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I have a question about explaining the theory that undergoes an invention: should it be exposed in patent application (Description) and if yes how?

For what I have seen patent documents are not intended to explain the theory that lay under the invention and therefore the document is written in a “legalese” style, it is quite succinct, it lacks illustrations other than the ones functional to invention description.

In other words it seems to me that an application is intended exclusively to describe an invention (for claim and legal purposes), not to explain it. This could be effective for mechanical inventions, but in other fields where some theoretic backgrounds is needed to understand the invention is not possible to effectively claim without providing some extra explanation.

Hence a semantic search related invention could be “packed” in a succinct operational and algorithm description, but the invention wouldn't be well understood if the undergoing theory (that is somehow innovative) is not better explained.

Should the inventor write and publish a paper (scientific style) in which the general theory is exposed and then cite it in patent application? In this case should the paper be published before or after patent application? If the paper would be published before patent application, how to be sure that it doesn't invalidate the invention being considered a theory in public domain?

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At least in the U.S., a patent application must teach someone skilled in the field how to make and use the invention without undue (for the field) experimentation. It also needs to cover whatever version you and your team think is the best way to do it at the time of filing. Inventors may not always know or correctly know the theory behind the invention. If putting a silver bowl in the dirt for a week results in it coming out clean you may have a "method of cleaning silver" invention with no idea what chemistry is at work. There was a Supreme court case many years ago that said the inventor does not need to present or even have a correct understanding of the underlying science and math.

A patentee may be baldly empirical, seeing nothing beyond his experiments and the result; yet if he has added a new and valuable article to the world's utilities, he is entitled to the rank and protection of an inventor. And how can it take from his merit that he may not know all of the forces which he has brought into operation? It is certainly not necessary that he understand or be able to state the scientific principles underlying his invention, and it is immaterial whether he can stand a successful examination as to the speculative ideas involved.

DIAMOND RUBBER COMPANY OF NEW YORK, Petitioner, v. CONSOLIDATED RUBBER TIRE COMPANY and Rubber Tire Wheel Company. 1911

It may actually not be advisable to go into the underlying science in a patent application. It can give the reader (judge) the idea that your invention is just a manifestation of a mathematical truth or a law of nature. Neither of those is patentable. Also, sometimes the issue is an "unexpected result" in that the inventor tried something others may not have thought would work - but it does - yea! ~= patent. Expected result, no patent.

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  • I actually wasn't aware of this aspect of patenting. But considering it just seems to add further doubts to me. Even the fact that leading the invention back to its theory could be counter productive in front of a judge, not being laws of nature patentable, is not easy to deal with. Following your example of cleaning silver method, if it works it means that something chemical has happened, isn't it a law of nature? So the difference regard its patentability would be made from describing it in scientific way or not?
    – user8305
    Apr 6, 2014 at 21:20
  • My primary comment was that the underlying principles do not need to be fully understood to get a patent. Applying a law of nature to solve a particular problem a particular way is definitely patent eligible. You can't subsume all applications of the law of nature and you can't be claiming the law of nature itself. It is part of the art of claim drafting to navigate this line to get broad coverage but not be too broad. And it is a part of the art of writing the specification to keep the reader from getting the wrong impression as to what you think the invention is.
    – George White ♦
    Apr 6, 2014 at 21:34
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I was taught, and have seen it successful in patent procurement, to only go into the background or "creation" of ones invention to the extent that it is required for the reader to understand how to make and use the invention.

This does not mean misleading the reader, but you don't need to go out of your way to "explain" how you arrived at the invention in a kind of storytelling way (for example:
"and then I thought to myself, gee, what if I....").

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