The Importance of Understanding What You Have Patented

November 2010

One of the fundamental tenets of patent law is that you cannot patent a concept. I have always wanted to figure out a way to beam myself from one place to another, but I have never figured out how to do this, so I am not an inventor. The legal definition of "invention" is conception plus reduction to practice. This means that an inventor is someone who has not only identified a problem and conceived of a potential solution but also figured out how to achieve a solution to the problem.

The reduction to practice requirement is a critical part of the patent process. Reduction to practice can be accomplished in one of two ways. The first way is to actually build the invention and confirm that it works. The second way is to describe the invention in sufficient detail in the patent application that someone skilled in the art could build it. The problem with relying solely on the latter approach is that if inventions have not been built or at least the concepts tested, the invention may later prove unworkable, in which case the inventor has arguably wasted time and money on the patent filing.

Most of the inventors who approach us have either a working prototype or a virtual prototype (three-dimensional computer-generated drawings). For those inventors who come to us with neither, we often will ask them to provide working examples (proving out the concepts they want to patent) or, in the case of software, develop and test a beta version. There are two reasons we do this-the first is to ensure that the client does not spend money on a patent application for an invention that does not work, and the second is to ensure that we will be in a position to meet the enablement requirement. The enablement requirement imposes an obligation on all inventors to fully explain in their patent application how the invention works. Oftentimes, if the inventor has not actually built the invention or tested his concept prior to filing, it is not possible to meet the enablement requirement because the inventor has not worked through all of the enabling aspects of the invention.

The claims-set forth at the end of the patent application after the detailed description of the invention-describe in precise terms exactly what it is that the inventor is seeking to patent. The description (also referred to as the specification) may be broader or narrower than the actual claims. The description would be broader than the claims (and the claims, therefore, narrower than the description) if the claims had to be narrowed during prosecution to distinguish prior art. The description would be narrower than the claims (and the claims, therefore, broader than the description) if the person drafting the application included claims that covered more than the specific embodiments described in the application. The "best mode" requirement imposes upon the inventor an obligation to disclose his preferred embodiment, but there is no legal requirement that the inventor disclose every single possible embodiment of his invention; therefore, the claims may cover more than the specific embodiments described in the application.

When reading a patent application for infringement purposes, therefore, it is important to focus on the claims and not just the description (or the figures). Similarly, in understanding the scope of your own patent, it is important to keep in mind that the claims define the scope of your invention. During the patent prosecution process, your claims may be narrowed, but they are rarely broadened; therefore, what you thought your patent application covered at the outset may not be what it actually covers when the patent issues. If you subsequently develop improvements to your invention, it is advisable to communicate those improvements to your patent attorney so that you can together determine whether those improvements are covered by your claims or whether another patent filing may be recommended.

Remember that just as you cannot patent a concept, you cannot sue others for attempting to solve the same problem unless their particular solution falls within the scope of your issued patent claims. There may be numerous ways to solve a given problem. Our patent system gives inventors a 20-year monopoly on their particular solutions. Thus, our disclosure form asks inventors to describe the problem they are attempting to solve, the answer they came up with, and how it works. If inventors were allowed to patent concepts, then we would only need to describe the problem and the (theoretical) answer. I would have a patent on beaming myself to the moon.


Amicable photo of Toni

Antoinette M. Tease, P.L.L.C.