To be detailed or not to be – that is the question

A patent provides protection for that which is outlined in the claims. You want to have the broadest protection possible, but the claims cannot be written so broadly that the description of the invention is no longer objective. If the reader has to guess at how the invention works because the description isn’t detailed enough, or if the description claims more than what the invention can actually do, an Examiner is not likely to grant the patent. There is an art to writing patent claims such that they pass patentability tests while being the least limiting in scope.

When preparing patent applications, inventors diligently try to avoid reciting a particular step for “determining” or “identifying” steps in a process claim for fear of being “boxed in” or limited to the recited steps. The fear is that others will design around the claims by substituting another process or device to accomplish the same task. However, this is increasingly a problematic approach, especially since the March 2012 ruling on Mayo Clinic v. Prometheus Labs, wherein the Supreme Court determined that a patent cannot be granted for medical or scientific ideas that rely too heavily on laws of nature. That being said, recitation of a particular technique may satisfy the requirement to show an inventive application of the law with meaningful limits. This strategy may overcome a rejection for a broad attempt to simply apply a mathematical law of nature. These specific steps apply the law in a “meaningful and limited” way that satisfies the novelty requirement. The steps must go further than routine or conventional steps specified with generality; they must be applied with specificity such that there i s no monopoly on all applications of the law.

Thus, including steps describing the technique being applied will lead to patentable subject matter more readily than leaving the steps open to any known conventional technique that is not novel or unobvious. This can be the key to being awarded a patent.