Indefiniteness and Breadth, versus fatal lack of enablement.

This post is mostly just prompted by the WordPress app indicating that it had a "new" and "beautiful" post editor, but it also has been a few weeks since I last posted."

Patent applications have to measure up to several tests. But a regular struggle between two of these tests is how much to disclose and how much to claim. Claims are the operative parts of patents, statements defining the invention, upon which infringements will be evaluated. Statements describing inventions broadly are said to have greater "scope," of protection. However, broad language is more likely to cause an application to "read on" existing references and teachings found in relevant fields of art. To obtain a patent, narrowing language will be necessary.

Claims must be adequately supported in the disclosure, that is, the terms have to be explained for their value to the inventive concept. So the disclosure must provide more details in order to support the narrowing limitations that may be necessary in order to obtain a patent, even if they wouldn't necessarily be necessary to support a broader claim. Therefore, the question is always "well, how much should I tell the world about how to make my invention?"

If you don't disclose enough, it's possible that a claim, even the broadest one, will be found "indefinite" under 35 USC 112. This means that the language of the claim doesn't adequately limit it self for the examiner to judge that a "person having ordinary skill in the art" would know how to make and use an invention defined according to the language of the claim. Sometimes this can be remedied, by narrowing the language of the claim, but that requires those specifics to of been in the specification in the first place. Adding such a narrowing limitations once in prosecution are likely to be rejected and unable to be added to the application because they constitute "new matter" under 35 USC 132.

The reasons to avoid saying too much, though, are includes ones that I apparent in the context of the above details, but also tentatively damaging to one's ability to claim broadly.

The conflict explained above ought to allow you to have deduced what could be wrong with overly disclosing, even if you are able to obtain protection broadly, that is, without having to claim of those limitations to obtain the patent. If you teach too much, it's possible that infringements could happen, even if your claims are broad enough to give you standing for filing a complaint and having some expectation of success. To wield the patent to that effect, though, funds will have to be available, because litigation costs against and infringing entity can be very large. Having disclosed less may have made it harder for such infringements to happen. But, again, without some amount of those disclosures that enabled the infringements, you may have failed to make the claimed invention adequately disclosed to satisfy definiteness, for 112 purposes.

Where you do adequately provide details to support claims at some point during prosecution, but receive a definite in this issue in response to claim language, you at least are likely to have the opportunity to provide later claims with those details. However, if you go so far as to omit not only those details which could be helpful to meet indefiniteness, you may actually tread upon a rejection under 35 USC 112 for lack of "enablement." As a literal requirement of 112, it is on a car within definite in this, but in practice, lack of enablement is a much more serious problem. Lack of enablement means that nowhere in the specification is there enough detail for the "person having ordinary skill in the art" to figure out how to make what you are claiming. In this case, it is much more likely for the 112 rejection to be fatal to the application. This is because the complete lack of enough detail to support the claims or even to show that the specification is adequate to make anything at all, means that details necessarily would have to be added that are asserted to not be present, at all. And, as I said above, adding such details, where there isn't already any basis in the specification for their inclusion, constitutes a "new matter" rejection under 35 USC 132. So those details cannot be added. Unless the timing of these rejections was conveniently rapid, there is a significant chance that this means protection will not be available at all.

So, what can you take from this?

If you aren't very confident of what your odds of success are, then disclose more than you think you'll be able to claim. Better to obtain a patent of some kind and have been procedurally more likely to be perceived as seeking protection, then to claim so much more than you can support that examiners and Sophisticated investors will perceive your venture as having a snowballs chance in hell of being able to exclude competition. If you think that you can afford to file many times, and don't need to worry about your priority date losing six months or a year at a time with every failure to be allowed a grant of patent, then maybe you don't have to be so forthcoming with the amount of details early-on.

In either case, though, as the inventor or applicant, I think that it is wise to retain a patent attorney to judge the balance for you, and draft and file and carry out prosecution with arms-length objectivity.

For more information, you can call me at 919-649-4218.

Daniel Becker is a patent attorney in Raleigh North Carolina, serving the greater Raleigh area (including Carrie and RTP in Durham and Morrisville and wake forest and apex and Holly Springs and Fuquay Verina and Gardner and Clayton), Charlotte, the coast, Fayetteville, Winston Salem, and very much enjoys Asheville and the Appalachian towns adjacent to "the dragon." He holds a bachelor of science in mechanical engineering (BSME) from North Carolina State University and obtained his juris doctor (JD) from wake forest school of law. He is licensed by the state bar and a registered practitioner with the United States patent and trademark office. He was a patent examiner, who is greatest distinction and most amusing, while at the office, was briefly being the examiner who was reviewing the most self-cleaning cat litter box references.