A well-written innovation disclosure can form a solid foundation for analyzing patentability, risks, and value, and can help with crafting a high-quality patent application.
Here are some tips for avoiding some common types of restrictive language that can sabotage innovation disclosures and/or patent applications that rely on them.
Replace closed verbs with open
Most innovators are technically trained and/or experienced. That background has taught them to write in clear, active tense, using precise verbs. Yet from a patent law perspective, doing so can add unnecessary legal risk. So, although in other contexts it might be preferable to write “Connect the widget to the gadget” or “The widget is connected to the gadget”, the more expansive, vague, and less risky approach is to state that “The widget can be connected to the gadget”. Although nearly any 10th grade English teacher would probably strenuously object, this is the one place where vague, passive, imprecise verbs are our friends, as they support broader, more valuable claims in any patent that eventually emerges from the innovation disclosure.
Steer clear of restrictive adjectives and adverbs
This theme of expansiveness also should be reflected in the choice of adjectives. Do not use restrictive language such as “required”, “necessary”, “key”, “must”, etc., as doing so invites infringers to argue that your company’s otherwise broad patent claims are limited by how its innovation was described, thereby potentially spoiling the value of your company’s patent. If the desire to use restrictive adjectives becomes overwhelming, consider softening their edges a bit by preceding them with phrases such as “usually”, “typically”, “often”, “sometimes”, etc.
Provide numerous examples
Generally speaking, the broader the scope of a (valid) patent claim, the more value that claim can provide. Claims that have a broad scope are best supported by presenting numerous examples of how the claimed concept can be implemented.
Even if you think you’ve determined the optimal implementation, describe alternative implementations, even if inferior, that could work. Imagine and describe ways that others might “design-around” your claimed concept, even using outdated or inferior approaches.
Also try to identify and describe other industries or situations where your concept might be useful, even if your company won’t be exploring those options. Assuming their scope supports it, you can exploit your patent rights even in those fields in which you don’t compete.
The more examples the better.