Broad specification or broad claims in a patent application?

We have clients coming to us from other patent attorneys and they tell us that they were told that the pattent application has to be written at a high level of generality to be a strong application and ultimately a strong patent.

We had one such client coming to us recently with his application not surprisingly being rejected by the USPTO examiner, particularly the claims in the application being rejected. One basis for the rejection was the application’s failure to meet the “full description” requirement of the US patent law. The examiner was correct. It was not clear how a particular component of the claimed device was connected to the structure of the device, to produce the results claimed. Neither the specification nor the drawings have made that clear. According to US patent law, the inventor has failed to show that he was in possession of the invention at the time of the invention.

The examiner may have very well also rejected based on failure to meet the enablement requirement. An inventor is obligated to describe the invention with such detail, such that one of ordinary skills in that particular field, art or technology can make and use the invention simply by consulting the patent application. That is a tradeoff for getting for or expecting to get a patent from the US Patent Office.

Having very broad, very general description of the invention, and very high-level drawings, also means that the claims will necessarily need to be also very broad, written in very general terms, as to the recited structural elements and functional aspects of the claimed device. That means that it is likely going to be very easy for the examiner to find prior art teaching those high-level, general structural and functional aspects of the claimed device. Thus, the examiner is likely to reject also based on lack of novelty and obviousness.

So, what is an applicant with such a general application, being rejected by the USPTO examiner going to do? There is not much the applicant can do in the same application. That is because, for example, any attempt to narrow the claims to distinguish over the prior art will run into the problem of not having enough support for the claims in the specification and/or drawings. Plus, the full description and enablement requirements cannot be met.

So, the only option may be to file a continuation-in-part (CIP) patent application. The CIP patent application will allow for the addition of more structural and functional details in the specification and the drawings. But, of course, such additional details will only be entitled to the actual filing date of the CIP patent application, when such additional details should have been in the original application, so they could have been entitled to the filing date of the original application.

In conclusion, broad application rarely should mean broad specification and broad, high-degree of generality of the drawings. Broad claims in patent applications of course are desirable and should be targeted whenever possible, e.g., when the particular technical field is not crowded. But having enough details in the specification and drawings are necessary to meet the full description and enablement requirements at the USPTO. With such an application, one has options to target broad claims, but also narrower claims, if needed to distinguish over the priority cited by the USTPO examiner as the basis for the rejection of the claims.

PATENT, Trademark and IP Law Blog

  • CIONCA IP - MC1/14/2023 2:21:06 PM

    Broad specification or broad claims in a patent application?

Marin Cionca | Founder of CIONCA IP

Marin Cionca, Esq.

Registered Patent Attorney

USPTO Reg. No. 63899

CIONCA IP's Patents and Trademarks Success Numbers as of 2022

About CIONCA® IP Law firm: We are an Irvine, Orange County, California based boutique intellectual property law firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, including IP litigation, offering its IP services, other than IP litigation, primarily at flat fee rates. We serve local OC (Orange County) clients, as well as clients from the Los Angeles, San Diego and Riverside Counties and clients throughout the state of California, the United States and also international clients, such as EU clients.

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