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On page 210 of Patent It Yourself (18th edition), it explains that you can list the advantages of your invention in a narrative form.

g. Advantages

Although it is optional, you may list the advantages of your invention in a narrative form.

In the Best Practice Guide for Filing a Patent Application in Australia, it also mentions that the applicant can have a section for advantages.

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What is an appropriate way of structuring the advantages section? I'm filing in Australia; however, I believe the advice on structure and content should be very similar to the US.

Currently, I have an introductory sentence and then I have a paragraph for each feature and its advantages. Is something like this appropriate? How can I improve upon this structure?

Advantages of the above technical solutions are described below.

The present disclosure's XYZ feature does XYZ, which has an XYZ advantage.

The present disclosure's XYZ feature does XYZ, which has an XYZ advantage.

The present disclosure's XYZ feature does XYZ, which has an XYZ advantage.

2

In the last several years in the U.S. there is a trend to almost eliminate any specific discussion of advantages or even objectives. Anything you say can be held against you.

The wide end advantageously fixed at the base . . .

Can be taken by a judge that any embodiment that does not have that property is, by definition, not your invention. So even if an infringer meets all of the limitations of one of your claims, but does not have this feature, a court could say it does not infringe. Another issue is that Jones might have a short mention of fixing a wide end at the base that you missed. Now you can be accused of hiding the ball by telling the examiner not to look at Jones. The place to differentiate the invention of your claims from cited prior art is in your response to a rejection that cites that art. Of course your specification needs tp include your current best mode. It has become common to not call out the best mode embodiment as the best mode. It must be present (actually, the U.S. is almost the only place that requires best mode) but it does not need to be flagged.

  • Sure, I don't mind your discussion. On the one hand, I don't expressly itemize advantages or objectives in that manner. Nor do I ever mention a specific best mode, per se. But I do try to set forth the advantages of the variants of the claims. On the other hand, you are mentioning a trend towards bad patent writing. Intentionally seeking broad nonspecific claims with as little limiting limiting language as possible can come at the expense of a valid patent covering what you actually need to cover. – PGilm Jan 31 at 1:59
  • I don't mind your discussion. My answer involved not having language in the specification that a judge might use to misconstrue the actual claim; avoiding painting yourself into a corner, and also avoiding being accused of inequitable conduct. You are talking about the breath of claiming, not a topic of the question or the answers. – George White Jan 31 at 3:45
  • "[N]ot having language ... that a judge might ... misconstrue" is great general advice, but not limited to advantages statements, that is. I'm not sure of the inequitable conduct problem. Do you mean hiding, not highlighting the best mode(s) or prior art(s)? Need I add "Don't do these things [describe advantages] in a way that obfuscates some material fact?" I hope that's also great general advice! & Yes, my preference is for claiming narrowly anyway (easier to hold valid material scope) over breadth for breadth's sake (& greater invalidity challenges). (8-o) That's me taking a breath! – PGilm Jan 31 at 16:17
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You're on the right track. Advantages can advantageously be used to link a specific structure to a specific result, which can help in lots of ways, particularly in "means-plus-function" claiming. They can also help satisfy "Best-mode" requirements. For me, I like the advantages to sort of track the claim language, especially for dependant claims, to answer "why" the invention uses the elements described.

For example, if a claim to a manipulable appendage for movably supporting a structure has a dependant claim set as to various materials that may be used, the advantages of the materials can be specified (without necessarily having to add whereby language to the claims):

The presently described movable support appendage may advantageously be formed of articulated hollow metal rods with relay actuated spring joints for allowing precise electronic position control.

The presently described movable support appendage may advantageously be formed of solid formed carbon fiber sheets with carbon string tendons attached between various points on the sheet for controlling position while being light weight, durable and resilient to perturbations of the structure such as vibrations while in use.

Advantages are also useful to distinguish over known prior art.

Unlike the Jones reference, the presently described movable support appendage may be frustoconical in shape with the wide end advantageously fixed at the base for additional support to overcome the known stress failure point of the Jones apparatus and the narrow end advantageously formed to move within all three dimensions within the aperture for more precise results, unlike Jones' appendage which can only move in a line.

Hth,

  • This is a good answer. It might be nice to use the quoting tools to emphasize where you are presenting an example of language to be used compared to commentary. A little formatting would make the answer easier to read. – Eric Shain Jan 30 at 21:41

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