Detailed Description of the Embodiments. Episode 15
These articles are near verbatim transcripts of my “Patenting for Inventors” podcast. Click here, or the podcast image to get to the podcast feed.
Detailed Description of the Embodiments. Episode 15
In this episode I’m going to to through the section of the patent application called the detailed description of the embodiments. In the way that I draft my patent applications, this is the third section that I draft, after the claims, and then the drawings.
The drawings and the detailed description kind of go hand in hand, but it’s useful to at least have some sketches of the drawings before you start to describe your embodiment. In my opinion, the detailed description of the embodiments is the most important part of the application at the time of filing.
The reason why it’s the most important at the time of filing is that the claims, which define the rights and boundaries of your invention, can easily be changed after filing, but they can only be changed if they have supports in the rest of the application. But you can’t add any new subject matter. Most of the subject matter of your invention is going to be found in the detailed description of the embodiments.
If you discussed something in that section, then you can change the claims to cover something you already talked about. But if you never mentioned something in the description, then you’re not allowed to add that in later, you’d have to file a new application with those features that you didn’t talk about. This is why it is extremely important to have a very thorough detailed description of the embodiments and it’s usually the longest part in any patent application.
I’m using the word embodiments here, and not detailed description of the invention. You actually want to avoid in this section saying that you are describing the invention. The invention is actually more of an idea and the embodiments are different ways that you can accomplish your idea. It’s kind of like different examples or versions of your invention.
The reason why you don’t want to say that you’re describing your invention is that let’s say you come up with a new avocado slicer and in the way you manufactured it, there are 5 blades that slice simultaneously. It’s fine to say that in one embodiment there are 5 blades, but if you said that your invention has 5 blades, then someone can make something with 4 blades and say that they’re not infringing your patent because you specifically said that you’re invention had 5 blades. Now legally speaking, they shouldn’t be allowed to make that argument if you drafted your claims right. In your claims, hopefully you said something like “the avocado slicer comprises a plurality of blades,” and since a plurality just means more than one, then that’s fine. A judge also isn’t supposed to read the description in your application and then read that meaning into the claims.
What I mean, is that the judge isn’t supposed to say “Well in your claims, you said a plurality of blades” but when you described it, you only described your invention as having 5 blades, so what you must mean by plurality, is 5 blades, because that’s the only thing you actually described as your invention.
So not only should you not talk about your embodiments as THE invention, it actually goes to a second point, that you should describe more than one embodiment. If you only describe one embodiment, you run the risk of the court saying that your invention is only the embodiment you described.
Technically there is a rule that a court should not read limitations from a single embodiment into the claims, absent a demonstrated clear intention by the patentee to do so, but often what happens is that the court will just say that in your description, you demonstrated a clear intent to describe your invention as just that one embodiment.
You don’t want that to happen, so you want to give yourself some wiggle room. If you start describing your avocado slicer with 5 blades, it’s OK to say that one embodiment of your avocado slicer has 5 blades, but it would also be good to write, “Other embodiments of the avocado slicer could have 2, 3, 4, 6, or more blades without detracting from the invention.” It’s possible that one blade may also work, so you might include that as well.
When you are thinking of your invention, think about all the different versions that someone might make, by removing certain parts, replacing those parts with different parts, and adding parts to make it work. You want to include that in this section as alternative embodiments.
If you’ve done your drawings, the easiest way to draft the detailed description is to go figure by figure and discuss every part, and how they’re connected, and the purpose of that part. This is also the section where you want to talk about how all the parts put together solve some problem, and make your invention advantageous to use and solve problems.
If you listened to the last episode about patent drawings, remember that each part is labeled with a reference number. In the detailed description of the embodiments as you write about the drawing, every part you mention should be followed by a number.
