrees of freedom. The ‘525 patent repeatedly referenced (over twenty times) the input member as a single input member. It also disparaged the prior art devices having multiple input members.

The court concluded that the ‘525 patent did not disclose multiple input members, but rather only a single input member. Therefore, the ‘700 patent failed to meet the written description requirement for multiple inputs to obtain the benefit of the filing date of the ‘525 patent.

Intervening prior art existed between the filing of the ‘525 patent and the filing of the ‘700 patent. Therefore, without the benefit of the earlier filing date of the ‘525 patent, the claims of the ‘700 patent were invalid and Nintendo avoided infringement.

Given the repeated use of “single input member” and the disparagement of multiple input members, it appears that the original ‘525 patent was intended to be limited to only a single input member. That is, it was not a drafting error that a variation of the invention with multiple input members was omitted.

Nevertheless, this case demonstrates why when drafting a patent application, it is important to account for multiple variations of the invention. You should think about what components can be multiplied and describe those in a manner that can account for such versions of the invention. The use of exclusively restrictive language like “single” or “only one” may confine a patent resulting on your invention.

The written description requirement is separate, and arguably more stringent, than the enablement requirement. Further, the courts have been strict in asserting that it is not enough to assert that claimed variation is obvious in light of what was disclosed. Rather, to be safe, the variations should be clearly explained in the description.

Citation: Anascape, Ltd. v. Nintendo of Am., Inc., 601 F.3d 1333 (Fed. Cir. 2010)

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 content lays a foundation for a potentially broad patent. That detail in the patent application should include, were possible, a description of alternative ways of making and/or using your invention.

Patent attorneys call these alternative ways of making and/or using your invention, different or alternate embodiments of the invention.

To illustrate why it is important to describe alternative ways of making and/or using your invention, we can look at the case of Tronzo v. Biomet, Inc., 156 F.3d 1154 (Fed. Cir. 1998).

Describing Only One Way of Making/Using Your Invention is Limiting

In the Trozno case, the patent owner obtained Patent 4,743,262 (the ‘262 patent) on a cup for a hip replacement device. The parent patent application of the resulting the ‘262 patent only described the cup as a “conical cup.” The patent claim did not include the conical limitation for the cup. So the patent claim was to a generic cup, without limitation to the shape of the cup.

The defendant’s device used a hemispherical cup.

So the question was whether the description of “conical cup” adequately supported the claim to a generic cup.  If so, the claim would cover more than just conical cups but would cover cups of other shapes, such as the defendant’s hemispherical shaped cup. If not, the claim was not entitled to the filing date of the parent application for failing to comply with the written description requirement.

The written description requirement in patent law provides that the patent application must “contain a written description of the invention, and of the manner and process of making and using it.” Courts have said to meet the written description requirement that application must reasonably convey to one of skill in the art that the inventor possessed the claimed subject matter at the time the application was filed.

In the Trozno case, the court found that the parent application only described one shape of cup, the conical shaped cup. The patent owner’s attempt to claim the broader generic cup was overreaching beyond was described in the application. The end result was that the claims were invalid and did not cover the hemispherical cup in the product provided by the defendant.

Describe Multiple Variations of Your Invention and Its Components

How could this have been avoided?  In reasoning that the ‘262 patent only covered conically shaped cups, the lower court noted that the patent application did “not attempt to identify other, equally functional shapes or talk in terms of a range of shapes.”

There you have it. The court tells you how to get broader coverage. You get broader coverage by  providing a description of a number of different shaped cups in the application.

The application might have used language such as, “a cup is provided, the cup may comprise a rounded shape, a hemispherical shape, conical shape, a cylinder shape, an elliptical shape” etc. Of course, it is important to list shapes or variations that would actually work in the invention. But the point is that you want to list alternate variations of the components and aspects of the invention.

When listing the generic component “cup” along with various options for the shape of the cup, this enables you to write boarder claims. Boarder claims provide you with a stronger patent because you may be able to use broad language in your patent claims, e.g. the broad generic “cup” vs. the limited “conical cup.”