Amplifying IP is a thought leadership series on best practice approaches to protecting and leveraging IP.
In his previous articles, Principal and Patent Attorney, Rob Wulff discussed searching, the client meeting and claim drafting. In this second article on patent specification drafting, Rob considers drafting of the detailed description.
As with claim drafting, the following suggestions are not intended to be exhaustive.
It’s time to be “detailed”
The purposes of the detailed description can be said to include:
- supporting the patent claims, including the breadth of claim
- fulfilling other legislative requirements such as adequacy of disclosure/sufficiency and best mode/method
- clearly articulating and expanding on what your client has invented
- providing a guide that enables a skilled person to understand and practice the invention.
However, the detailed description also represents an opportunity to be creative. For example, here you can outline:
- different materials of construction/composition
- the range of materials to be ‘processed’
- different manufacturing methodologies
- some of the more extreme bounds and ranges of operation
- alternative ways of achieving the same outcome, etc.
It’s also important to consider whether any of these alternatives might have an impact on how the invention is embodied. If yes, describe that impact and, if possible, sketch out that embodiment.
Here, you can also play ‘devil’s advocate’ on the invention – considering and then describing other ways in which you might embody the invention. For example, describe some of the ways a third party might try and design-around the invention, even if some of the alternatives are ‘inferior’ or more complex. Such disclosure can act as a publication bar to third party patenting of the alternatives, and can help support a broad claim scope.
As long as your description contains some boilerplate disclaimers (e.g., that the following description is exemplary and is not intended to limit the scope of the appended claims), then now is the time to be as detailed “as all get-out” about the invention, including describing its benefits and advantages, its extremes and variations, but also to clearly and fully articulate what the client has invented. If your client wants to include a sales pitch, you can include a reworked version of the pitch towards the end of the detailed description.
A note of warning – a number of high-profile US litigators counsel against, anywhere in the patent specification, and especially in the detailed description, using the word ‘invention’, or saying what the ‘invention is’, or using imperative language such as ‘must’, ‘essential’ or even ‘preferred’ or ‘desired’.
Instead, they implore to simply ‘describe what’s there’, although I would add that you can also describe the benefits and advantages that flow from such features and combinations.
Disclosure, support, sufficiency
Globally, patent offices and IP courts seek to restrict patent scope and prevent claim overreach. When I started training, we were taught to claim very broadly, and that one or two embodiments would be sufficient to support a broad claim. It can be convincingly argued that this approach no longer applies.
If you want to claim broadly, then you need to seek to support your claim scope at the ‘metes and bounds’ and also at various points in between. For example, data and examples should be included in the detailed description to support the extreme ends of a range, and at points in between. The IP courts now ask whether it is ‘plausible’ that the invention can be worked across the full scope of the claim, and whether the invention can be performed across the full scope of the claim without ‘undue burden’. Hence, the importance of a broad range of data/embodiments.
For mechanical inventions, consider whether certain parts of a device or apparatus could be embodied in other ways (e.g. more simple or ‘lateral’). Always try to describe more than one embodiment. For generic chemical compound and biotech claims, a broad variety of compounds and ‘species’ should be exemplified.
Unpack your claims!
Make sure every feature you claim is supported (described) in the detailed description. For each of the key claim features, describe a range of alternatives. If your claims use ‘means + function’ language, then make sure there are plenty of examples/alternatives for each of the ‘means’. As above, consider whether such alternatives might have an impact on how the invention is embodied – if yes, describe (and sketch) it.
Best method/mode
Most countries require the best method known to the applicant at the time of filing to be disclosed. Be careful about being ‘too clever’ – i.e., withholding (as a trade secret) information that enables the claimed invention to be practised by a skilled person.
In the past, it was tempting to withhold optimal parameters (e.g., best temperature, pressure, angle of inclination, material, etc.) and instead include a range or broad category. However, in the new world of support, disclosure, sufficiency and best mode/method, this approach carries a much higher risk of patent invalidity.
Plan the structure
It’s amazing how many detailed descriptions read as if the drafter just started drafting; it can be seen that a well thought out and structured approach was not planned at the outset.
It can be helpful to start the detailed description with the context of the invention, both broadly and specifically. For more complex inventions, use an initial block diagram or overview diagram that describes the main components, regions, key features or steps/stages. Thereafter, in a systematic way, describe in detail each of the components, regions, key features or steps/stages of the block/overview diagram. At the end, consider whether to include some statements that summarise or ‘wrap-up’ all that has been described e.g. concluding comments.
Also, consider the use of headings in the detailed description. These can greatly help a reader (think examiner or judge) and can readily provide required structure to the description.
Don’t forget the invention
In all of this, it’s vitally important to describe in detail what the client has actually invented. This may include incorporating into the detailed description what the client thinks they have invented, as this may turn out to be important. Including some of the detail of the story behind the invention can also be useful, as it may help later in rebutting an inventive step objection.
Concluding comments
The detailed description is where many of the legislative requirements now need to be met. For this reason alone, drafting of the detailed description should not be left as an afterthought to the drafting of other parts of the patent specification.
In addition, if well planned, the detailed description can be a delight to read for examiners, judges, peers and your client.
