There are many reasons to rush to the patentoffice. You may want to describe key aspects of your invention tocolleagues or customers without giving away the store; you want to getventure capitalists to give you their backing. In my own practice, moreand more clients want to ”damn the torpedoes, full speed ahead,” as thefamous naval saying puts it.

Don’t do it. Lodging a patent application before the invention isfully fleshed out may be a big mistake—even though a relatively newprocedure, the provisional patent application, seems to have beendesigned for just that purpose. Any patent, provisional or otherwise,that does not describe the invention well is worthless.

Consider a hypothetical electronic ”engine” that takes certaininputs, manipulates them, and produces outputs. The engineers believethat the engine can be embodied in a processor programmed with theappropriate software and in analog circuitry. Neither the software northe analog circuitry is fully worked out yet, but the consensus is thatit is all a matter of straightforward design.

The problem isn’t that a filing can’t be made, or even that theapplication will necessarily be rejected, but that it could be attackedlater on the ground that it doesn’t describe the invention clearlyenough for others to make and use it when the patent term expires. Thisrequirement to ”teach the invention,” to use the traditional language ofthe patent attorneys, is the quid pro quo that the law demands inreturn for granting you exclusive rights to your invention. To be sure,neither the software-programmed processor nor the analog circuit needsto have been prototyped, tested, and made ready for sale. It is usuallyenough to describe a software design even before it is reduced to code,and the analog circuitry can be described via block and circuit diagramseven though the circuit has yet to be breadboarded or fully modeled.But there has to be some kind of description.

Or suppose the processor version is adequately described, but not theanalog circuit. For a variety of highly technical legal reasons, thisscenario is still problematic: Broad patent claims covering bothversions could still be subject to an invalidity attack. Even worse,someone else might patent the specific analog version because thatversion was not described.

Last year, in Sitrick v. Dreamworks , et al., the Court ofAppeals for the Federal Circuit invalidated Sitrick’s patent for a wayfor users to integrate their own audio signals and visual images intovideo games or movies. Sitrick had sued a number of movie studios forinfringement. The court found that the patent described the technologywell enough to let others make and use it in a video game but not in amovie. As a result, the patent was held invalid. The case is not ananomaly—there have been several cases holding that if a patent claimcovers versions A and B of an invention but only version A issufficiently described, then the patent claim is invalid.

An equally problematic scenario involves patenting an invention toosoon, only to discover that engineering changes were made after filingand the patent procured does not even cover the company’s actualproduct. Not only might tens of thousands of dollars be wasted inprocuring patents in the United States and elsewhere, but all theadvantages of an early filing will be lost.

The same is true when there is a disconnect between the patentattorney (who thought you wanted to patent X) and you, the inventor (whoreally wanted to patent Y). Invariably, that disconnect is the resultof rushing to the patent office. Your patent attorney needs to fullyunderstand not just what the invention is but also how it works. So takethe time to describe your invention in detail.

About the Author

Kirk Teska is an adjunct law professor at Suffolk University LawSchool, in Boston, and is the managing partner of Iandiorio Teska &Coleman, an intellectual property law firm in Waltham, Mass. His mostrecent book is Patent Savvy for Managers (Nolo Press, 2007).