Describe your work in structural and mechanical terms, not use and functionality
“It slices! It dices!” Great, but what is “it”—and how exactly does it slice and dice?
BY GENE QUINN
The patent process actually starts well before you file a patent application or seek assistance from a patent attorney.
Every patent application starts with an invention, and every invention starts with an idea. Although ideas are not patentable, there will be a point when the idea you are working on comes so into focus with enough detail that it will cross the idea/invention boundary.
It is when an idea matures to the point of being concrete and tangible enough to be described to another that the idea has become an invention, at least in general terms.
Legally speaking, in order to have a protectable invention you have to be able to describe your invention with enough detail so that someone of skill in the relevant technical field or scientific area can understand how to both make and use the invention—having only read your description of the invention. This can and absolutely should be supplemented with as many high-quality patent drawings as possible.
The goal is to take your idea and transform it into something akin to an instruction manual on use and mechanics. Those new to the patent space tend to be very good at describing the use but less good at describing the mechanics of the invention.
Unfortunately, while describing use and functionality of an invention is necessary, no amount of description of use and/or function will make up for an insufficient description of the technology from a structural and mechanical perspective.
“It slices! It dices!” Great, but what is “it”—and how exactly does it slice and dice?
Explain how, not what
Focusing on use and functionality is one of the biggest mistakes inventors and new patent practitioners make. They spend too much time talking about what the invention does and very little time explaining what the invention is and how it operates on a mechanical, structural and electrical level to deliver the functionality being described.
In other words, the copy is written as if it is for an infomercial, or perhaps for a business plan. Neither infomercial nor business plan writing is appropriate in a patent application.
What you need is technical writing, which is why patent drawings are so helpful. Those drawings provide disclosure in and of themselves, and if you are doing what you are supposed to do you will be describing what each drawing specifically shows and how the pieces and parts are connected and relate on a structural level.
When you are attempting to move from idea to invention, regardless of how or why you find yourself stuck in the idea phase, the first order of business is to get the ball rolling. You need momentum.
It’s like that song: Put one foot in front of the other and soon you will be walking across the floor. Specifically identify the problem you want to solve and keep adding ideas and thoughts, layer by layer. Keep copious notes, because some things that seem like good ideas will eventually become bad, and things that were initially viewed as bad ideas will eventually become good.
The more thoughts and ideas you layer onto your solution, the more details you add. At some point you will cross that idea/invention boundary and be squarely on the invention side of the line.
Get your provisional
Once you cross the idea/invention boundary and are ready to file a patent application, the prevailing advice for many years was to first conduct a patent search. This was because doing a patent search is the only way to get a realistic idea about whether the invention is likely able to be protected.
Although inventors do need to search on their own to ensure they are not pursing a dead-end path, since 2013 U.S. patent laws have become “first inventor to file,” which must be interpreted as requiring inventors to file first, period. Therefore, current best practice is to file the most comprehensive provisional patent application possible.
Obviously, describing the invention completely, both in general terms and specific terms, is necessary in order to create a meaningful priority filing that can be relied upon later. Then, after a priority filing date has been obtained, have a professional patent search done and obtain an opinion from a patent practitioner before filing a nonprovisional patent application.
Happy inventing!
