Patent Written Description Requirement

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 What Is a Patent?

It is your responsibility as an inventor to protect your invention from unauthorized use and distribution. In the United States, a patent is granted to an inventor to prevent others from “making, using, offering for sale or selling the invention.” Patents protect inventors’ inventions.

Patents typically last twenty years and can be applied to any invention in any technology field.

Patents are part of international agreements with the World Trade Organization (WTO), so member nations of the organization are expected to recognize and enforce legal patents.

Types of Inventions that Can Be Patented

Generally, to receive a patent from the U.S. Patent and Trademark Office, the invention must be new, unique, and generally unobvious.

Depending on the item you wish to patent, there are different patents available:

  • Utility Patent: Generally, the invention must be a process or method with a concrete result, a machine, a chemical or biological composition of matter, or an invention improvement. An invention must also be moderately useful to qualify for a utility patent.
  • Design Patent: Generally, the design must be novel, non-obvious, and nonfunctional.
  • Plant Patent: Plants that you create can be patented. It must be a novel and non-obvious plant. Patents cannot be issued for natural substances, laws of nature, ideas, or calculation methods.

How Can I Get a Patent for My Invention?

The U.S. Patent and Trademark Office (USPTO) receives patent applications and makes patent determinations. An inventor must submit an application to the Patent and Trademark Office and attach specific drawings and a plan of the proposed invention. The inventor must also include a fee. The invention plan must follow a very rigid and specific format. After the application is reviewed, the Patent and Trademark Office will usually question the applicant regarding any objections the office may have.

As of September 2011, the exclusive rights will go to the inventor who filed the patent first. Until September 2011, patent protection was only granted to those who first invented the technology or product.

A patent is granted to the person who files for it, not necessarily to the person who invented the idea. This means that if you have an idea for a patent, it is important to keep the idea and its details confidential and discreet until the USPTO grants a patent for your idea to you.

Patents are your personal property. Just like any other property, it can be sold under the law. You can also license your patent to other people and companies, which is similar to renting out a piece of property.

Patent duration varies based on the kind of patent obtained. Patents filed before June 8, 1995, will be good for 20 years or 17 years after the patent is issued, whichever is longer. The duration for patents filed after June 8, 1995, is 20 years. Plant patents last for 17 years after the issue date, and design patents expire after 14 years.

What Legal Protections Do Patent Owners Have?

Once a patent has been granted to a patent owner by the USPTO, no other party can legally argue that the idea or invention is their own. Patent holders own all rights to the patented idea or invention. The patent holder can also bring an enforcement action in court to prevent a party from continuing any action involving their invention. Damages may also be awarded if the patent owner is successful in their enforcement action.

As mentioned above, patent owners also have these rights during the patent application process and can still have rights to their invention or idea while the patent application is pending with the USPTO. However, it is important to note that before the patent application has been filed with the USPTO, an inventor has no rights to the invention. This means that without a patent, anyone can steal or copy the idea.

What Is the Written Description Requirement?

When you submit a patent application, you must include a written description of your invention. As well as describing your invention, you must also explain how it can be made and used, as well as what you believe is the best way to make and use it.

How Can I Best Describe My Invention?

Written descriptions are required to prove that the invention you want to patent has actually been created. If you want to describe your invention accurately, you must provide proof that you own it.

Here are some examples of how you can do this in your written description:

  • You can describe how you made the invention
  • You can include drawings, formulas, or other methods of conveying information
  • You can deposit a sample of your invention in one of the repositories the USPTO has around the country. This method is especially useful for biological material that cannot be sufficiently described in words or with pictures

What Do I Have to Include in My Explanation of How to Make and Use My Invention?

An explanation of how to make and use your invention must enable someone who is skilled in the field to do so.

To accomplish this, follow these steps:

  • Make sure you show that your invention works
  • Make sure your claims are not too broad – to meet the enablement requirement, you have to explain how to make every invention that falls within the scope of the patent application – if your claims are very broad and encompass a wide scope of inventions, but you only explain how to make and use one of those inventions, your claims are not enabled
  • Describe how you have practiced your invention – showing the ways you’ve made and used the invention will show others how to make and use it

What Does It Mean to Disclose the Best Mode?

Additionally to describing the invention and describing how it can be made and used, you must also describe what you believe is the best method of doing so. Nonetheless, suppose your best mode requires elements that are not mentioned in your patent claims. In that case, you must disclose those elements in your written description, even if they are not necessary for the invention to function.

I Made an Invention, But I Don’t Know How it Works. Does this Mean I Can’t Get a Patent?

Patents do not require you to understand how your invention works. You can get a patent if you describe your invention clearly and how to make it. In the written description, the test is whether you can demonstrate that you created the invention, not whether you understand it.

How Do Patent Enforcement Actions Occur?

Patent holders can enforce their patents by suing anyone who infringes on their patents. A valid patent or provisional patent is required to sue for patent enforcement, despite what may seem obvious.

Inventors will have legal rights at several stages in the process of enforcing their ideas or inventions, and at each stage, they will have different legal rights.

For an inventor with an idea or invention, there are different stages of legal rights:

  • Conception: An inventor has no legal protections during the conception process of the idea or invention. As a result, patent enforcement is not yet available to inventors, and they should closely guard their ideas and inventions;
  • Documentation: The documentation stage is where the inventor has recorded their idea or invention properly. In this stage, the inventor is likely to seek patent protection for their ideas. Trade secret law may provide some legal protection for inventors’ ideas and inventions when they have proper documentation and witnesses, but not as much protection as patent law;
  • Patent Pending: This is the stage in which the inventor has submitted an application to the USPTO to patent their idea or invention. After submitting a patent application, the inventor will go through various stages of communication with the USPTO to complete their patented idea or invention. If the patent application leads to a valid patent, the date of filing will serve as protection against infringement;
  • Patent Issued: Once the USPTO approves the application and issues the inventor a patent, the inventor will now be a patent owner. At this point, the patent owner has full legal rights over their invention and can sue for patent enforcement. Moreover, the patent will be a public record so that others cannot patent equivalent inventions or ideas;
  • Expiration: If a patent is not maintained with the USPTO, the patent will expire, and the patent owner will no longer have legal protection for their idea or invention. Furthermore, if the infringement occurred prior to the patent’s expiration, the patent owner can still sue for damages for the period prior to the expiration.

Do I Need a Patent Attorney?

Patent applications can be very complicated. You may benefit from consulting a patent attorney.

You can ensure that your written description meets all the requirements by hiring an experienced patent attorney.

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