3

Suppose a method patent that consists of: step A, step B, step C, step D We're disclosing how to perform each step. Step C involves performing a sub-method to perform step C. This step C can be performed in multiple ways - with methods beyond the one described in the patent.

But the method patent that I'm patenting is for performing A,B,C & D to achieve a certain result. So will it be okay to show just one way of performing step C and indicate that other better or alternate methods can also be devised to perform step C without compromising the patentability ans protection for the overall method?

| improve this question | |
2

Is it okay to show just one way of performing step C?

Yes.

The relevant law is provided by 35 USC § 112(a), which provides (emphasis added):

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 or joint inventor of carrying out the invention.

As long as your description contains at least one example of how the invention could be put into practice, you will be fulfilling the requirement above. It is fine to note that alternatives may exist.

Can I indicate that other better methods exist for step C?

No.

The relevant law is provided by a different portion of 35 USC § 112(a), which provides: (emphasis added)

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 or joint inventor of carrying out the invention.

If you fail to disclose the best method that you know of, you would not be fulfilling your obligation under this section. While "best" can have a lot of different meanings depending on the context, it would be imprudent to explicitly note that you are not providing the best approach.

Conclusion

It is fine to disclose just one way of performing a step, as long as that is the best way.

| improve this answer | |
  • thanks, also if the method sub-step is dependent upon some control value - will it be okay to indicate that method's efficacy may depend upon the control value that will be at the discretion of the user? the value will be dynamically inputted based on situation. – yash Jan 24 '17 at 2:34
  • @yash Probably, it's hard to say for sure without knowing the details though. But in all cases the criterion is whether the reader will be able to put the invention into practice (in the best way you know) based on the information you have given. If you've given that level of description (such as how to find the value, or that a precise value will depends on circumstances), then you should be fine, I would think. – Maca Jan 24 '17 at 2:37

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.