Let’s say that you’re taking about a bicycle and you labeled the overall bicycle with the number 2, the wheel with a number 4, and the frame as number 6, chain as number 8 and pedals as number 10. You might write a sentence that goes “the bicycle 10 has at least two wheels 4, connected through a frame 6. Pedals 10 are connected to at least one of the wheels 4 by a chain 8.” Basically what you do is just write it as a normal sentence and then after that, just insert the numbers after every object.
If there are two of something that are pretty similar, like two wheels, you might want to label one of the wheels 4a and the the other 4b and you can call something a first wheel 4a and a second wheel 4b, or you can use separate numbers, it doesn’t matter, there are different ways that people do it.
So what kind of detail to you have to put into the detailed description of the embodiments? There are essentially three things that you should be thinking about. It must be a written description, there must be enablement, and you must disclose a best mode.
The goal of the written description requirement means that you have to convey to the public what you claim is your invention. It has to have sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Now technically to satisfy this requirement, it doesn’t have to be in this section, the claims can also show that you had possession of the invention, but generally this is the part of the application where you write in enough detail to show that you were in possession of the invention.
Even though the rules sometimes make it sound like you actually have to physically have the invention in front of you, it’s actually not the case that you have to have a prototype. You just have to describe it in a way that would show that your invention is ready for patenting and this can be done with drawings, or by descriptive words, or by stating chemical formulas, or some other characteristic where you’re describing it in a way that someone essentially could read the application and just imagine that you actually have it in front of you.
In patent language, if you don’t have actually have the invention, it’s called constructive possession, instead of actual possession, and you can get a patent on something if you constructive possess it, even if you don’t actually possess it.
The next requirement is called the enablement requirement. It sometimes gets lumped in with the written description but it’s actually a separate requirement. You have to describe your invention, and not just describe it in a way that shows someone you had possession of the invention, but that you have to explain enough about the invention that someone skilled in the art could make and use the invention.
The point is that after the 20 years are up on your patent, other people should be able to make and use your invention just by reading your application, so you have to make sure that you describe your invention in such a way that it does that. Now most of the time, if you are really thorough in your written description, by default you’re also being thorough on the enablement requirement. But there can be some situations where maybe you described your invention to show that you possessed it, but didn’t say how to make and use it. So just be aware of actually describing how the make and use your invention.
The last requirement is called the best mode requirement. You have discuss what is the best mode contemplated by the inventor of carrying out the invention. What this means is that if you have invented something and you know there’s an ideal version of what your invention is, you have to describe that version in your application. You can describe other versions too, but you have to describe the preferred embodiment somewhere.
You actually don’t have to tell anyone that it’s the preferred embodiment, so you don’t have to say, “the preferred embodiment has A, B, C, and D” but you do have to describe that version even if your invention really only requires A, B, and C.
I think it’s actually good practice to say what your preferred embodiment is because you never know if somewhere down the line in litigation that someone is going to say that you never disclosed your preferred embodiment, so it’s best to just be upfront and say what you think the best version of your invention is.
Don’t try to hold anything back when describing your invention. You might be thinking that you don’t want to describe your preferred version because you want to keep that a secret. That’s fine if you want to keep your invention or parts of your invention a secret, but then you shouldn’t be applying for a patent, you just just keep your invention a secret. Part of the deal with the government granting you a patent is that in return for you telling everyone all the details about your invention, you get 20 years of exclusivity. If you’re going to try to hide stuff, then you’re not fulfilling your end of the bargain for getting a patent.
There is one kind of weird thing about the best mode requirement and that it’s still part of the law, that it is required, but there is also a law saying that your patent can’t be invalidated if you fail to include it.
Your patent could be invalidated if you didn’t provide a written description or enablement of your invention, but not best mode. Technically the examiner still could could reject your claims if the examiner could somehow figure out that you didn’t include the best mode, which is really unlikely because the examiner can’t read into your mind and know what you perceive as the best mode, but once it issues, your patent can’t be invalidated if someone later finds out that you didn’t include your best mode. I’m not saying that it’s not required, and you absolutely should put it in, but if you don’t, it doesn’t seem like there are really any consequences. Including the best mode shouldn’t be a problem if you’re just honest about describing the embodiments of your invention.
