Patent Specifications: What are they and why they matter?

One of the important trade-offs of receiving a patent is that in exchange for the exclusive rights for 20 years, inventors and applicants must fully describe how to make and use their invention. This is done through the specification which is described in detail in 35 USC 112.

In case you are not yet fluent in legal jargon, I have done my best to compress the main concepts into a more readable format below.

Photo by Aaron Burden on Unsplash

35 U.S.C. 112(a) – Written Description

The first section of 112, formerly known as the first paragraph, which is now is 112(a), describes the requirements for a written description which includes the necessity for enablement and best mode disclosures.

Enablement – The specification must contain a clear and concise description of the invention along with the process of making and using it in terms that would allow one of ordinary skill in the art to carry out the invention.

Best Mode – Inventors must entail the way that they believe is the best way to carry out the invention. This is purely subjective and because somebody else may find it best to carry the invention out in another way, does not make the original disclosure invalid.

35 U.S.C. 112(b) – Indefinite Language

The specification must include one or more claims that clearly and particularly point out the subject matter which the inventor intends to protect and regards as the invention. Through doing this, the applicant may not use language that renders the claims indefinite such as alternative language, negative language, and relative language.

35 U.S.C. 112(f) – Means-For

If you want to read more about means-for language, you can check out the article titled “Claims” that has a more detailed description, although the premise of 112(f) allows for language that identifies and claims a structure or element by the function that it serves.

Conclusion

The specification is arguably the most important aspect of a patent application and could be the determining factor in how much you can claim or whether or not something is prior art, as an incomplete or inoperative disclosure may not guarantee the priority of a provisional filing. It is important to take careful consideration into writing this section as you must show the Patent Office that you were “in possession” of the invention at the time of filing.

To ensure that you are fully protected, consult with a registered agent or attorney before filing your application.

Warning and Disclaimer: The pages, articles, and comments on IPCleveland.com do not constitute legal advice. The articles published express the opinions and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPCleveland.com.