KnowThis Tutorial: Marketing Method Patents

Background
In this section the applicant will use the information obtained from prior art research to address two key issues. First, this section will contain a discussion of the field in which the invention belongs, which should relate to the Classification category. Second, and more importantly, since one of the criteria for obtaining a patent is to demonstrate that the invention is useful, this section should include a discussion that focuses on the way this invention is useful by pointing out the solutions or benefits it provides (i.e., problems it can resolve). Of particular importance is the need to show how others have tried to address the problems but have not done it in the way the applicant’s invention does. By doing this the applicant is making a case for his/her invention being novel.

Detailed Description
The longest section to write is the section that provides highly detailed information on the invention. As discussed in our article The Importance of Business Method Patents in Marketing, a patent must be written in such fine detail that others could duplicate the idea once the term of the patent has expired. As described in the U.S. Patent Law:

“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 of carrying out his invention.”

Consequently, there is no holding back. In fact, not fully disclosing information can cause problems since patent law does not permit the addition of new material or “new matter” (though clarification to existing information may be permitted) once a non-provisional application is filed. So if an application is rejected due to lack of full disclosure an inventor cannot subsequently add more.

The description section must tie directly to the drawings of the invention. It is a good idea for every item, component, action, process, step, etc., to be identified by name and also by reference number that appears on the drawings. For example, shown below is part of the description of the Netflix patent that is associated with the drawing discussed above. Each time a part of the invention that relates to a uniquely numbered item is mentioned in the description section the number of the item is also presented so the person reading the patent can easily reference the description with the drawings.