One thing that slows me down, when I’m drafting claims, is realizing that an invention is lacking definiteness as to an essential element of an invention.
While definiteness is a requirement of its own, under 35 USC 112, I’m discussing how a lack of definiteness provides me with a few tools to articulate claims describing sufficiently narrow embodiments that can find patentability within a field littered with close prior art. Without sufficiently definite specificity, there are few ways to describe embodiments of the invention whose useful scope fit between the manifold droplets of pieces of art and condensed patentable denser spots in the fog of relevant fields .
This is very frequently inherent in filing an application for an inventor who is probably only going to be able to afford going through one application’s prosecution. That is because we are living in a time when imitation and reasonable alternatives are more feasible than ever before, providing great incentive to think of the invention’s definition as founded on a few core elements common to all the contemplated invention, plus a class of elements that close the overall definition.
The problem generally arises from the inventor considering these alternative elements as trivial with respect to the significant benefit provided by the interaction of the other elements. If an inventor can afford several prosecutions, then each embodiment could be pursued for a patent individually, as well as running at a pace that is logically parallel to a startup’s need to pursue development of significantly improved embodiments in a generally serially-staged manner.
Without a chance to aim for a broad scope in a first document that will be the basis for later applications of narrower continuation/ CIP applications, the problem for me is to describe the invention in terms of the key elements that avoid a claim that describes the work of another entity, from the very first document filed.
Sometimes, the only way to get the patentability, even if the tech is new, is to write a claim tree that boils down to a set of only several specific examples that all share the core benefit, but reach patentability by pointing out elements definite embodiments that strafe through the gaps in scope between the gaps in prior art by razor- thin narrowness, aiming for scope that can at least protect the several distinct embodiments that the inventor hopes to practice.
However, even when the tech works, and even where it is reasonable to contemplate that there will be many embodiments that would be practiced in a way that demonstrates clearly patentable definition, there still has to be at least one at the moment of filing to have a good chance of a award of a patent. If embodiments are too numerous, there will be a hard time claiming to patentability the one worth protecting. If the quantity disclosed approaches describing virtually the entire field of embodiments, you risk inviting the examiner to locate and apply teachings to support 35 USC 103 (rejecting as obvious over the prior art, in view of a teaching) that could cumulatively obliterate all the patentability of every embodiment.
An application must assert a new and useful thing or method which does not include or literally or approximate what man knew before the application disclosed it. So, if you want a patent, you need to be able to claim a thing that is supported by an explanation that positively lacks any reason to be confused with the prior art. If you don’t describe it, because you can’t, because it isn’t describable yet, then you can’t have it.
All of which means: I can’t write it, which means, after potentially huge hours with a client, means I can’t do the task for which I ask to be paid. I’m generally reluctant to tell someone who can’t afford to be paying an attorney incrementally that I’ll only be able to afford to work for him if I’m getting incremental payment with no end in sight.
So, what have I been doing to solve the problem? I attempt to participate in their reduce to practice. I do have an engineering degree, after all. Reducing to practice means hammering down a working (or at least a describable design-for an-) embodiment. Technically, filing a sufficiently definite application is a “constructive” reduction to practice, but like I’ve said, that isn’t on the table in these situations. As soon as that embodiment exists (or even meaningfully coalescing), describable definiteness of the embodiment exists. Then that embodiment is generally claimable. Whether or not it will be allowed is up to the examiner, but we patent attorneys do our best to aim for what might satisfy the examiner.
While reducing to practice can take forever, it alleviates the risk that they will never reduce to practice, let alone be able to have an embodiment with which to protect with their prospectively-grantable patent. It is fun, though, and it lets me play engineer again, learning the nitty-gritty of fields of art more directly. It also provides an excuse to learn tools and software that could be of my own personal benefit. I’ve played around with 3d printing, Arduino microcontrollers, and learned 3d modeling software including Sketchup, Tinkercad, Blender, as well as having gained refreshers on AutoDesk Inventor and Solidworks.
For examples of how such experiences have benefited me personally, I can point to:
– the improved drawings for the non-provisional version of the patent application that I have pending for one of my own inventions;
– the poking-around I am doing in Blender, to see if I can get-in a striking entry for Local Motors’ new project to produce a saleable 3d-printed car which fits the design constraints for passenger occupancy and minimum drivetrain space-requirements; and
– the thumb-stress-alleviating “book ring” I made for my wife for Mother’s Day two weeks ago.
It has been suggested, even by other attorneys, that I offer product development or engineering services in conjunction with my patent work. I’m not against it, but I’m not sure yet. We’ll see.