Best Practices

How You Describe Your Invention Matters

By July 21, 2020No Comments

Your intellectual property is among your organization’s most valuable assets. However, your innovation is only as good as the language used to describe it. How you describe your invention matters in many situations, both now and in the future. It is not your technology, but rather the description of that technology in your patent application, that leads to a patent. Later, it is the language in the granted patent that protects you from infringement and upholds your intellectual property rights. 

Now: Accuracy

The language you use to describe your invention must be accurate. There are many situations that can lead to inaccuracies, which do a disservice to your invention. To ensure accuracy, utilize both a dictionary and thesaurus. These tools help engineers and lawyers choose the best possible words to describe the new technology. Employing an editing service can alleviate some of this burden of accuracy from your internal team.

Translating a patent can result in ambiguity. This ambiguity requires additional details, which may inadvertently narrow the scope of an application. Regardless of the original language of a patent application or resulting patent, strong language may draw attention to specific aspects of an invention. This can lead patent examiners to believe elements of your intellectual property are more important than the technology as a whole. 

It’s essential to describe your invention accurately from the start, without being too broad or too specific. Specifications can’t be changed during the application process, unlike claims, which can be amended

Now: Eligibility

How you describe your innovation affects how patentable your technology is. This is especially obvious under the Alice/Mayo framework for determining patent eligibility. In the three years after Alice v. CLS Bank, patent claims were longer and included more unique words, according to IP Watchdog. Claims were also more likely to utilize language, such as “artificial intelligence” “data structures” and “digital processing,” that would remove the invention from the business method class entirely. 

Later: Searchability

The language in intellectual property literature determines who will be able to find it after publication. As discussed by Stephen Van Dulken in Do you know English? The challenge of the English language for patent searchers, “The complex and inconsistent nature of the English language presents problems for patent searchers researching the prior art…

“These problems include confusion in translations; “Patentese”, the jargon used by patent attorneys; terminology, which can take time to be adopted; “faux amis”, words which you think you know as they look identical to foreign words; the oddities of English spelling; multiple meanings for the same words; words that have opposite meanings; synonyms; Americanisms as different spellings and different words; words that are both nouns and verbs; compound nouns, which are often spelt as two words; spelling mistakes; and syntax.”

Patent clutter impedes searchability to the point that the FTC recommended the PTO “‘explore ways of’ clarifying patent language and improving the public’s ability to search for patents.” In the meantime, utilizing language common in your field, as well as other industries where this technology is important, makes your patent more easily accessible via search

Later: Infringement

Language determines the scope of your patent. Therefore, this language outlines what is infringement. While eligibility may be the primary concern when a patent is first written, it is quickly eclipsed by the need for accuracy. Without patent literature that accurately describes the intellectual property, a patent may not protect the rights you believe you were granted with your patent.