0

I've been reading some patents and also watching this video. Is it true that the more embodiments/examples of how the disclosure looks, is used, etc the better it is for the patent to uphold itself?

Cos the video added that we can't change it later on, only the claims section can be changed during the examination.

Because the method idea seems to have numerous conditional ways to use it, depending on what data is given.

2 Answers 2

1

Is it true that the more embodiments/examples of how the disclosure looks, is used, etc the better it is for the patent to uphold itself?

Technically, there must be sufficient disclosure to enable the entire breadth of the claim.

Depending on the scope of the claim and predictability of the art, it could be that a single example suffices, or it could be that even hundreds do not.

For more details and examples, you can look into MPEP section 2164.

0

The video is correct that the patent application can not be changed other than the claims. Thus you need to provide disclosure to support any claims you wish to get. The inclination should be to be more expansive in the description as it may allow for filing continuation applications to get wider patent coverage.

It is possible that the examiner may make you split the patent into two or more patents if they believe that the applications of the invention are different enough. This has happened to me. Either way, you should probably provide enough descriptions of the desired embodiments to support the desired claims. There are strategies to filing patents and I've worked with patent attorneys who have pursued multiple filings for inventions of mine with varied applications.

As I am not a lawyer I wouldn't presume to suggest what you should do. Since you can't describe your invention here anyway, I doubt even a qualified lawyer wouldn't be able to answer such questions. I always suggest working with an actual patent attorney or agent when pursuing a patent. Getting a patent is important, but getting a strong patent is more important. There are programs for obtaining pro bono legal help for patents that you might look into.

2
  • Actually my question is not about your experience in getting a patent filed or splitting patents. It's about "Is it best to provide as many examples in detailed description section?"
    – ratib90486
    Jun 16, 2023 at 0:40
  • @ratib90486 I thought I answered that with the sentence " Thus you need to provide disclosure to support any claims you wish to get." I've added a bit more text to clarify.
    – Eric S
    Jun 16, 2023 at 16:42

You must log in to answer this question.

Not the answer you're looking for? Browse other questions tagged .