Probably the best way to get started with knowing how much detail you need to put in, is go do a Google patent search and type in key words about your invention to find something in the same category of invention. If your invention is for a new kind of water faucet, look up water faucet patents. If it’s for a new kind of dog collar, look up dog collars. You should be looking up patents anyways to see if your invention is already out there, so you know if you’re wasting your time at all.
You should also look it up to see the type of detail that others have put in when they got patents. My guess is that it’s a lot more detail than you’re probably thinking about if you haven’t looked at patents before.
Another thing that is very important is the terminology that you use. You want to use the same terminology that you used in your claims in your detailed description. If you don’t, you could get a rejection based on the written description requirement.
For example, let’s say in your claims for a bicycle, you said that it requires at least two rolling members, which are wheels, but you wanted to be broader in your claim language, so you said “rolling members”. Then remember to put somewhere in your detailed description, and referenced somewhere in your drawings, a rolling member.
If you don’t, the examiner is going to say, “You are claiming a “rolling member,” but not one time did you ever describe a rolling member. You’ll get something called a section 112 rejection.
To avoid this, what you should do in the detailed description is describe your invention in terms of rolling members, and then also say something like, “in some embodiments, the rolling member may be a wheel, it could be a cylinder, and the rolling members can be made of rubber, or wood, or metal.”
Sometimes after you’ve drafted the claims, you start writing the detailed description and realized that you really should have written your claims differently. That’s OK, go back change your claims. Patent drafting is an iterative process, there’s lots of going back and forth to tweak things to fully describe and claim your invention. But in the end, make sure that every term you put in your claims is also in your detailed description of the embodiment somewhere.
It’s good to go over all your claims, and sometimes, word for word, you put that exact same language in the detailed description section as well, just to make sure you’re not going to get a section 112 rejection.
The major points you want to remember when drafting the detailed description are: 1) describe in detail all the features in the drawings you’ve had made, 2) describe possible variations called embodiment, 3) describe your embodiments in a way that shows that you have actual or constructive possession of your invention to satisfy the written description requirement, 4) describe it so that someone else could make and use your invention to satisfy the enablement requirement, 5) describe the best version of your invention that you know about to satisfy the best mode requirement, and 6) make sure you use the same terminology in your description as what you have in your claims.
If you want help with drafting your patent application and drawings, I do offer those services through my practice at Diament patent law. Check out the rest of the website or contact me if you have any questions.
- Dec 9, 2017 What is Intellectual Property and What Kind do I Need? Episode 1
- Dec 11, 2017 Is My Idea Patentable? Episode 2
- Dec 13, 2017 Is My Invention New, Useful, and Non-Obvious? Episode 3
- Dec 18, 2017 Patent Searches and How to Find Similar Inventions. Episode 4
- Jul 4, 2019 Should I Tell People About My Invention and What are the Patent Application Deadlines. Episode 5
- Jul 5, 2019 How to Read and Understand the Parts of a Patent. Episode 6
- Jul 5, 2019 The Patent Application Process. Episode 7
- Jul 6, 2019 What is a Provisional Patent Application and Should I File One? Episode 8
- Jul 11, 2019 Claim Drafting Part 1 - Identifying Your Invention? Episode 9
- Jul 13, 2019 Claim Drafting Part 2 - Anatomy of an Apparatus or Device Claim. Episode 10
- Jul 13, 2019 Claim Drafting Part 3 - Anatomy of a Method Claim. Episode 11
- Jul 14, 2019 Claim Drafting Part 4 - Independent and Dependent Claims. Episode 12
- Jul 23, 2019 Claim Drafting Part 5 - 10 Quick Tips for Claim Drafting . Episode 13
- Aug 30, 2019 Patent Drawings. Episode 14
- Aug 30, 2019 Detailed Description of the Embodiments. Episode 15