Let your invention’s functionality and uniqueness do the talking.
Although a patent application is not a sales pitch per se, most inventors will find it helpful to list as many descriptive objectives of the invention as possible—sans puffery.
As a general rule, you should stay away from laudatory language (e.g. “the best gadget known to man” or “the perfect solution” or “using this tool is unquestionably the choice any professional would make”). When you puff, the tendency is to skimp on the descriptive details, which are essential to an appropriate patent application. Further, is anyone likely to take your word for it being “the best”? Describe the functionality of your invention, explaining in words and images how the invention works and why it is superior and unique.
By way of example, many times inventions are not one of a kind but are improvements upon existing solutions. In this situation it is common that the advantage of the new invention lies in that it is cheaper to make, easier to use, more efficient, less noisy, easier to clean, more durable, stronger, faster, more resilient, etc. These are things that you should include in your disclosure, but frequently this type of patentably relevant information is not conveyed with as much detail as possible and appropriate. In fact, many times the patentably relevant information is not described
as well as largely irrelevant information about marketing strategies and likely consumer demand.
Discussion of what makes an improvement better, stronger and faster should take precedent. Inventors should consider adding more of this type of information than they are generally accustomed
to doing. Keep the puffing for the sales department, the market and consumer demand for your business plan, and spend your time in a patent application describing what makes your invention structurally and functionally unique.
I always encourage inventors to ask this question: What are the advantages of your invention? Perhaps one of the advantages is that your invention is smaller than comparable substitutes. If that is the case, you might want to specifically include a statement explaining that one of the objectives of the present invention is to provide a smaller, more compact, more lightweight, more easily transportable alternative.
Keep it simple, straightforward and descriptive. This setup allows you to define a theme and build upon that to accentuate the positive. It also allows you to identify what you believe to be unique about your invention in a way that is free from any admissions that a patent examiner can and will use against you.
Similarly, if you have created a multi-use product in which the prior art is all single use, you might want to explain that one of the objectives of the present invention is to provide a stronger, more durable alternative that provides enhanced functionality.
Articulate the unique
There are legions of patents on inventions that combine one gadget with another. Today the mere combination of one gadget into another is likely not enough to obtain a patent. You need to be
able to articulate the invention so that it does not seem to be a trivial variation or trivial combination of two known gadgets. Focus your description on the counter-intuitive, unexpected and ingenious. To do this, consider the problems you faced while creating the invention and tell the story of the invention in a positive way that describes the nuances without making them seem trivial or common-sensical.
Another thing that inventors frequently struggle with is articulating the patentable feature and/or unique contribution the invention is making to the field. Puffing is again a typical crutch here. “I’ve searched far and wide, and this invention does not exist on the market anywhere” is not a substitute for describing structural and functional uniqueness, which is what is useful to the patent examiner. You must have an invention that is different than the prior art—and there is always prior art for an invention.
Many times inventors will describe their invention in great detail, and it may well be new, but they fail to articulate why it is different. A good, thorough description is required; it does no good
to say that everyone will want to buy the invention. The patent examiner doesn’t care. What is the unique advantage? Explain that thoroughly, focusing on any possible alternatives.
Generally speaking, in order to obtain a patent an invention must be new (i.e., never before done) and must not be obvious (i.e., not a trivial combination of things already known to exist in the prior art). Many times after reading invention disclosures or draft patent applications, I am left wondering why the invention is new and why it is non-obvious. This major problem occurs
because too much focus is placed on commercial discussion and marketing strategies at the expense of the more difficult to describe—the innate innovative uniqueness.
First, inventors should ask: What is unique about the invention? What sets it apart from what is already available in the prior art? Here you should focus on the functionality, but you cannot limit
yourself to that. Define structure in writing and use illustrations to bolster the description. A picture can be worth a thousand words.
Second, in order to obtain a patent it is not enough that an invention be new and/or different when compared to the prior art. It must also be non-obvious, which means that one of skill in the
art would not have thought to make the invention prior to seeing it described.
One common mistake by inventors is spending a tremendous amount of time discussing everyday components but failing to really focus on those components, combinations or steps that set the invention apart. You should specifically and explicitly mention what sets your invention apart and will make it patentable. Focus on those aspects of the invention that are counterintuitive, provide unexpected results or cooperatively behave in a way that was unanticipated. This goes a long way toward defining uniqueness and sets you up in a good place to later argue that the invention
is not obvious. Rest assured that 99.99 percent of all patent claim sets will receive an obviousness rejection. That is where the rubber meets the road for patentability.
Don’t box yourself in
As with everything else in patent law, you need to be careful. I always recommend that inventors stay away from saying things like “the only thing that makes the present invention unique is…” Rather, consider saying something like “one of the things that makes the present invention unique is…” The second alternative is only slightly different but leaves the door open for you to argue later during prosecution that other aspects make the invention patentable. The first alternative would likely be construed as an admission and could be very difficult, if not impossible, to get around.
Making absolute, hard-line declarations in a patent application is inappropriate and leaves no wiggle room. Even if you do the best search money can buy, you won’t find everything the patent examiner will use against you during prosecution. This is because patent applications remain secret for 18 months after they are filed, so any patent search is at best a snapshot of what the prior art was as of 18 months earlier.
