On the Art of Writing Patent Applications:
Saying More Than Enough without Saying Too Much
The key to writing a good patent application is to disclose not too little, more than necessary to enable one skilled in the art to make and practice the invention, but not too much. Disclosing too little will risk having the application be rejected for lack of supporting disclosure or having a subsequent patent be found invalid. Disclosing too much will risk having the application cost too much and/or disclosing things that may have been better kept as a trade secret.
A patent application can be too succinct. It takes greater effort and time to write a patent application that is honed to the bare minimum of disclosure. There is also the danger that putting too little material in a patent application may not fully support the claims. This is the worst error that can be made because it will cause claims of the application to be rejected for lack of support. The consequence is that the inventor will lose the priority of the filing date obtained for that application. In order to avoid abandoning the rejected claims, the inventor would have to file a continuation-in-part in order to add the missing matter, or file a completely new application. In either case, the filing date of the original application would be lost.
Mathematicians may admire a succinct patent application, but any resultant patent may risk being held invalid later if it can be argued that the combination of what was disclosed and the prior art would not have enabled one skilled in the art to make and practice the invention. It is, more often than not, correct that disclosing a little more would have made it more likely that one skilled in the art would be enabled to make and practice the invention. It is, more often than not, correct that disclosing more will help satisfy the enablement requirement.
One reason to disclose more than what is necessary, to support the claims of a patent application, is that the inventor doesnít feel the additional disclosure of ideas is worth protecting but wants to assure that other inventors donít file on those additional ideas themselves. The inventor then purposefully puts the disclosed additional information into the public domain by including it in the disclosure within the application so that it will be considered as prior art when other inventorsí applications are being examined. However, there stands the danger that the inventor, more than a year after this first disclosure, will change his or her intention but find it is then too late to file claims to the additional invention(s) disclosed by that additional information.
Part of a patent application should include the disclosure of prior art known to the inventor(s) and those who prepare the patent application. This disclosure of known prior art will strengthen the patent by establishing explicitly that the patent examiner has included that prior art in the examination process. This disclosing of prior art also helps readers of a patent place the disclosed invention into context relative to that prior art and may help to provide a basis on which the terminology used in the disclosure is to be interpreted. But it is considered excessive if the patent application attempt to republish prior art that would be clearly and unarguably obvious to one skilled in the art while reading the patent application on or before its priority filing date. Prior-art patents and/or publications can be incorporated by reference into a patent application to avoid having to recite that art. And non-essential art disclosed in a parent application to a divisional or continuation may be incorporated by reference as well.
It is often the case that a patent examiner will come up with prior art of which the inventor(s) were not aware. It is also often the case that, by disclosing more than necessary to support the initial claims within a patent application, the inventor will be in a safer position to amend the claims to distinguish over that prior art. This would avoid having to resort to adding new matter by way of a continuation-in-part application.
It is important to recognize, that initial claims may sometimes be properly rejected, while new claims may then be made that are allowed. The priority date of a patent application applies primarily to what it discloses and not necessarily to what it initially claims. So priority date might not be lost if the inventor had disclosed more than necessary to just support the original claims. It can also be that the inventor may not have at first recognized how his/her invention is different from the prior art. Such a case is another good argument for disclosing as much about an invention in the original patent application as possible.
Another reason to disclose more than enough is to help assure that the disclosure is enough to teach "one skilled in the art" and not just "an expert in the art". An "expert in the art" is held by the patent department to have more knowledge in the art than "one skilled in the art". So a patent application is better off if it discloses more than necessary to teach one skilled in the art. This is particularly true when filing patent applications for inventions made by experts in the field, as experts may only provide the patent practitioner with sufficient disclosure to teach another expert.
Putting too much material in a patent application may not only cost more to write up but may also make the disclosure more difficult to read and understand and may even cause the examiner to find objections to the disclosure.
There are situations in which an inventor and his or her Patent Practitioner (Patent Attorney or Patent Agent) may purposefully choose to have much more disclosed in a patent application than claimed in that application. If an inventive idea actually amounts to more than a single invention, the inventor is faced with paying for more than a single patent application in order to secure complete protection for that idea. There are strategic choices to be made in the content and timing of these multiple filings.
A first example would be where an idea involves both a novel apparatus as well as a novel means for making that apparatus, and the apparatus is not required for carrying out the method that comprises the manufacturing process. Here the inventor can either file two applications independently of one another (if filed within one year of one another), or disclose both the apparatus and the method in a first application which would cause the examiner to require the inventor to restrict the claims to one or the other. The inventor could file a divisional application thereafter to claim the one not first selected.
A second example would be an idea that involves multiple new devices making up a new apparatus. In one approach for this second example, the inventor may file simultaneously one patent application drawn to the apparatus, and file multiple patent applications each drawn to one of the devices. In this case, each of the simultaneous applications need not disclose more than what is necessary to support the claims being made. But, alternatively, the inventor may disclose all of the idea in one patent application that claims only one of the inventions comprising the whole idea. The inventor would follow that with the filing of continuations each claiming one of the additional inventions that comprised the whole idea. By filing simultaneously on all the inventions derived from the whole idea, the inventor will obtain multiple patents earlier. Whereas filing later continuations to an initial disclosure that disclosed all the inventions gives the inventor more time to determine the value of filing a subsequent division or continuation.
Depending upon which of these two examples an inventor may face, and upon the approach taken with a) independent, simultaneous applications or b) a chain of inter-dependent applications, the amount of disclosure necessary or even desirable may vary.
Regarding Patent Attorneys and Patent Agents, faults in choosing the right amount of disclosure in a highly technical patent application are more often made by Patent Attorneys having too little experience in the relevant field of the invention. Such faults are less likely to be made by those Patent Agents who have a great deal of experience in the given field. This is because more experience in a field of an invention provides more knowledge and better perspective of what is relevant to the novelty and un-obviousness of an invention in that field. Having more experience helps the Patent Agent with understanding what level of disclosure is necessary and sufficient to enable one skilled in that field to make and practice the invention.
A technically inexperienced Attorney may even write claims that do not protect the most important and valuable aspects of the invention. There are patents issued that claim little of great value relative to what was disclosed and could actually have been allowed if only the claim writer had been more technically savvy. This can happen where the inventor has written most of the disclosure, and the Attorney just copies it into the application. Then the Attorney writes the claims and either doesnít or canít communicate properly to the inventor what the claims actually achieve. In effect, the inventor is not enabled to test what is claimed against his/her awareness of what is most important to claim. This amounts to a wholesale giveaway of what was disclosed and not claimed.
Most troubling is the situation where a prospective inventor is wrongfully dissuaded from filing a patent application in the first place. This might be caused by a Patent Practitioner having too little technical experience in the field of an invention to recognize the novelty and un-obviousness of the inventorís invention. Patent Practitioners have the duty to avoid filing frivolous patent applications, but they can mistakenly reject a client where they are not experienced enough in the field of the invention to recognize its novelty and un-obviousness and how it can be sufficiently distinguished from prior art.
Lastly, any disclosure at all may be too much if an inventor would be better off maintaining an invention as a trade secret and not applying for a patent on it. But of course the risk is that others will discover the same invention and patent it first, thus preventing the prior inventor from even continuing to practice the invention.