A Board Certified Patent Attorney

Adequately Disclosing Your Invention in the Patent Application

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A patent holder’s rights of preventing others from making, using, and selling an invention is contingent upon the invention being adequately disclosed to the public in the patent application.

Adequate disclosure is the ticket price you pay for patent protection. No ticket-no ride. An invention that is not adequately disclosed is not entitled to patent protection.

What is adequate disclosure?

As set forth in 35 U.S.C. Section 112, the specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

The strict description requirement requires open and direct communication between an inventor and his or her patent attorney and is critical to the preparation of a patent application meeting the written description requirements.

Sometimes I will meet with a client who is willing to describe most of the invention in a patent application but wishes to hold back certain key elements in order to obtain trade secret protection. For example, an inventor might attempt to only reveal a broad description of materials in an application (i.e.-metallic surface”) while knowing that only an Aluminum-plated surface will work. Withholding important aspects of an invention from disclosure in a patent application is not permitted and is fatal to the validity and enforceability of the patent.

An inventor is required to describe what is called the best mode of making and usint their invention in the patent application.

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